affirming double patenting rejection of claims covering a balloon tire construction in view of previously issued design patent
How later courts described this case
- affirming double patenting rejection of claims covering a balloon tire construction in view of previously issued design patent
Written by the judges who cited it.
The opinion
BLAND, Associate Judge
(specially concurring) .
I concur in the conclusion reached solely upon the grounds: First. That we cannot pass upon the invalidity of a patent. Second. If the design patent is to be regarded as valid, the patentee might find himself in a position where he could not make tires in accordance with his design.
I agree that the following portion of the court’s opinion is supported by the great weight of authority:
“ * * * This principle is well stated by the Examiner in the following language:
“‘If the feature in which the novel esthetic effect resides is the identical feature which produces the novel function, so that a structure embodying the mechanical invention would, of necessity, embody the design, and vice versa, it is questionable whether two separate patents, one for a design, the other for a mechanical patent, should issue; for neither patent could be practiced without infringing the other.’
“When the two ideas are indistinguishable in their characteristics, and manifestly the result of the same inventive idea, a second patent will not be granted. Williams Calk Co. v. Neverslip Mfg. Co. (C. C.) 136 F. 210 , affirmed in Williams Calk Co. v. Kemmerer (C. C. A.) 145 F. 928 .”
In White Co. v. Converse & Son Co. (C. C. A.) 20 F.(2d) 311 , cited in the majority opinion, the inventive idea of the-design of the “Kiddie Kar” was the exact inventive idea of the mechanical- patent of the same. There the “Kiddie Kar” was not ornamented, but the design represented the complete structure of the mechanical “Kiddie Kar” invention.
In the ease at bar the inventive idea of the design inventor of an ornamentation of a tire was not the same inventive idea as in the mechanical invention, and especially is this true when certain of appellant’s claims, which do not describe the design, are considered. Designs must be viewed as a whole. Therefore the above-quoted rule, irrespective of its correctness where applicable, does not apply here. Appellant might build a tire in accordance with certain of his claims without infringing the design patent, but the design inventor could not apply his design to a tire without infringing all the claims in the mechanical application.
If the design inventor could not use his design without infringing the mechanical patent claims, I think that the design patent (assuming it to be valid), is a proper reference upon which to reject the mechanical patent even if it cannot be said that “the two ideas are indistinguishable in their characteristics, and manifestly the result of the same inventive idea.”.