The first claim in letters patent No. 11,208, granted May 27,
1879, to the New York Belting and Packing Company for a new and
useful design for rubber mats,
viz.:
"1. A design for a rubber mat, consisting of corrugations,
depressions, or ridges in parallel lines, combined or arranged
relatively, substantially as described, to produce variegated,
kaleidoscopic, moire, stereoscopic, or similar effects,
substantially as set forth,"
covers things which were then well known and were not new, and
is therefore too broad to be sustained.
Claims two and three in those letters patent,
viz.,:
"2. A design for a rubber mat consisting of a series of parallel
corrugations, depressions, or ridges, the lines of the said
corrugations being deflected at one or more points, substantially
as set forth."
"3. A design for a rubber mat consisting of a series of parallel
corrugations, depressions, or ridges arranged in sections, the
general line of direction of the corrugations in one section making
angles with or being deflected to meet those of the corrugations in
the contiguous or other sections, substantially as described,"
may fairly be regarded as confining the patentee to the specific
design exhibited in his patent and shown in the drawing.
In equity for the infringement of letters patent No. 11,208,
granted May 27, 1879, to the New York Belting and Packing Company
for a new and useful design for rubber mats. Defendant demurred to
the bill and the demurrer was sustained, and the bill dismissed.
Plaintiff appealed. The case is stated in the opinion.
MR. JUSTICE BRADLEY delivered the opinion of the Court.
This is a suit in equity brought upon a patent for a design by
the New York Belting & Packing Company, assignee of
Page 137 U. S. 446
George Woffenden, against the New Jersey Car-Spring & Rubber
Company. The bill was dismissed upon demurrer, and the case is here
on appeal from that decree. The ground for dismissing the bill, as
stated by the circuit judge in his opinion, was that the subject
matter of the patent was not patentable, 30 F. 785, and this is the
question which has been discussed on the appeal. The invention
claimed in the patent is a new and original design for rubber mats,
of which the subjoined plate is a diagram:
image:a
Referring to the diagram, the specification describes the
invention as follows:
"In accordance with this design, the mat gives under the light
different effects according to the relative position of the person
looking at it. If the person changes his position continuously the
effects are kaleidoscopic in character. In
Page 137 U. S. 447
some cases moire effects, like those of moire or watered silk,
but generally mosaic effects, are produced. Stereoscopic effects
also, or the appearance of a solid body or geometric figure, may at
times be given to the mat, and, under proper conditions, an
appearance of a depression may be presented."
"The design consists in parallel lines of corrugations,
depressions, or ridges, arranged to produce the effects as above
indicated."
"The drawing represents a mat embodying this design."
"A is a mat, which is, as represented, square, although it might
be oblong, or other desired shape. It is divided into a number of
sections,
a b c d, the corrugations or depressions and
ridges in those represented by the same letter being parallel.
Thus, in the center and outer border formed by the section
a
b, the corrugations extend around the mat parallel with its
outer edge and with each other. At the points where each depression
crosses the diagonals drawn from corner to corner of the mat
through the center, it makes a right angle with its previous path.
In the intermediate borders, the corrugations in the sections
c are arranged at an angle with those in the sections
d, and in both they form an angle with the corrugations in
the sections
a b. By the different shading of the
sections, attempt has been made to represent the mosaic effects
produced, which, it will be understood, vary like a kaleidoscope as
the observer shifts his position."
"The above forms simply one of the many ways in which my
invention may be carried into effect. The corrugations in the
center and outer border need not extend entirely around the mat,
but in each of the sections a depression in one section may be
opposite a ridge in the next, and it is not necessary that the
corrugations be parallel with the edges of the mat. They may run in
any direction. The ridges and depressions in the intermediate
borders might be made to form different angles with each other, or
with those in the other sections, or the borders might be increased
or diminished in number. It will, of course, be understood that the
effect produced and the manner in which the appearance varies are
modified more or less by these changes. Instead of making
Page 137 U. S. 448
the corrugations in the center of mat to bend four times, they
may be made to change their line of direction any desired number of
times in a regular or irregular way -- that is to say, instead of
having four series of parallel depressions and ridges, a number of
series, less or more, arranged at various angles with each other,
may be employed. I may divide the mat by a number of imaginary
lines representing a projection of any geometrical figure, and in
each of the sections so formed make parallel corrugations or
alternate ridges and elevations, the different sets of corrugations
making with each other the proper angle to give the effects sought
for."
"To give the moire effects I usually make the ridges and
depressions undulating, while maintaining the parallel position
with relation to each other. I desire, therefore, to have it
understood that I do not intend to limit the design to parallel
corrugations which are straight throughout any considerable portion
of their length (as represented on the drawing, for example), but
that it includes the undulating ridges and depressions, or other
disposition or formation in which the corrugations alter their
direction irregularly, or in which they may be straight for a
certain distance, and then formed in undulations, and that it
includes the corrugations arranged in concentric circles, in
spirals, in zigzags, or according to any desired figure."
Having thus described his invention, the patentee claims:
"1. A design for a rubber mat consisting of corrugations,
depressions or ridges in parallel lines, combined or arranged
relatively, substantially as described, to produce variegated,
kaleidoscopic, moire, stereoscopic, or similar effects,
substantially as set forth."
"2. A design for a rubber mat consisting of a series of parallel
corrugations, depressions, or ridges, the lines of said
corrugations being deflected at one or more points, substantially
as set forth."
"3. A design for a rubber mat consisting of a series of parallel
corrugations, depressions, or ridges arranged in sections, the
general line of direction of the corrugations in one section making
angles with or being deflected to meet those of
Page 137 U. S. 449
the corrugations in the contiguous or other sections,
substantially as described."
The circuit judge in his opinion said:
"The patent is an attempt to secure to the patentee a monopoly
of all ornamentation upon rubber mats by which variations of light
and shade are produced by a series of ridges and depressions,
without regard to any particular arrangement or characteristics of
the lines except that they are to be parallel. Although there is an
illustration in the drawing, and although each claim is for a
design 'substantially as described,' the language of the
specification is carefully expressed so as not to restrict the
claims to the design shown in the drawing, but so that the first
claim shall include every variety which can be produced by the
arrangement of corrugations, depressions, or ridges in parallel
lines; the second, all obtainable when by the arrangement the
corrugations are deflected, and the third, all obtainable when by
the arrangement of corrugations in sections, those of one section
make an angle with those in the contiguous or other sections."
"It was not new to produce contrasts and variations in light and
shade, or stereoscopic effects, by depressions or elevations in the
surface of materials. It was old to do this by arranging them in
parallel lines, as in wood, plaster, and corduroy cloth. It is not
novelty which will sustain a design patent to transfer to rubber,
or to a rubber mat, an effect or impression to the eye which has
been produced upon other materials or articles by contrast or
variation of light and shade. The design of this patent is not new
unless it embodies a new impression or effect produced by an
arrangement or configuration of lines which introduces new elements
of color or form. This is not claimed."
None of the claims can be limited to design which produces any
definite or concrete impression to the eye.
We think that the judge was right in holding that the first
claim of the patent is altogether too broad to be sustained, and
for the reasons stated in the opinion. But as the other claims may
fairly be regarded as confining the patentee to the specific design
exhibited in his patent and shown in the drawing,
Page 137 U. S. 450
we think that the demurrer should have been overruled and that
the defendants should have been put to answer the bill. Whether or
not the design is new is a question of fact which, whatever our
impressions may be, we do not think it proper to determine by
taking judicial notice of the various designs which may have come
under our observation. It is a question which may and should be
raised by answer and settled by proper proofs.
There is one feature of this patent which presents an
interesting, if not a novel, aspect. We are in the habit of
regarding a design as a thing of distinct and fixed individuality
of appearance -- a representation, a picture, a delineation, a
device. A design of such a character, of course, addresses itself
to the senses and the taste, and produces pleasure or admiration in
its contemplation. But in the patent before us, the alleged
invention is claimed to be something more than such a design. It is
claimed to have an active power of producing a physical effect upon
the rays of light, so as to produce different shades and colors
according to the direction in which the various corrugated lines
are viewed -- a sort of kaleidoscope effect. It is possible that
such a peculiar effect, produced by such a particular design
impressed upon the substance of India rubber, may constitute a
quality of excellence which will give to the design a specific
character and value, and distinguish it from other similar designs
that have not such an effect. As this is a question which it is not
necessary now to decide, we express no opinion upon it.
We reverse the decree of the circuit court and remand the
cause with directions to overrule the demurrer and take such
further proceedings in accordance with this opinion as law and
justice may require.