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that any one could have done the same thing ought not to receive great consideration in a case like this where ten years elapsed before the combination became an accomplished fact. Especially is this true when a material advance has been made in the art involved. Neither are we impressed with the argument that, because of the grant of a patent to appellant, no one possessing the right to use the lifting device of Wellman could use it as a skull-cracker. The obvious answer to this argument is that Wellman's device was neither designed for, nor used, as a skull-cracker. Indeed, without the coöperation of the weight it could not be used for that purpose.
Potts v. Creager (C. D., 1895, 143; 70 O. G., 494; 155 U. S., 597) involved a patent covering a machine to disintegrate clay. The patent principally relied upon as anticipating the Potts patent was the one upon the device known as the “Creager wood-polishing machine.” In that device there was a cylinder provided on its periphery with a series of projecting strips or bars of glass not materially differing in form from the scrapers on the Potts device. The Creager machine, however, was used for polishing boards. The Court said:
Had this machine been used for an analogous purpose, it would evidently have been an anticipation of the Potts cylinder, since the substitution of steel for the glass strips would not of itself have involved invention.
When a patented device is a mere improvement upon an existing machine, and the case is not complicated by other anticipating devices, the solution is ordinarily free from difficulty. But where the alleged novelty consists in transferring a device from one branch of industry to another, the answer depends upon a variety of considerations. In such cases we are bound to inquire into the remoteness of relationship of the two industries; what alterations were necessary to adapt the device to its new use, and what the value of such adaption has been to the new industry. If the new use be analogous to the former one, the Court will undoubtedly be disposed to construe the patent more strictly, and to require clearer proof of the exercise of the inventive faculty in adapting it to the new use-particularly if the device be.one of minor importance in its new field of usefulness. On the other hand, if the transfer be to a branch of industry but remotely allied to the other, and the effect of such transfer has been to supersede other methods of doing the same work, the court will look with a less critical eye upon the means employed in making the transfer.
Doubtless a patentee is entitled to every use of which his invention is susceptible, whether such use be known or unknown to him; but the person who has taken his device and, by improvements thereon, has adapted it to a different industry, may also draw to himself the quality of inventor.
In this case the inventor has taken Wenrich's device and combined it with that of Wellman and has thereby, produced a structure that will undoubtedly completely displace and supersede the device of the prior art. He has taken the cumbersome and expensively-operated device of the prior art and, by combining it with other devices in other arts, has added greatly to its efficiency, and at the same time materially reduced the cost of its operation. He has in fact as well as in law produced a new device, and it seems to us that the spirit and purpose of the patent laws will be subserved by the grant of a patent to him for achieving this result. If the discovery was a trivial one following closely the issuance of patents upon the elements of the combination, we would view the case with less liberality, which is equivalent to saying that the facts of each case must control the decision upon the application.
Claims 3 and 4 include merely the form of the magnet disclosed in the prior Eastwood patent. If that patent is valid, appellant will be fully protected by the allowance of claims 1, 2, and 5. If it is invalid, it will add nothing to his protection to include claims 3 and 4 here.
For the reasons stated it is our opinion that the Commissioner erred in rejecting claims 1, 2, and 5, and his decision to that extent is reversed; and the clerk of this court will certify this opinion and the proceedings in this court to the Commissioner of Patents, as required by law.
Mr. Chief Justice Shepard dissenting.
[Court of Appeals of the District of Columbia.)
H. W. JOHNS-MANVILLE COMPANY V. AMERICAN STEAM PACKING
Decided April 6, 1909.
145 0. G., 257; 33 App. D. C., 224.
1. TRADE-MARKS-OPPOSITION-NON-TECHNICAL MARK-EXCLUSIVE USE-CHAR
ACTER OF USE BY OPPOSER. Applicant's mark consisted of the word "Asbestos," the letters of the word being constructed in a peculiar manner. The opposer used the word "Asbestos” not as a trade-mark, but merely to designate engine and nachinery packing sold by it. Held that this was a sufficient use of the word "Asbestos " to prevent the registration of applicant's mark under the “tenyears" clause of the Trade-Mark Act, since the predominating character
istic of that mark is the same word. 2. SAME_"ASBESTOS " - DISTINCTIVE LETTERING DESCRIPTIVE OF ASBESTOS
PACKING. The word “Asbestos,” the letters of which are formed in a peculiar manner, is not registrable as a technical trade mark for asbestos engine and machinery packing, since the predominant feature of the mark is the word “Asbestos,” which is descriptive of the goods to which it is applied.
Mr. 4. Parker-Smith for the appellant.
VAN ORSDEL, J.:
This is an appeal from the decision of the Commissioner of Patents refusing to register for appellant company as a trade-mark for asbestos engine and machinery packing the following mark:
The appellee company filed notice of opposition to the registration of the above mark, to which notice the appellant answered. The parties then entered into an agreed statement of facts; and it was stipulated, among other things, that the American Steam Packing Company and its predecessors in business, for about thirty-five years prior to the filing of the notice of opposition, have continuously used the word “Asbestos” to designate engine and machinery packing made and sold by it; and that appellant company and its predecessors in business, have used and had exclusive use of the above mark, which has been used in connection with the shipment and sale of asbestos engine and machinery packing for more than ten years prior to February 20, 1905.
It was contended by the appellant before the Examiner of Interferences that it was entitled to registration of its mark, both as a technical trade-mark and under the ten-years clause of the TradeMark Act. When the case came before the Commissioner of Patents on appeal, it abandoned its contention that it was entitled to registration of the mark as a technical trade-mark, but insisted merely that it was entitled to registration because of the exclusive use of this particular mark for more than ten years prior to the passage of the Trade-Mark Act of 1905. In the brief of counsel for appellant and at bar, the same position was assumed as was urged before the Examiner of Interferences.
It is contended by counsel for appellant that, owing to the peculiar manner in which the letters of the word "Asbestos,” in the mark sought to be registered, are constructed, the mark is so distinctly different from the English word "Asbestos” as to entitle it to claim exclusive use of the mark during the ten years period. It is also insisted by appellant that the opposer has no standing in this case, since it appears from the agreed statement of facts that the English word " asbestos” had not been used by appellee as a trade-mark, but merely to designate engine and machinery packing made and sold by it. This, however, we think is a sufficient use of the word “Asbestos” to prevent the registration of appellant's mark under the ten-years' clause of the Trade-Mark Act, since the predominating characteristic of appellant's mark is the same word, merely in embellished letters, as the word used by appellee to designate its goods.
In the case of Natural Food Co. v. Williams (C. D., 1908, 320; 133 0. G., 232; 30 App. D. C., 348) this Court said:
The evidence above briefly reviewed, we think, clearly establishes the fact that appellant was not the exclusive user of these words during the ten-years period. No claim is made of any attempt on the part of Williams to deceive the public, or that the product of his machines is not in fact as much entitled to be called “ shredded whole wheat” as is the product of appellant's machines. That he did not use the words as a trade-mark, but merely in a descriptive sense is of no moment.
And in the case of Kentucky Distilleries & Warehouse Co. v. Old Lexington Club Distilling Co. (C. D., 1908, 417; 135 0. G., 220; 31 App. D. C., 223) the Court said:
Where two marks are so nearly identical as to tend to confuse and mislead the public, neither is entitled to registration, even under the ten-years clause of the act of 1905.
We find no difficulty in holding that, under the agreed statement of facts in this case, appellant is not entitled to registration of its mark under the ten-years clause of the Trade-Mark Act.
This brings us to a consideration of the question as to whether or not appellant company is entitled to have its mark registered as a technical trade-mark. Section 5 of the Trade Mark Act of 1905 provides, in part, thatno mark which consists merely in the name of an individual, firm, corporation, or association, not written, printed, impressed, or woven in some particular or distinctive manner or in association with a portrait of the individual, or merely in words or devices which are descriptive of the goods with which they are used, or of the character or quality of such goods, or merely a geographical name or term, shall be registered under the terms of this act. (33 Stats, at I., 726, chap. 592; U. $. Comp. Stats. Supp., 1907, p. 1010.)
In the case of in re Crescent Typewriter Supply Co. (C. D., 1908, 318; 133 0. G., 231; 30 App. D. C., 324) it was sought to register the word "Orient" inclosed in a wreath, the letters "E" and "I" being printed as a monogram. This Court, after holding that the word “ Orient” was geographical and not subject to registration as a trade-mark, said:
We are of the opinion that the only reasonable interpretation of the combination of the letters used is that they spell the word "Orient" and at once convey the use of that word to the mind.
Much more clearly do we think that the word "Asbestos” appears as the dominating characteristic of the mark here sought to be registered. It is descriptive of the goods on which it is used, and would convey at once to the public mind a description of the goods on which the mark appeared. This is forbidden by the statute. On this point we agree with the Examiner of Interferences. Quoting from his opinion:
The impression given one who sees it on the goods must be that they are to be identified by the word "Asbestos” and not by the shape of the letters representing it. No amount of fancifulness in the lettering which leaves a descriptive word legible could make that fancifulness predominate over the idea expressed by the word. Peculiarities in printing cannot lend trade mark properties to an otherwise unregistrable descriptive word. If it were otherwise, an unregistrable non-technical word could be appropriated as a trade mark and registered as many times as the form of its printing could be varied.
Considering the contentions of counsel for appellant in their most favorable light, we are unable, from any view of the case, to bring the facts here disclosed within the limitations of the statute,
The decision of the Commissioner is affirmed, and the clerk is directed to certify these proceedings as by law required.
[Court of Appeals of the District of Columbia.]
IN RE BLACKMORE.
Decided June 1, 1909.
145 0. G., 258; 33 App. D. C., 434.
1. PATENTABILITY-PROCESS OF MAKING ALDEHYDES.
A process of producing aldehyde which consists “ in inducing a reaction between hydrocarbon and oxygen and abstracting the excess heat therefrom " Held not patentable in view of the prior art, which shows that it was old to produce formic aldehyde both from methyl alcohol and hydrocarbon and that applicant's method of extracting heat from the reaction
chamber was also old. 2. SAME-SAME-EFFICACY OF AN APPARATUS IMMATERIAL TO THE QUESTION OF
THE PATENTABILITY OF THE PROCESS. “The fact that appellant has in his possession an apparatus suitable for the production of formic aldehyde in the manner set forth in his specification in larger quantities than any apparatus set forth in the references cited, is immaterial and has no bearing upon the patentability of the
process." Mr. C. L. Parker for the appellant. Mr. F. A. Tennant for the Commissioner of Patents.
VAN ORSDEL, J.:
This is an appeal from a decision of the Commissioner of Patents refusing a patent to the appellant for an alleged new process of making formic aldehydes. The decision of the Commissioner affirms the decision of a majority of the Board of Examiners-in-Chief, which, in turn, affirms the decision of the Primary Examiner. A patent was refused on the ground that it was covered by certain existing patents and had been anticipated in a number of publications referred to in the record. The appealed claims are as follows:
1. The process of producing aldehyde which consists in oxidizing a gaseous or vaporous substance containing carbon and hydrogen and maintaining the