CITE: 283 F. 75 CMON: May 1922 PLAIN: Whiting Manufacturing Co. DEFND: Alvin Silver Co. COURT: Circuit Court of Appeals, Second Circuit DATE: May 8, 1922 HISTORY: Appeal from the District Court of the United States for the Southern District of New York. Suit by the Whiting Manufacturing Company against the Alvin Silver Company. From a decree for plaintiff, defendant appeals. Reversed and remanded, with directions. SUMMARY: Appearance, which is the essential consideration in designs, may result from pecularity of configuration, or of ornament alone, or of both conjointly. JUDGE: HOUGH, Circuit Judge Before ROGERS, HOUGH, and MANTON, Circuit Judges. DECISION: The test of invention for design patents is the same as for mechanical patents. Strause, etc., Co. v. Crane, 235 Fed. 126, 131, 148 C.C.A. 620. Consequently the state of the art and the room left for invention when application filed must be considered in respect of both. Claims for improvements in arts already understood must be strictly construed (American, etc., Co. v. Parlograph Corp., 235 Fed. 137, 148 C.C.A. 631); and this is as applicable to designs as to mechanical devices. A patentee's grant of privilege consists only in that which is both described and claimed, while drawings assist the specification, but do not control. Fulton Co. v. Powers Co. (C.C.A.) 263 Fed. 578. This also applies to designs, even when (as is nowadays customary) the specification consists largely of references to the design drawings. It is therefore just as essential, in respect of a design patent, to discover exactly what the patentee invented as it is to do the same thing in respect of machines, processes, etc. But, of course, the substance of any design patent depends upon the nature of designs, as that word is used in patent law. In Dominick v. Wallace, 209 Fed. 223, 126 C.C.A. 317, this court, quoting from Gorham v. White, 14 Wall. 511, 20 L. Ed. 731, declared: "It is the appearance itself * * * that constitutes mainly, if not entirely, the contribution to the public [by any design] which the law deems worthy of recompense. The appearance may be the result of peculiarity of configuration, or of ornament alone, or of both conjointly; but, in whatever way produced, it is the new thing, or product, which the patent law regards." We must, then, first ascertain exactly what is covered by the patent in suit, and here plaintiff contends that it covers nothing but the surface ornamentation, while defendant asserts that the claim covers, and the specification discloses, not only that ornamentation, but also the configuration or outline, substantially "as shown". On this point we hold with defendant, and such holding is induced by considering that the design is described as specifically for a "handle for a spoon" or similar article, but always for a handle, although the style of ornamentation applied thereto might be and has been used in respect of other ornamented metal objects. Again, there is displayed and described, not only the ornamented obverse of a handle, but a "view of the reverse face", which fact is proof positive of the patentee's thought that the simple form of the reverse was just as much a part of his design as the highly ornamental obverse. Further to speak of the reverse and obverse of a design is absurd; the patentee is plainly talking of a handle. Finally, the eye notices and the testimony shows that the ornamenting of both obverse and reverse is designed and apportioned to the peculiar and characteristic shape of the handle tip, which (ut supra) is specifically shown as a part of the patented ornamental design.Thus, remembering that appearance is the essential consideration in designs, and that such appearance may result from "peculiarity of configuration, or of ornament alone, or of both conjointly", we are of opinion that this patent is for a design which depends for its appearance -- for its effect on the eye -- upon configuration and ornamentation conjointly. Argument is submitted for appellant that this result necessarily flows from the nature of the Patent Office proceedings; in that patentee did not (as he could have done) separate his ornamental arrangement of bevels, panels, and beadings from any particular form or configuration, and patent that kind of ornamentation; and this he did not in terms do. Therefore, since he did not formally establish a separation in his claim, he must be deemed to have patented all that is exhibited in the drawing, viz. the ornamented handle in its entirety. But we reach the same conclusion, without expressing any opinion as to the effect of the Patent Office procedure. The matter is mentioned in Rowe v. Blodgett, 112 Fed. 61, 50 C.C.A. 120, and again in Ashley v. Tatum, 186 Fed. 339, 108 C.C.A. 539; and we still think the Office practice in respect of design patents "not only liberal, but lax." That, however, is the affair of the Office and not of this court; this patent was taken out in accordance with current practice, and we decline to impute to mere conformity with Office usage, a technical significance, not imposed by statute. Our arrival at defendant's result is, as above shown, a holding that plaintiff must stand on his patent as issued; its meaning, intended significance, and asserted scope must be primarily learned from the four corners of the document as it stands, and to us the instrument means that the patentee designed and patented the ornamental part of a handle suitable for many more special uses, and that ornamental part has itself two parts, contour and surface pattern. A further reason for so reading the patent is that, like all other patents it should be construed so as to uphold, and not destroy. The art of silverware ornamentation is very old; so are the bevels, panels, and beading here shown; and on this record they have been used conjointly in such a multitude of arrangements as to render more than doubtful the possibility of validly patenting the ornamentation as such, and claiming protection thereunder, no matter whether similar ornamentation was used on a tablespoon or an architectural frieze. But when this particular style of ornament, following in configuration the peculiar shape of a special handle, was patented (as we believe was done by Reimherr), then novelty, utility and esthetic or artistic quality are all admitted, and the usual exhaustive record of the prior art before us shows nothing to controvert the assertion that no one before this patentee produced a handle like this, both as to ornamentation and contour or configuration. The rule as to design infringement has again been discussed at length. We remain of opinion that from Kruttschnitt v. Simmons (C.C.) 118 Fed. 851, affirmed 122 Fed. 1020, 58 C.C.A. 111, through Ashley v. Tatum, 186 Fed. 339, 108 C.C.A. 539, to Wilson v. Haber (C.C.A.) 275 Fed. 346, "the fundamental law of infringement" has not been departed from, viz. that to infringe "there must be an appropriation of the novel elements of the patented design". There are often differences of opinion as to what constitutes the novel elements referred to; it being always admitted that a "Chinese copy" is never necessary. Graff v. Webster, 195 Fed. 522, 115 C.C.A. 432. But equally it is necessary that the novel elements appropriated must constitute the substance of that patented design. A patentable design "creates a new impression upon the eye" (Graff Case, supra); but that impression must be derived from the thing patented, and not by an observer selecting a part of the thing patented, and so highly approving thereof, that he finds the design in anything that contains the part he thus approves. This is really the method of plaintiff, and is frankly exhibited by its witnesses. One said (on comparing the commercial product of the parties): "You notice that the entity of effect, so far as design is concerned, is identifical in both. It is merely applied, in my judgment, to a different shape in the defendant's article." Another, when asked whether defendant's spoon was "substantially the same design" as plaintiff's, replied: "Exactly the same as far as the decorative effect is concerned." And still another, being asked to consider especially defendant's spoon, remarked: "Of course, we do not have to go into the shape of the spoon at all. That is the last. The ornamentation is what sells the teaspoon, never the shape." One leading witness, when cross-examined regarding his expressed opinion on the decoration of the spoons, said that he referred to that "on the face of the handle of the spoons", and continued: "Of course, the back is not decorated; it is simply a structure." "Q. You do not find any pattern or design on the back? A. No; structure." This is in effect confining the patented design to the ornamentation of the obverse, and denying to the reverse or configuration of the ornament any part in the same. On the other hand, defendant's witnesses agreed (as one of them said) concerning the two compared products: "I think really the principal noticeable difference is the tip of the handle." "Q. And you consider that tip an important and impressive feature of the design? A. I do." Thus was inquiry made below as to what was the design or thing patented. We resolve the question by considering the application and drawing, but incline to the opinion that by the balance of evidence it was shown in trade opinion that such designs as are exhibited by both parties hereto include the shape, contour, or configuration of the ornamentation, or thing ornamented. Undoubtedly the rule of Gorham v. White, supra, is to be followed, and if in the eyes of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, the one first patented is infringed by the other. But it was found below, and we do not think it here controverted, that if plaintiff's patented design includes, not only ornamentation, but configuration or contour, no observer could be deceived. Plaintiff's case rests upon the dissection of the patented design according to some trade surgery; i.e., upon the assertion (ut supra) that it is the ornament that sells the spoon -- hence the contour of the alleged infringement, however unlike, is to be disregarded. But a suit on a design patent is not an action for unfair competition, nor for infringement of a trademark; it can only succeed when the design as patented has been substantially appropriated, and that has not been done in the present instance. We have treated this record as if defendant's beading, etc., were slavish imitations or "Chinese copies" of plaintiff's. This is not true: but it is true that, if a trained eye utterly disassociates the scheme of ornamentation from the contour of the same, or from the shape of the handle, they are very much alike. But the most ordinary purchaser, exercising that inconsiderable amount of care which is also called ordinary, could never mistake defendant's design for plaintiff's, if the latter's patent covers and is valid for a combination of ornament and shape "as shown," and we hold that to be the case. Decree reversed, with costs, and cause remanded, with directions to dismiss the bill. DISSENT: ROGERS, Circuit Judge. I dissent. The validity of the patent was not challenged in the court below. It was not challenged because, as that court said, it is apparent by a glance at the prior art there is nothing which comes near it, and it was pronounced valid beyond doubt. That being the case, the sole question in this court is whether the defendant has infringed the complainant's patent, and I think the court below correctly found that it did. The leading case on design patents is that of Gorham Co. v. White, 14 Wall. 511, 20 L. Ed. 731, decided in 1871, when the rule was laid down as follows: "We hold, therefore, that if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one, supposing it to be the other, the first one patented is infringed by the other." In that case there were differences between the plaintiff's design and those of the defendant's in details of ornament, but they were the same in general appearance and effect, and so much alike that in the market and with purchasers they would pass for the same thing. The Supreme Court reversed the court below and held the patent infringed. The court said: "Unless, therefore, the patent is to receive such a construction that the act of Congress will afford no protection to a designer against imitations of his invention, we must hold that the sale by the defendant of spoons and forks bearing the designs patented to White in 1867 and 1868 is an infringement of the complainants' rights." In my opinion the identity of design is much closer in the case now before us than that which existed between the patterns involved in Gorham Co. v. White. The following excerpt is from the testimony of a salesman, buyer, and manager of 24 years' experience of one of the leading silverware houses in the country: "Q. From your experience in selling silverware, would, in your opinion, customers, who came to purchase silver to match the plaintiff's design, if shown the defendant's design, believe that it was a similar design to the plaintiff's?" "A. Yes, sir." "Q. And they would purchase articles to match the plaintiff's design of the other company's production? A. Yes, sir; that would be liable to happen frequently." There is other testimony in the record of similar import, and my own inspection of the silverware which was produced upon the argument in this court convinced me that the resemblance between the two designs was such as to deceive the ordinary observer, within the rule laid down in Gorham Co. v. White, supra. I therefore think the decree should be affirmed.