EX PARTE HUGHES AND FLETCHER

71

Sobelman to disclose to his attorney what records he had when the

preliminary statement was being prepared in order that the attorney might judge as to what importance should be attached to
each exhibit. The failure to disclose the "pattern" until "the
evening of December 14, 1922," is not excused because Sobelman
had " forgotten all about it and had just accidentally found it in
the drawer of his desk." He should have searched all reasonable
places before making the original preliminary statement.
The motion to amend is granted as to the explanatory clause
iteith respect to the specimen alleged to have been made on or about
March 1, 19.1, and denied as to the matter of the pattern alleged
to have been made on or about July 1, 1920.

Ex

PARTE HUGHES AND FLETCHILR

Decided february 9, 1924

328 0. G. 6
1. DESIGNS-MEHANICAL FUNCTIONS.

A design patent can not be based upon functional features of a structure,

or at least a design patent can not ever be used to appropriate per se the
mechanical functions.
2. SAME-IMPROPER SUBJECT MATTER FOR A DESIGN PATENT.

Where those who use an article have no regard for its beauty or appearance if it does the work, and its appearance when in use is not perceivable, Held that the structure is not the proper subject matter for a design patent.

APPEAL from Examiners in Chief.

Mr. Jesse R. Stone for the applicants.

Assistant Commissioner:
This is an appeal from the action of the Examiners in Chief refusing applicants a design patent for a well drill.
The device shown in the drawing and claimed by applicants is
substantially the drill shown in the drawing of Patent No. 1,474,633,
issued to Hughes, one of the applicants here, on November 20, 1923.
In one of the papers in the file is shown a picture of a previous
device, of which the instant device is alleged to be an improvement.
That previous device seems to be shown in Patent No. 1,289,179,
Hughes, December 31, 1918.
[1] Applicants here allege that the structural features of their
drill have no mechanical functions, at least to the extent that their
particular form or shape is not determined by utilitarian features.
Some doubt may be cast upon this by the description and claims of
Patent No. 1,474,633. It is clear that a design patent can not be
FENNING,

72

DECISIONS OF THE COMMISSIONER OF PATENTS, 1924

based upon functional features of a structure, or at least a design

patent can not ever be used to appropriate per se the mechanical
functions.
Quite aside from this, however, the courts have held that there
are devices of such character that they are not susceptible of design
patenting. No such case apparently has been considered by the
Court of Appeals of the District of Columbia, nor has the Supreme
Court had occasion to consider such a case. The cases in the district
courts and the circuit courts of appeals, however, are numerous.
It was established in Gorham Company v. White, 81 U. S. 511,
the leading case in the Supreme Court of the United States, that
design patents relate to appearance rather than utility, and that the
inventive genius on which a design patent may be based must be
directed toward something which produces an Esthetic effect. There
are some things so humble, homely, and purely utilitarian and in
which appearance is so insignificant that the sense of the beautiful
is not involved in their production or manufacture. Pearls are not
cast before swine for the reason, among others, that swine will not
receive an oesthetic thrill on seeing pearls.
[2] The subject of the present application is employed to drill a
hole into the ground. When in use it is at the bottom of a hole
surrounded and covered with dirt, broken rock, water, oil, and grime.
Certainly those who use it have no regard to its beauty or appearance if it does the work. Indeed its appearance is not perceivable,
since it is buried at the bottom of a small hole. Applicants urge
that these boring bits may be displayed in a store before being purchased, and they may temporarily be removed from the well and
placed in sight of the workmen upon the derrick platform. This
may well be, but I am unable to believe that in either of these positions much attention is paid to beauty. I can not believe that the
device shown in the drawing of the present application tends to promote pleasure and refinement, an effect depending upon the sense of
the beautiful.
The courts have held a horseshoe calk not the proper subject matter for a design patent in Rowe v. Blodgett & Clapp Co., 112 Fed.
Rep. 61. In North British Rubber Co., Limited v. Racine Rubber
Tire Co., 271 Fed. Rep. 936, the court said that an automobile tire
which was subject to the hard usage of roads and passed through
all species of dirt was not a proper subject for a design patent. In
Smith & Co. v. Peck, Stow & Wilcox Co., 277 0. G. 981; 1920 C. D.
373; 262 Fed. Rep. 415, there was an intimation that a screw driver
might fall in the same class. The court suggested the same with
respect to the soap cup in Baker et al. v. Hughe8-Evans Co., 270
Fed. Rep. 97. In Rose Mfg. Co. v. Whitehouse Mfg. Co., 201 Fed.

EX PARTE CUTHBERT

Rep. 926, the court made the same suggestion with respect to the
bracket for a license plate.
I believe the structure of the instant application falls in the same
class.
I have carefully examined the cases cited by the applicants, but
find in them nothing to impel the allowance of the present case.
Applicants refer particularly to Earle Manufacturing Company v.
Clark, 154 Fed. Rep. 851, in which the court sustained design patents
for a grass book. In that case the court considered that the patents
were not invalid because they were useful. It does not appear that
the sole purpose and the form of the device was a functional purpose. The question whether the device was actually ornamental or
not was not considered. But it does appear there that there were
actual purchases made because of the beauty of the article.
Moreover, applicants' device, as pointed out by the Examiners in
Chief, is in general appearance similar to other drill bits, and the
sight differences therefrom in appearancedo not involve invention.
The Examiners in Chief are affirmed.

Ex PARTE CUTHBERT
Decided February 20, 1923

328 0. C. 251
INVENTION-TANSFER

OF OLD DEVICE TO ANALOGOUS

SITUATION.

Where a prior patent teaches the use of appellant's manner of attaching wire terminals as applied to electric fittings In general by means of
wire coiling and clamping screws, the use of such screws for securing
the wire terminals to a particular type of lamp socket, accompanied
by their known advantages, does not constitute invention.
[NoTE.-This application has resulted in Patent No. 1,485,964, March 4,
1924.]
APPEAL from the Examiners in Chief.
Messrs. Foree, Bain & May for the applicant.
KiNNAN, First Assistant Commissioner:
This is an appeal from the decision of the Examiners in Chief
affirming the final rejection by the Primary Examiner of claims 1,
2, and 7, of which the following is sufficiently illustrative:
1. A lamp socket structure comprising a base; a lamp engaging threaded
sleeve mounted on said base; wire terminals mounted on said base, accessible
thru the open end of the sleeve; a one-piece shell enclosing said structure and
inseparably secured thereto and wire coiling and clamping screws threaded
in said terminals.

The references relied upon are: Ball, 501,485, July 18, 1893;
Plierce, 674,283, May 14, 1901; Benjamin, 825,444, July 10, 1906;