tinued use after is issued without liability, sustaining the right of the purchaser of the process which was the subject of the patent to its continued use without liability. In the case of Booth v. Garelly (1 Blatchf., 247) the patentee, within a few months before his application, sold a button marked with his design upon the open market, at the same time giving notice that he intended to apply for a patent. The Court, saying that the question of abandonment was a question for the jury in a trial at law, said that there may be some question whether a sale of the button with the design thereon was a sale of the thing invented within a meaning of the act; that the patent was not for a new and ornamental button, but for a new and ornamental Design in the manufacture of the article; that the design was worked on the face of the button, and might perhaps be sold with it. In this view a sale of the button would be a sale of the design, the thing patented, and not simply of the product of the invention. In Adams v. Burks (C. D., 1885, 438; 17 Wall., 453) the Court says:

The right to sell and the right to use are each substantive rights, and may be granted or conferred separately by the patentee.

But, in the essential nature of things, when the patentee, or the person having his rights, sells a machine or instrument whose sole value is in its use, he receives the consideration for its use and he parts with the right to restrict that use.

The implied license that is inferred from the acts and dealings of the parties is in the nature of an estoppel to prevent what would be gross injustice, if not fraud. (Montross v. Mabie, C. D., 1887, 603; 30 Fed. Rep., 234; 2 Rob. Pat., sec. 834.)

In Pitts v. Hall, supra, the Court say:

It is insisted on the part of the defendant that the patentee should be bound by his declarations, and evidence has been given that on several occasions he expressed a determination not to take out a patent, but to let the public have the invention. Undoubtedly a person acting on these declarations would not be liable to the patentee, because the patentee would be estopped from denying the license thus given:

In the present case the mantel purchased by Mershom, Brown & Co. was only valuable to them because of the design. It was purchased by their agent with the express intention on their part, made known to the plaintiff, of manufacturing mantels of similar design, and knowing all this, the plaintiff, without any warning that he intended to apply for a patent and that they would not be permitted to manufacture and sell mantels of his design, sold the mantel to them. In doing this he really sold them the design, the only value of which to the purchasers was the right to use it, and he parted with the right, as against Mershom, Brown & Co., to restrict that use. As the mantels sold by the defendants were purchased by them from Mershom, Brown & Co., the defendant had the right to resell them, (Wade v. Metcalf, 129 U. S., 202; 9 Sup. Ct. Rep., 271;) and, this being the only evidence. of infringement on the part of defendants, the bill must be dismissed. This conclusion renders it unnecessary to pass upon the numerous other questions raised in the case. Let a decree be prepared accord

[U. S. Circuit Court-Western District of Pennsylvania.]

ANDERSON v. SAINT.

Decided July 2, 1891.

57 O. G., 546.

1. PATENTS FOR DESIGNS-IMPROVEMENTS.

A patent for an improvement in a design is valid, if it be clear from the specification and drawings that the design is of itself new and distinctive and improved as compared with others, and not merely an improvement upon another design.

2. SAME.

A design patent is not invalid because it covers scrolls and ornamentation similar in effect to scrolls and ornamentations that have been before used, if a new idea is embodied in the method of their arrangement.

3. FAILURE TO MARK DATE OF PATENT-PLEADING.

A defense based upon the failure to mark the date of the patent upon the articles bearing the patented design should be set up in the answer. If set up for the first time in the hearing it will not be considered.

4. PENALTY FOR WRONGFUL USE OF A PATENTED DESIGN.

When a dealer sells articles bearing a patented design knowing that the manufacturer had no license to apply such design, he is liable to the penalty prescribed in the act of Congress of February 4, 1887.

Mr. William L. Pierce for the complainant. Mr. Levi Bird Duff for the defendant. REED, J.:

The bill in this case alleges infringement of Design Patent No. 19,876, for which an application was filed March 17, 1890, and Letters Patent granted June 3, 1890. The answer has raised several defenses, first of which to be considered is that the specification of plaintiff's patent does not contain a written description of the invention in such full, clear, and exact terms as to distinguish the same from designs before known. The specification states that William Anderson has invented new and useful improvements in a design for mantels. The description refers to accompanying drawings, showing a front and a sectional elevation of the mantel, respectively, and the description contains an explanation of the drawings and of the letters which designate the several parts of the mantel. The claim is:

The design for a mantel herein described and shown, consisting of the pilasters a, the caps c, the brackets m, the facing-pieces f, and corner-pieces g, the frieze ǹ, backing-strip k, and molding 1, the mantel-board b, side n, and fire-strips o, substantially as described.

Defendant's counsel has argued that the patent is void because the statute does not authorize patents for improvements in designs; and if not void for that reason, then it is void because, being for improvements, specification does not distinguish between what is new and old. In Wood v. Dolby (C. D., 1881, 340; 7 Fed. Rep., 475) it appeared that the

specification used the expression, "a new and improved design for jewelry settings;" and the defendant claimed that a patent for an improved design was not within the statute, which only provides for patents for new and original designs. The Court said:

Perhaps, as has been argued for the defendant, the statute was intended to protect such Designs only as would be original and distinctive of themselves, and not those which would be mere improvements upon others; but if so, the word "improved" in this patent is not understood as representing that this design is a mere improvement upon another, especially as no other is mentioned, but is considered to mean that this Design is of itself new and distinctive, and improved as compared with others, and, in connection with the new, to represent that it was original with the orator.

And in the case of Dobson v. Dornan (C. D., 1886, 202; 118 U. S., 10; 6 Sup. Ct. Rep., 946) the Supreme Court held the specification of Letters Patent for a design for a carpet as setting forth a sufficient description and claim and the patent valid, in which the inventor stated that he had

invented and produced a new and original design for carpets, of which the following is a specification. The nature of my design is fully represented in the accompanying photographic illustration to which reference is made. I claim as my invention the configuration of the design hereunto annexed when applied to carpeting. Under these authorities I think the defendant's objections are not well taken and the patent valid in this respect.

Defendant's answer further avers that the design was used in combination and detail more than two years before the plaintiff's applica tion for a patent and is not novel or original. In this connection defendant's counsel has contended that the testimony shows sales by the plaintiff before obtaining his Letters Patent, and that under the law sales and public use at any time (no matter how short) before the Letters Patent were granted invalidate the patent. The testimony shows sales by the plaintiff of mantels bearing his design within two years before filing his application for a patent, but does not show any sales prior to that time. I have already held in the case of Anderson v. Eiler (ante, 501; 46 Fed. Rep., 777) that such sales and public use must be more than two years before the filing of the application, and, for the reasons given there, now hold this objection as not well taken. The testimony in relation to the patent in issue in this case does not show any acts on the part of the plaintiff from which abandonment by him of his rights can be presumed or inferred. The testimony upon the question of want of novelty shows the manufacture and sale by Schuette & Co. of mantels of different designs, and photographs of some of these designs were offered in evidence. Schuette & Co. have had mantels of these designs on sale since January, 1886. Defendant's counsel also offered in evidence a book called the "Universal Moulding Book" and another called "Thompson's Album of Mantels," both of which had been published long prior to the filing of plaintiff's application for a patent, and both of which books were for general use in the trade.

In the well-known case of Gorham Co. v. White (14 Wall., 511) the Supreme Court says:

The appearance may be the result of peculiarity of configuration or of ornament alone, or of both conjointly; but in whatever way produced it is the new thing or product which the patent law regards. To speak of the invention as a combination or process, or to treat it as such, is to overlook its peculiarities. A patent for a product is a distinct thing from a patent for the elements entering into it, or for the ingredients of which it is composed, or for the combination that causes it. We do not say that, in determining whether the two designs are substantially the same, differences in the lines, the configuration, or the modes by which the aspects they exhibit are not to be considered, but we think the controlling consideration is the resultant effect. * What is the true test of identity of design? Plainly, it must be sameness of appearance and mere differences of lines in the drawing or sketch. A greater or smaller number of lines or slight variances in configuration, if sufficient to change the effect upon the eye, will not destroy the substantial identity. If, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.

*

*

Where a patent was for a design consisting of the representation of a bird upon a branch or twig, with various accessories, and the evidence showed several preëxisting bird designs, held that the design was yet new and original, since none of the alleged anticipations were like it in appearance either in outline or detail. (Wood v. Dolby, 7 Fed. Rep., 475.) A claim is not defeated merely because scrolls and ornamentation similar in effect to the scrolls and ornamentation described have before been employed, if a new idea is embodied in the method of their arrangement. The statute permits a patent for any new, useful, and original shape or configuration of any manufacture, and where the arrangement of ornament and shape is new, useful, and original the invention is patentable.

Simpson v. Davis (12 Fed. Rep., 144,) Judge Benedict saying:

Against this claim the only defense made is that the distinctive features of the newel-post described were to be found in other newel-posts prior to the date of the plaintiff's invention, and many of them, in fact, copied by the inventor himself from newel-posts erected in New York. But here the difficulty with the defense is that there is no evidence that any newel-post substantially similar in shape and configuration to the one described in the plaintiff's patent had ever been designed. The arrangement of ornament and shape presented by the plaintiff's post is new, useful, and original.

To the same effect is Kraus v. Fitzpatrick (C. D. 1888, 291; 34 Fed. Rep., 39.) In the present case no mantel which has been shown in evidence to have been designed before the plaintiff's mantel is like the plaintiff's in appearance, either in ornament, shape, or configuration. The Schuette mantels in some of the details of ornamentation are similar to the plaintiff's mantel; but the difference between the two designs is plain to the eye, even of the ordinary observer. In neither of the books offered in evidence do I find any design which, under the rules I have cited, resembles the complainant's design. In my judgment his patent is valid upon the question of novelty.

Defendant further claims that the design is a mechanical aggregation of old forms and ornaments, shows no invention, and is not patentable.

Design patents stand on as high a plane as utility patents and require as high a degree of exercise of the inventive or originative faculty. In patentable designs a person can not be permitted to select an existing form and simply put it to a new use any more than he can be permitted to take a patent for a mere double use of a machine; but the selection and adaptation of an existing form may amount to patentable design, as the adaptation of an existing mechanical device may amount to patentable invention. (Electric Manufg. Co. v. Odell, 18 Fed. Rep., 321.)

Invention indicates genius and the production of a new idea. Mechanical skill is applied to an old idea and suggests how it may be modified and made more practical. (New York Belting Co. v. Magowan, C. D. 1886, 122; 27 Fed. Rep., 362.)

In Untermeyer v. Freund (C. D. 1889, 424; 37 Fed. Rep., 342) Judge Core says:

The defendants introduced a large number of tracings from drawings found in volumes belonging to the Astor Library. None were designed for watch-cases, and none, if put on a watch-case, would be mistaken for the complainant's Design. None, if made now for the first time, would infringe; none can be said to anticipate. It is probably true that an expert, with the patent before him, can select from these drawings every separate feature of the design, often finding two or three of them in similar juxtaposition. The drawings would not, however, suggest the Design to one who had not seen it before. A design requires invention, but a different set of faculties are brought into action from those required to produce a new process or a new machine. In each case there must be novelty, but the design need not be useful in the popular sense. It must be beautiful. It must appeal to the eye.

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If it presents a different impression upon the eye from anything which precedes it; if it proves to be pleasing, attractive, and popular; if it creates a demand for the goods of the originator, even though it be simple and does not show a wide departure from other designs, its use will be protected. It is impossible to read the literature upon this subject without being convinced that the courts, though applying the same rules, have looked with greater leniency upon design patents than patents for other inventions. From the nature of things this must be so. A desigu patent must relate to subject-matter comparatively trivial. The object of the law is to encourage those who have industry and genius sufficent to originate objects which give pleasure through the sense of sight.

In Redway v. Store Co. (38 Fed. Rep., 582) Judge Sage says:

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The design must be new, original, and an invention. But there need not be a great invention. That is not essential to the validity of any patent. The statute must have a construction reasonable, and at the same time favorable to its beneficial operation. The design patented to complainants displays invention and is not anticipated by any of the designs produced upon the hearing. It is not a mere aggregation of parts, as claimed by the defendant, not only for the reasons already suggested, but also because, as testified, it is a conventional design, and in this very respect it displays invention.

In Hollister v. Manufacturing Co. (113 U. S., 59; 5 Sup. Ct. Rep., 717) the Supreme Court say, in speaking of the improvement in question in that case:

It is but the display of the expected skill of the calling, and involves only the exercise of the ordinary faculties of reasoning upon materials supplied by a special knowledge and the facility of manipulation which results from its habitual and in