The opinion
KIRKPATRICK, Judge
(dissenting).
I cannot agree that the appellant’s contribution is anything beyond what could be expected of a person having ordinary skill in the art. The Lindgren and British references fully disclose the metal spinning technique used by the appellant to make a frusto-conical article from a fiat disk. As described in the majority opinion, a round metal blank is first clamped on the top of a spindle having a frusto-conical shape. As the spindle and blank are rotated, a roller pushes the metal down along the sides of the spindle to form a hollow frusto-cone. If the finished article is to have tapered sides, it is hard for me to think of anything more obvious than to use a tapered disk to start with — the first of the two steps which the appellant says constitute the advance over the prior art made by his invention. 1 Being provided with a tapered disk to work on, the necessity of moving the roller in a path not parallel to the sides of the spindle (the second step claimed by the appellant as novel) would seem to be equally obvious. In fact, if the taper of the disk is to be carried over into the finished article, it could not be done in any other way. In short, I cannot find anything unobvious about-the features which the appellant asserts constitute an advance over the prior art.
The record supports the majority’s finding that what the appellant did is new, and its utility has not been challenged. However, novelty and usefulness do not add up to patentability. The majority opinion speaks of the appellant’s “solution to the problem of making a tapered wall frusto-cone.” It is true that in a doubtful case the fact that an invention solves a problem in the art may sometimes be taken as evidence that it was not obvious, but that is only where there is evidence of an old and recognized need which the invention satisfies and which others have tried without success to supply. In the present case, if any such need existed, the record does not show it, nor does it appear that anyone ever tried or wanted to do what the appellant did. So far as the record shows, the “problem” which the appellant is said to have solved was merely that of accomplishing by a simple adaptation of known methods, something which he set out to do. The farmer who sets out to construct a fence around his ten-acre field has that kind of “problem,” and he solves it when he completes the job. The fence and the way in which the farmer goes about building it will almost certainly differ from all other fences, but the fact that the desired result has been accomplished is no evidence that it was not perfectly obvious:
The majority, to fortify its conclusion, invokes the principle that a doubt as to patentability should be resolved in favor of the applicant. It is too late for me to question the existence of that rule, although I think it wrong to clothe an in *692 vention of admittedly doubtful validity with a strong presumption that the patent based on it is valid — a presumption which of itself, without more, puts the owner in a position to compel others to defend their use of it in a usually costly and always troublesome infringement suit. However, in the present case I feel that the invention before the court is so plainly an obvious one that there exists no doubt whatever which would call the rule referred to into play. Such doubt cannot be created by novelty and utility alone.
I would affirm the decision of the Board of Appeals.
. “The change over - the, references is a simple one, 'the .-Change being in the use -of the taperecl blank and in a non-parallel roller path * - *•