Harmon Paper Co. v. Prager

HOUGH, Circuit Judge (after stating the facts as above). We are agreed that no error was committed in declaring the design patent void. It is asserted for plaintiff that there must be infringement, because “no ordinary observer, giving such attention as a purchaser usually gives, would notice any difference between the paper sold by defendant and that patented by plaintiff.” But plaintiff did not patent a wall paper, but a “design for wall paper,” and the test is not to compare defendant’s paper with plaintiff’s paper, but with the design; if that be done, there is no infringement. But what plaintiff really seeks is to cover with this design patent all paper resulting from the method of manufacture above described. This cannot be done. North, etc., Co. v. Racine, etc., Co. (C. C. A.) 271 Fed. 936. If it be said that the design covers all paper looking in pattern (to speak loosely) like the design (i. e. marbleized paper), and possessing “visionary depth,” and also “soft and impressionistic rather than glaring,” it is enough to note that no such possibilities or scope can be spelled out of the design specification. Whether it would be legally possible to procure such a design patent need not be considered. The decree is affirmed as to this patent. A majority of this court are of opinion that the trial judge was right in declining to find invention in the claims in suit from the other patent. n It is admitted that the method and means of producing wall paper responding to these claims are not now in controversy; the question is whether the article defined exhibits patentable invention. . . But any article or product is a result, and a claim is to he read in conjunction with 'its specification; it follows that solution of the question of invention, even as to a product, requires investigation of the means of production. “The end to be accomplished is not the subject of a patent. The invention consists in the new and useful means of obtaining it.” Carver v. Hyde, 16 Pet. 513, 519 (10 L. Ed. 1051). This is the long-established general rule, and although what are called “product patents” are well known, their validity and scope are usually ascertained by analysis of the manner of production. Of this the leading product patent case in this circuit is a striking example. General Electric v. Laco-Phillips, 233 Fed. 96, 147 C. C. A. 166. How this patented paper is produced, and how it came to be made, are matters certainly known from the uncontradicted evidence of the patentee. It is manufactured on and by a machine long well known, which functions in making this paper just as usual. That machine carries on its “Fourdrinier wire” a paper base equally well known and even older, which base is sprinkled with “wood flour” or ground-up wood, and over such sprinkled base moving at usual speed, is flowed a “blending paper stock” well known to the trade. But further a paper base' sprinkled with wood flour had long been an article of commerce under the name “oatmeal paper,” and a plain paper base flowed with blending - — 844 — stock had long heen another such article under various names; generically the product was “marbleized paper.” What the patentee did was to flow old blending stock over oatmeal paper, and find in the product a commercial success. It follows that the claims in suit might truthfully and accurately be compressed into one, reading thus: “A wall paper having an old oatmeal base, and an old blending stock forming a marbleized effect thereon.” ' The result of. thus handling old materials is to change the light effects, by changing the reflecting surface; i. e., roughening it. Optically something of the same kind may be observed by comparing a rough plaster wall when colored, with a similar wall, similarly colored, but smooth. We may assume with plaintiff that the success of this paper is very marked, and that the “soft and impressionistic visionary depth” thereof is most pleasing to the eye; we may further assume (and here also we are agreed) that the prior wall paper art shows no paper made in exactly the same way; yet the question of fact remains whether all this reveals invention, or whether it was no more than the skill of a mechanic plus the taste of a good salesman. We find that the patentee has made an attractive rearrangement of old matter by old means, and such rearrangement has spelled commercial success. This is the best that can be said for the patent, and it is not enough. Undoubtedly success such as is proven is evidence of invention; how potent differs with surrounding circumstances, but it never can •constitute invention in- and of itself. There must always be some mechanical, chemical, electrical (or the like) .component in the inventive concept, some technical achievement on which to build. It may be .very small, yet when viewed through the eyes of the trade or business affected, and helped by commercial success, it may attain to patentable invention. Our recent decision in Kurtz v. Belle, etc., Co., 280 Fed. 277, is an excellent example. But we think no instance can be found in the books of patentable invention found, with absolutely no mechanical (or the like) cleverness to support it. . Of course, that is a question only of fact; but here we can discover nothing but a style, a mode or fashion that caught the public fancy. The matter seems to us exactly like the so-called “paper collar cases.” Collar Co. v. Van Deusen, Fed. Cas. No. 14,395, 10 Blatchf. 109, affirmed 23 Wall. 530, 23 L. Ed. 128. As the essence of the paper collar patent was the simulation of linen, so the essence of this patent is the simulation of cloud effects; it is a patent of illusion, as was the imitation of cloth fabrics considered in Simplex, etc., v. Renfrew, 250 Fed. 863, 163 C. C. A. 177. Indeed, if the citation of the Collar Company Case be followed through the years, the thought is plainly seen that mere novelty or attractiveness of shape or form, needs a substratum of some technical ingenuity to rise to patentable invention. Cf. especially McCloskey v. Du Bois (C. C.) 9 Fed. 38, and MacKay v. Jackman (C. C.) 12 Fed. 615, two well-reasoned decisions of Wheeler, J. We add that it is not without — 845 — weight that, could this patent be sustained, any other variant of paper base, wood flour and blending box, giving (if wanted) storm or sunshine or fog effects, would be equally patentable. The foregoiñg renders it unnecessary to consider the point of non-infringement on the ground that defendant’s paper obtains result from a bleach and not a blend. We have considered the opinion of Geiger, J., in Harmon, etc., Co. v. Kimberly Clark Co., 289 Fed. -, and agree with his result; we have not found it necessary to dwell on the file wrapper contents. Decree affirmed, with costs.