ject of a design patent. It is a mistake to assume that a patent for a design applies only to certain ornamentation upon an article of manufacture, and that it cannot properly apply to the article of manufacture itself as that article of manufacture is designed and produced. In 1902 Congress amended the act, making it read that "any person who has invented any new, original, and ornamental design for an article of manufacture" may obtain a patent for such design. Before that amendment the act permitted a design patent to issue for "any new, useful and original shape or configuration of any article of manufacture." After this amendment was made the argument was advanced that Congress intended by the amendment that design patents for mere shape or configuration of an article of manufacture should no longer be granted. But in Theo. W. Foster & Bros. Co. v. Tilden Thurber Co., 200 Fed. 54, 118 C. C. A. 282 (1912) the Circuit Court of Appeals in the First Circuit held that it could not accept any such view of the matter. The court said: "We are not prepared to accept this view. Though the amendment has dropped the word 'useful' and the express provision that a new shape or configuration given to an article of manufacture shall be patentable as a design, we are unable to believe it intended by these changes that no design for any article of manufacture shall be considered 'new, original, and ornamental,' within the meaning of the section as it now stands, if the ornamental character consists merely in a new and original shape or configuration given to the article. It is, of course, still true, as was held before the amendment, that 'design patents' refer to appearance, not utility.'" And it was held in that case that a clothes brush is a proper subject for a design patent. Prior to that decision, and after the amendment of the act made in 1902, we sustained in Ashley v. Samuel C. Tatum Co., 186 Fed. 339, 108 C. C. A. 539 (1911), a design patent for "the ornamental design for an inkstand as shown," there being no written description of the invention, and in the opinion, written by Judge Lacombe, the court said: "The manufacture of glass inkstands of this general character has been going on for very many years, and the chance of any broadly new design being produced would seem to be slight. Nevertheless the exhibits in the case indicate that complainant's design shows a radical and distinctive change in type from those which preceded it; its dominant feature being the contour and relative proportions of parts, rather than the presence or absence of any applied ornamentation." In that case we sustained a design patent, notwithstanding the absence of any applied ornamentation. It may be conceded that there is nothing novel in the shape of these reflectors or in the principle of their construction by the use of prisms. The fact that it was old to cut prisms in shades and reflectors was not denied; neither was the claim made that novelty existed in the shape. But the fact that no such claims were made, or could be made, does not put these complainants out of court. In Washbourne & Dunn v. Webster, 195 Fed. 522, 115 C. C. A. 432 (1912), each element of the patented design considered separately was old, and sometimes two or more of them appeared combined in the prior art, and yet we held that these facts did not invalidate the patents, unless it appeared that they were so assembled as to form the designs of the patents then in suit. And we then stated that it was the design as a whole which had to be considered; that the situation in this respect was analogous to machines made up of old elements. It sufficed that the machine produced a new result, or the design a new impression upon the eye. It is the design of the whole thing as it appears in use which is the test in cases of the class in suit. It is not necessary in the case of a design patent that the thing to be patented should have been made for the purpose of ornament. It is sufficient that a useful article has been made in such a way as to make it ornamental. In this case the inventor has produced a reflector which is handsome when in use and which rises to the dignity of a design patent. In Dominick & Haff v. R. Wallace & Sons Manufacturing Co., 209 Fed. 223, 126 C. C. A. 317 (1913) this court, speaking through Judge Coxe, said: "A design patent necessarily must relate to subject-matter comparatively trivial and the courts have looked with greater leniency upon design patents than patents for other inventions The object of the law is to encourage those who have the industry and genius to originate objects which give pleasure through the sense of sight." And that is what Mygatt has done. He has originated reflectors "which give pleasure through the sense of sight." We think that design patent No. 37,967 should have been sustained. The rule governing design patents was expounded by the Supreme Court in Gorham Co. v. White, 14 Wall. 511, 524, 20 L. Ed. 731 (1871), and it was said: "The acts of Congress which authorize the grant of patents for designs were plainly intended to give encouragement to the decorative arts. They contemplate not so much utility as appearance, and that not an abstract impression, or picture, but an aspect given to those objects mentioned in the acts. It is a new and original design for a manufacture, whether of metal or of other material; a new and original design for a bust, statue, bas relief, or composition in alto, or basso-relievo; a new or original impression or ornament to be placed on any article of manufacture; a new and original design for the printing of woolen, silk, cotton, or other fabrics; a new and useful pattern, print, or picture, to be either worked into or on any article of manufacture; or a new and original shape or configuration of any article of manufacture-it is one or all of these that the law has in view. And the thing invented or produced, for which a patent is given, is that which gives a peculiar or distinctive appearance to the manufacture, or article to which it may be applied, or to which it gives form. It is the appearance itself, therefore, no matter by what agency caused, that constitutes mainly, if not entirely, the contribution to the public which the law deems worthy of recompense. The appearance may be the result of peculiarity of configuration, or of ornament alone, or 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." * * * [2] Mygatt under his design patent No. 37,967 produced a new reflector, the appearance of which attracted attention and called out favor. It is that appearance, no matter by what agency caused, that constitutes the contribution to the public which the law deems worthy of recompense and to which it extends its protection. The fact that complainants have sold over 500,000 of the reflectors manufacured under this patent affords some indication that the thing they have produced has been of pleasing appearance and of utility. Thé defendant seeks to defeat the patent, however, by calling attention to a prior patent, also granted to Mygatt, which is alleged to show exactly the same contour. The patent thus relied on is the Mygatt patent, No. 37,809, which was granted on February 6, 1906. Certain other patents are also relied upon as having been previously granted and as showing a like configuration. But of all the patents thus relied upon the one which comes the nearest to showing anticipation is patent No. 37,809. The contours of the two reflectors-No. 37,809 and No. 37,967-are closely alike. In the former no prisms are used and the end of the glass is frosted, whereas in the latter prisms are employed and the end of the glass is not frosted. The completed articles produce quite a different effect on the eye, especially when illuminated. We are satisfied the defense of anticipation is not made out. As the Supreme Court said in Gorham Co. v. White, 14 Wall. 511, 526, 20 L. Ed. 731, "We think the controlling consideration is the resultant effect." And the resultant effect of the two reflectors under discussion is quite different. A drawing of defendant's reflector, alleged to infringe design patent No. 37,967, is here reproduced: [3] Upon the question of infringement there is less difficulty. The defendant's reflector is a palpable imitation of that of the complainants. It is true that the one is not a Chinese copy of the other, but it is not necessary that the one should be an exact copy of the other to sustain a charge of infringement. The act of Congress of February 4, 1887 (24 Stat. 387 [Comp. St. 1913, § 9476]), c. 105, § 1, forbids "any colorable imitation as well as a reproduction of the design." Slight differences and changes in construction do not suffice to defeat a charge of infringement, when the combination and purposes intended and the purposes accomplished are the same. Hale, etc., Mfg. Co. v. Oneonta, etc., Co. (C. C.) 124 Fed. 514, 517 (1903). In the case at bar the defendant's device has a slightly lower neck or flatter bell than has the complainant's. But the defendant's reflector is the complainant's reflector; the slight change in the contour does not avoid infringement. In 1910 the complainants brought suit against the same defendant, alleging an infringement of design patent No. 37,983, issued May 1, 1906. In that suit the trial court found in favor of the complainants. Mygatt v. M. Schaffer-Flaum Co. (C. C.) 186 Fed. 343 (1911). But upon appeal to this court the case was reversed, and we sustained the de'endant's contention that the complainant Mygatt had been guilty of !ouble patenting, and that the patent upon which that suit was brought vas anticipated by the design patent No. 37,967, which is one of the atents now in suit, and which had been issued a few days prior to the suance of the other. Mygatt v. Schaffer-Flaum Co., 191 Fed. 836, 12 C. C. A. 350 (1911). In the present suit the suggestion is made for the first time that the vention is fundamentally not of the character that should be the subect of a design patent. The fact that the suggestion originated with e trial court, and not with the defendant's counsel, is not important, <cept as indicating that in the study of the case it apparently had not curred to counsel that it was worth while to interpose such an objecɔn. In holding that No. 37,983 was anticipated by No. 37,967, we effect held that No. 37,983 would infringe No. 37,967. Since dendant's design here complained of is substantially the same as the sign shown in No. 37,983, it also infringes No. 37,967. In the second suit two patents are involved-design patent No. 40,182, anted to Mygatt on July 27, 1909, and mechanical patent 939,062, anted to Mygatt on November 2, 1909. The first of the two patents is granted for a prismatic glass reflector, and the second for a skirting r reflectors. The court below held the design patent void, for the me reason which it assigned for the invalidity of the design patent 7olved in the first suit; and the mechanical patent was held good, d a perpetual injunction was decreed, enjoining the defendant, his ents, clerks, workmen, and employés, and all claiming or holding unr or through him, from making, using, or selling, or in any way dissing of, without the license of the complainants, prismatic glass rectors embodying the invention contained in patent No. 939,062. [4] The reason given for the invalidity of patent No. 40,182, being è same as that assigned in the first suit for the invalidity of patent . 37,967, has already been considered in the earlier part of this inion, and need not be repeated here. But the court below, regardthe reflectors embodied in No. 40,182 as inherently unpatentable, not inquire whether or not they were anticipated in the prior art. |