In re Lobl

DISSENTING OPINION

LenROOt, Judge:

I feel compelled to dissent from the conclusion reached by the majority in this case for the reason that, in my opinion, the production of the design here involved did not involve the exercise of the inventive faculty.

It is my opinion that a person with average intelligence, having before him the drawing of appellant’s mechanical patent, or the drawings of the Moore patent, desiring to design a more pleasing and artistic form of inhaler, could, and would, within the space of an hour, produce substantially appellant’s design without any exercise of the inventive faculty. The general contours of an inhaler, *957such, as is shown in appellant’s paten!, must be preserved because of its utilitarian function. This leaves a very limited field for change in form to render the design more pleasing and artistic. Probably not more than three or four such designs, excluding ornamentation upon the form itself, could be made without exhausting ’the field. If the design here involved is patentable, then perhaps two or three additional designs are likewise patentable because sufficiently distinctive from the design here in issue; and, until the expiration of these patents, no one could make inhalers like those shown in the references in an attractive and artistic form without paying tribute to those who, in the exercise of merely ordinary skill, had produced designs upon which they had secured patents.

In the case of In re Walter, 17 C. C. P. A. (Patents) 982, 39 F. (2d) 724, we said:

It should be remembered that the purpose of the law authorizing the grant of patents for designs was to give encouragement to the decorative arts, but it was not the purpose to grant a monopoly over a particular design, even if it presents a new and distinctive appearance, if its creation did not involve invention. The decorative arts would be retarded instead of advanced if one without the exercise of the inventive faculty, upon seeing a new article come ■into common use, could draft designs covering all attractive forms of the article and secure patents for them, thus preventing the use of the article by the public, except in its most unattractive form, unless tribute be paid to him who had secured the patents.
In designs the reward of a monopoly for a given period must be confined to those who have invented new, original and ornamental designs for articles of manufacture.

In my opinion, the above quoted, language is particularly applicable to the case at bar.

It seems to me that, with the allowance of a patent for the design here involved, in view of the references, the tribunals of the Patent Office would correctly understand that it is a view of a majority of this court that a much more liberal policy should be followed in determining what is inventive in design cases than has heretofore been approved by this court in the case above cited.

The tribunals of the Patent Office concurred in finding that, in view of the cited prior art, appellant’s design did not involve invention. Therefore the rule is applicable that concurring decisions of the Patent Office tribunals upon a question of fact will not be disturbed by us unless manifestly wrong. ■ This is a rule that I had supposed was of general application, and I must assume that the majority of the court is of the opinion that the Patent Office tribunals were not only wrong, but manifestly so; I am unable to understand how such a conclusion is possible upon the record before us.

*958In my judgment, the decision of the Board of Appeals should be affirmed.

Bland, J., concurs in this dissent.