The opinion of the court was delivered by: DUNCAN
This suit was instituted by plaintiff as assignee, in the United States District Court for the District of Columbia, to authorize the defendant, the Commissioner of Patents, to issue to the plaintiff, a patent based upon Application No. D-99,104.
Plaintiff is a corporation organized and existing under the laws of the State of Ohio, and seeks relief under Section 4915 of the Revised Statutes, 35 U.S.C.A. § 63.
The subject of the application is described as a 'new, original and ornamental design for playing ball' and referred to by applicant in his testimony as 'An Educational Play Ball'. It will be referred to herein as the 'Glass' patent.
The ball is inflated, made of latex and is manufactured in sizes five and six inches in diameter. Before the ball is lettered or decorated, it is white. Around the equatorial center of the ball (exhibit 4) is painted a red stripe about five-eighths inch wide. On each side of the red stripe in what may be termed the 'temperate zones', are blue letters three-fourths inch in height, some of which are broken, i.e., the lines forming some of the letters are broken or divided at irregular places, thus permitting the white of the ball to show through the open or broken line, and so spaced as to extend entirely around this section of the ball.
The same design is carried out in the other half of the ball. The letters and the numbers are accurately and evenly balanced in both halves of the ball and occupy exactly relative positions. As one views the ball lying in a fixed position, the numbers and letters in one-half of the ball appear in an upright position, and the letters and numbers in the opposite portion of the ball appear in an upside down position.
To place the letters upon the surface of the ball it is held in what is termed a 'mask' -- a metallic 'gadget' just the shape and size of the ball. It is divided into halves and secured at the top by means of a hinge. It is placed over the ball and held at the bottom by handles provided for that purpose. On the surface of the 'mask', at the proper places, there is formed the shapes of the letters and numbers to appear on the surface of the ball, and through the opening forming the letters the paint of whatever color desired is sprayed by means of a mechanical sprayer. More simply described, the 'mask' is a stencil clamped around the ball and the paint is sprayed through the opening forming the letters and numbers. The solid line around the equatorial center is placed on the ball after the 'mask' is removed. The exhibit offered in evidence is a combination of red, white and blue, the surface of the ball being white, the equatorial line red, the letters blue, and the numerals red.
It is contended by the plaintiff that the combination or arrangement of the letters and numerals and the color combination is new in design, attractive to the eye, and not heretofore discovered, and therefore patentable as to design.
The Commissioner rejected the application 'because unpatentable for lack of design invention over the reference and for the reasons of record: That, more particularly, the basis of the final rejection was the following U.S. patents: Farley 280,807, Reimert 2,017,473, Eddy D-51722, and Griffiths D-61805; and Items 48T3123 and 48T3148 of pages 34 and 35 of the Montgomery Ward Christmas catalog for 1937, in view of which art the Primary Examiner held that there was no invention in providing conventional letters and numerals in the manner claimed:'.
The Farley patent 280,807 applies to 'Croquet balls (wood) mallets, wickets and stakes and/or either but particularly to balls made luminous by the application of a luminous substance 'to enable the balls to be more easily seen 'in the cool of the evening"'. The balls and mallets have opaque lines 'as a distinguishing mark'. Other than the opaque lines around the balls and mallets for distinguishing purposes, I can find no similarity whatsoever between that patent and the 'Glass' application in question here. In fact, at the trial, the defendant did not contend that there was any similarity.
The same is true with respect to the Reimert patent 2,017,473. This patent refers to a rather complicated game device composed of a 'ball-supporting block'. Numerous balls were used, each ball having painted upon its surface several large letters. The box or ball-supporting block was so designed that when the balls were placed therein, words might be formed or games of chance played. Like the Farley patent, I can find no similarity to the 'Glass' Play Ball.
The Griffiths patent has two lines of ribs around the equatorial center, one on each side of a seam or rib exactly dividing the ball, and in the upper space are arranged letters 'A' to 'Z', but these letters are not spaced in such manner as to extend entirely around the ball; they extend only part way around, there is left considerable space between the 'A' and 'Z'.
In the space below are numerals from 1 to 0. These numerals are so balanced that the numeral '1' is matched with and beneath the letter 'B', and '0' is beneath the letter 'K'. In the 'temperate zone' both above and below the center are numerous animals, horses, camels, goats, bears, birds, etc. In the 'polar region' is Noah's Ark. Around this region and the Ark are two circles or ribs. The animals, the Ark, the letters and the numbers are molded into the fabric, and it is contended, and I think with justification, that the animals and other designs in the rubber ball, which, as above stated, are molded into and are a part of the fabric, and therefore, not attractive and distinguishable as such beyond a short distance from the eye.