# Battery Patents Corporation v. Coe > Court of Appeals for the D.C. Circuit · September 13, 1937 · 93 F.2d 220 URL: https://www.frixlaw.com/law-library/cases/9650468 ## Case - **Full name:** BATTERY PATENTS CORPORATION v. COE, Commissioner of Patents - **Court:** Court of Appeals for the D.C. Circuit - **Decided:** September 13, 1937 - **Citations:** 93 F.2d 220; 68 App. D.C. 61; 1937 U.S. App. LEXIS 2767 - **Precedential status:** Published - **Opinion:** Dissent by Martin - **Judges:** Martin, Robb, Van Orsdel, Groner, Stephens - **Cited by:** 6 later opinions in the Frix Law Library ## Citator (automated) - No negative treatment found by the automated citator. That is not the same as a confirmation that the case is good law; read the citing cases. - Full citator and citing cases: https://www.frixlaw.com/law-library/cases/9650468 ## Opinion text MARTIN, Chief Justice (dissenting). The applicant, George S. Lewis, filed in the Patent Office an application for a patent for a design for a bicycle guard and lamp. He afterwards assigned his right and interest in the application to the present appellant, Battery Patents Corporation. An illustration of the design in question appears in the majority opinion of the court. The application was considered and denied by the Primary Examiner in the Patent Office upon the following references: Humble, 1,069,550, August 5, 1913; Sawyer (Design), 92,114, April 24, 1934; Advertising Booklet of the Series 50 Buick Straight Eight for 1932, page 13, Model 32 — 56—S, fender and head lights. The Examiner pointed out that the same configuration of a lamp on a fender is shown to be Old in the catalogue citation picturing the Buick automobile. He also called attention to the Humble patent, showing the transverse or cross-sectional configuration of the guard embodied in the applicant’s design. He further cited the design patent to Sawyer, disclosing a lamp upon the front wheel of a tricycle in a relation generally similar to that of applicant’s. An appeal was taken from the Examiner’s final ruling to the Board of Appeals, which held that the difference between the shape of applicant’s guard and lamp and that of the Buick fender and lamp is not such as to constitute invention; that the general configuration of the bicycle guard, particularly with a lamp thereon, is shown to be old. The Board affirmed the .decision of the Examiner. Whereupon the appellant, as assignee of the applicant, filed suit in the District Court of the United States for the District of Columbia, under section 4915, Rev.St., as amended (section 63; Tit. 35, U.S.C. [ 35 U.S.C.A. § 63 ]), making the Commissioner of Patents party defendant and praying that the Commissioner be directed to issue a patent to plaintiff upon the application. The case was tried before the lower court, which entered findings of fact and conclusions of law in the record, holding that the design of the Lewis application does not disclose invention over the prior art as exhibited in the patents and publication in evidence; that the appellant is not entitled to the issuance of a patent on the application of its assignor, Lewis. The court thereupon dismissed appellant’s bill, with costs, and from that decree this appeal is taken. It thus appears that the Lewis application was denied by the unanimous rulings of the Patent Office tribunals, and that their holding was sustained by that of the lower court. It is clear, therefore, that the decision of the lower court should liot be reversed unless it appears that it is clearly and obviously erroneous. I am of the opinion that the decree of the lower court should be affirmed. A reference to the Sawyer patent, supra, shows a velocipede in which the mudguard is extended beyond what corresponds to the fork of the bicycle, that is, the portion of the frame to which the handle bar is fastened, and has a lamp placed on the guard in a position almost exactly the same as that shown in appellant’s design. A velocipede is a vehicle of the same general character as a bicycle, and obviously there would be no invention in transferring any given design of guard and lamp from a velocipede to a bicycle. It must be remembered that the question here is not one of structure for functional purposes, but a question of design and appearance. The picture of the Buick automobile appearing in the majority opinion is a reproduction of a cut in a Buick catalogue, showing ,at the left hand side thereof, an automobile parking lamp of substantially the same shape as the lamp shown in the application of Lewis. There can be no *228 invention in selecting from the prior art, where it had been used in a similar situation, a lamp of this shape and placing it on a bicycle mudguard in place of the lamp shown in the Sawyer patent. The Humble patent discloses a mudguard of substantially semicircular shape, similar to that shown in the Lewis application with a lamp thereon. It seems clear that the Lewis design is the result of mere mechanical combination, and does not involve the exercise of invention. The elements comprising it are all old and were used for purposes similar to applicant’s construction, serving no other purpose and presenting a substantially similar appearance. The statute (section 73, tit. 35, U.S.C. [35 U.S.C.A. §.73]) specificaky provides that any person who has invented any new, original and ornamental design for an article of maunfacture may obtain a patent therefor. In order to be patentable, a design must be the product of the inventive faculty, as distinguished from mere mechanical skill. In the case of Smith v. Whitman Saddle Company, 148 U.S. 674 , at page 679, 13 S.Ct. 768, 770 , 37 L.Ed. 606 , the Supreme Court of the United States quoted with approval the language of Mr. Justice Brown in Northup v. Adams, Fed.Cas.No. 10,328, 12 O.G. 430 , as follows: “To entitle a party to the benefit of the act, in either case, there must be originality, and the exercise of the inventive faculty. * * * Mere mechanical skill is insufficient. There must be something akin to genius — an effort of the' brain as well as the hand. The adaptation of old devices or forms to new purposes, however convenient, useful or beautiful they may be in their new role, is not invention.” See, also, Nat Lewis Purses v. Carole Bags, 83 F.(2d) 475, 476 (C.C.A. 2d, 1936); A. O. Smith Corp. v. Petroleum Iron Works Co., 73 F.(2d) 531, 538 (C.C.A. 6th, 1934); Berlinger v. Busch Jewelry Co., 48 F.(2d) 812, 813 (C.C.A. 2d, 1931); In re Walter, 39 F.(2d) 724, 725 (C.C.& P.A., 1930); Strause Gas Iron Co. v. William M. Crane Co., 235 F. 126, 131 (C.C.A. 2d, 1916); Fox v. Spiegel, 50 F.(2d) 195, 196, 197 (D.C.Conn., 1931). It seems clear that in the design here involved the combination of elements, old in themselves, in a manner essentially similar to their former functions, and not differing substantially from their former appearance, is merely mechanical and does not attain to the dignity of invention. In my opinion, therefore, the decree of the lower court should be affirmed. --- Source: Frix Law Library, https://www.frixlaw.com/law-library/cases/9650468. Public record. Not legal advice.