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Section 9, there referred to, provides :
That if an applicant for registration of a trade-mark

is dissatisfied with the decision of the Commissioner of Patents, he may appeal to the Court of Appeals of the District of Columbia, on complying with the conditions required in case of an appeal from the decision of the Commissioner by an applicant for a patent, or a party to an interference as to an invention, and the same rules of practice and procedure sball govern in every stage of such proceedings as far as the same may be applicable.

Gaines v. Knecht was a case of opposition to the registration of a trade-mark under sections 6 and 7 of the act of February 20, 1905, the objections being that the act was unconstitutional, and also that the applicant's mark was so similar to the mark of opponent that it would be likely to lead to confusion, and enable applicant to perpetrate a fraud on the public. The Examiner of Interferences dismissed the opposition, and from his decision the case was appealed to the Commissioner, who affirmed the decision. An appeal was then taken to the court of appeals, and that court affirmed the Commissioner, and ordered that this decision and the proceedings in this court be certified to the Commissioner of Patents, as required by law.

The Court said, among other things, that the appeal was an appeal from the decision of an officer of the executive department performing a ministerial act. He has treated the statute as valid, and so he ought to have treated it until it is otherwise determined by the courts. • It may be true that the Commissioner acts in a Judicial capacity in determining whether the applicant is the owner of the trade-mark, and whether it is one of those marks the registration of which is prohibited, but when he has determined these in favor of the applicant the act to be performed by him is ministerial merely, and that is the act which it is claimed he should have refused to perform, on the ground that the statute is unconstitutional. Such judicial proceedings as there are issue and culminate in a purely ministerial actthe mere registration of a mark which, if the statute is void, cannot possibly prejudice the right of the opponent or of any one else. It is not as if the culminating act interfered with the person or property of others. We sit to review the action of the officer from the same standpoint which he was bound to take. Although the case is now before a court, the case itself is not changed, nor are the rules changed by wbich it should be decided. It is for this court to say merely whether his decision was right or wrong. We think he did not err in treating the act as valid. When sonje case shall arise in which rights of person or property must be affected by the decision it will become necessary to consider the question now attempted to be raised; but to pass upon it now would be to decide a question of theory alone, and this is not the province of a court. (C. D., 1906, 690; 123 0. G., 657 ; 27 App. D. C., 530.)

In the light of the various details of the act of February 20, 1905, and of the specific provisions of section 9, we were of opinion that proceedings under the act were governed by the same rules of practice and procedure as in the instance of patents, and the writ of

error was accordingly dismissed. The same result must follow in the present case.

Under section 4914 of the Revised Statutes no opinion or decision of the court of appeals on appeal from the Commissioner precludes any person interested from the right to contest the validity of such patent in any court wherein the same may be called in question. and by section 4915 a remedy by bill in equity is given where a patent is refused, and we regard these provisions as applicable in trademark cases under section 9 of the act of February 20, 1905.

Appeal and writ of error dismissed.

[Supreme Court of the United States.) THE EXPANDED METAL COMPANY ET AL. v. BRADFORD ET AL., AND THE

GENERAL FIREPROOFING COMPANY". THE EXPANDED METAL COMPANY.

Decided June 1, 1909.

143 0. 6., 883.

1. SPECIFICATION-SUFFICIENCY or DESCRIPTION.

The specification of the Golding patent, No. 527,242, for a process of making open metal-work Held sufficient to enable one skilled in the art to

practice the invention. 2. PATENTABILITY—INVENTION-EVIDENCE OF.

It those skilled in the mechanical arts are working in a given feld aud have failed after repeated efforts to discover a certain new and useful improvement, he who first makes the discovery has done more than make the obvious Improvement which would suggest itself to a mechanic skilled in

the art and is entitled to protection as an inventor. 3. SAME-PROCESS INVOLVING MECHANICAL OPERATIONS.

The mere function or effect of the operation of a machine cannot be the subject matter of a lawful patent; but the invention or discovery of a process or method involving mechanical operations and producing a new and useful result may be within the protection of the Federal statute aud

entitle the inventor to a patent for his discovery. 4. SAME_PROCESS OF MAKING OPEN METAL-WORK PATENTABLE,

A claim for the “ method of making open or reticulated metal-work, which consists in simultaneously slitting and bending portions of a plate or sheet of metal in such manner as to stretch or elongate the bars connecting the slit portions and body of the sheet or plate, and then similarly slitting and bending in places alternate to the first-mentioned portions, and producing the finished expanded sheet metal of the same length as that of the original sheet or plate, substantially as described," Held to set forth a novel series of operations independent of any particular mechanism and to constitute patentable subject-matter.

Mr. Ernest Howard Hunter for The Expanded Metal Company.

Mr. Thomas W. Bakewell, Mr. E. Hayward Fairbanks, Mr. F. P. Fish, Mr. George H. Christy, and Mr. James K. Bakewell for Bradford et al. and The General Fireproofing Company.

Mr. Justice Day delivered the opinion of the Court.

These cases involve opposing decisions as to the validity of Letters Patent of the United States No. 527,242, dated October 9, 1894, granted to John F. Golding for an alleged improvement in the method of making expanded sheet metal. In case No. 66, here on writ of certiorari to the Circuit Court of Appeals for the Third Circuit, a decree of the Circuit Court of the United States for the Eastern District of Pennsylvania, sustaining the patent, was reversed, and the patent held invalid. The opinion of the circuit judge sustaining the patent is found in 136 Fed., 870. The case in the court of appeals is found in 146 Fed., 984. After the decree in the Circuit Court of Appeals for the Third Circuit, the Expanded Metal Company having filed a bill against the General Fireproofing Company in the Circuit Court of the United States for the Northern District of Ohio, the case was heard and the patent held invalid on the authority of the case in the Circuit Court of Appeals for the Third Circuit. (157 Fed., 564.) The Circuit Court of Appeals for the Sixth Circuit reversed the United States Circuit Court for the Northern District of Ohio, and held Golding's patent valid and infringed. (164 Fed., 849.) These writs of certiorari bring these conflicting decisions of the courts of appeal here for review.

The patent in controversy relates to what is known as expanded sheet metal. Expanded metal may be generally described as metal open-work, held together by uncut portions of the metal, and constructed by making cuts or slashes in metal and then opening them so as to form a series of meshes or lattice-work. In its simplest form sheet metal may be expanded by making a series of cuts or slits in the metal in such relation to each other as to break joints, so that the metal, when opened or stretched, will present an open-mesh appearance. It may be likened to the familiar woven wire openwork construction, except that the metal is held together by uncut portions thereof, uniting the strands, and the whole forms a solid piece.

In the earlier patents different methods are shown for cutting the metal, which cuts were afterward opened by a separate operation of pulling or stretching. These crude methods are shown in the earlier American and English patents which appear in the record. While nothing more than such methods was accomplished in the art there was little general or commercial use for expanded metal.

It was apparent that if a method could be devised by which the metal could be simultaneously cut and expanded, such method would be a distinct advance in the art, and this record discloses that the desirable result of simultaneously performing these operations was accomplished in the Golding and Durkee patent No. 320,242. In that patent the operation was performed by means of knives arranged in a step order, the sheet to be fed obliquely. The inventors describe the Golding and Durkee method as follows:

The process consists in the employment of a flat piece of metal of any desired size, and beginning at one side and corner and making an incision within the side of the metal, thus forming a strand which is simultaneously pressed away from the plane of the metal in a direction at or near a right angle, the position the strand assumes depending upon the distance it is moved from the plane of . the metal. a in the drawing shows the first cut made. The next step in this process is to make additional incisions, as is shown at c, d, and d, further within the plate of metal, and leaving uncut sections at the ends of the cuts, and simultaneously with the cutting the strands are pressed away from the plane of the metal at the angle and to the desired position, as above described. Thus each row of meshes is simultaneously cut and formed from a blank plece of metal without buckling or crimping the blank. In the act of cutting and forming the meshes, the finished article is contracted in a line with the cuts or incisions, and consequently it is shorter in this direction than the piece from which it was cut, but it is greatly lengthened in a line at an angle to the plane of the original sheet, plate or blank.

The result was to produce expanded metal, as shown in this figure:

With this patent as the advanced state of the art, Golding set about making further improvements and the result was the patent in suit. The specifications of the patent in suit state:

In the manufacture of what is now generally known as expanded sheet metal, it has been customary to first cut the slits in the sheet metal at short distances apart, and to open the metal at the cuts thus formed by bending the severed portions or strands in a direction at right angles substantially to the plane of the sheet. It has also been made by simultaneously cutting and opening the metal by means of cutters set off or stepped relatively so to make the slashes or cuts in different lines in the manner set forth in patents No. 381,230 or No. 381,231, of April 17, 1888. In both of these methods the product is somewhat shorter and materially wider than the original sheet, but practically no stretching or elongation of the metal forming the strands is caused.

In my present invention I seek to avail myself of the ability of the metal to stretch or distend as well as of its ability to bend under strain or pressure, and the invention consists in the improved method of making expanded metal, viz., by simultaneously cutting and opening or expanding the metal at the cuts by stretching the severed portions.

In the method further described in the specifications the expanded metal is shown to be made by the use of knives making a series of slits in a straight line at equal distances apart across the sheet and

& at the same time carrying downward the severed portions of the metal. And this operation is performed by bending the severed portion at a time when its ends are securely attached to the main sheet, thereby expanding the sheet without materially shortening it. The sheet is then fed forward, and the slitting and stretching operation is repeated in such a manner that the slits are in every case made back of the portion unsevered by the preceding operation, or, in other words, as the specification states, the slits and unsevered portions alternate in position in each successive operation, the bends given to the severed portions or strands being in direction at right angles to the plane of the sheet, there is no contraction in the length of the metal, and the expansion is obtained by the stretching distention, or elongation of the severed strand. This patent contains the single claim, which is as follows:

The herein-described method of making open or reticulated metal work, which consists in simultaneously slitting and bending portions of a plate or sheet of metal in such manner as to stretch or elongate the bars connecting the slit portions and body of the sheet or plate, and then similarly slitting and bending in places alternate to the first-mentioned portions, thus producing the finished expanded sheet metal of the same length as that of the original sheet or plate, substantially as described.

It is thus apparent that the method covered by the claim of the patent is accomplished by the two operations indicated and performed in the manner pointed out in the specifications. The first operation of cutting, bending and stretching the strands simultane. ously produces a series of stretched loops or half-diamonds. Thus:

This series of half-diamonds is then supplemented by the second operation, which consists in making a second series of cuts and ex. pansions for stretching the strands back of and opposite the parts of the metal left uncut by the first operation. The result is that the series of one-half diamonds is converted into the series of full dia. monds and because of the manner in which the stretching is done,

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