
    IN THE MATTER OF THE APPLICATION OF FREDERICK G. AND WILLIAM F. NIEDRINGHAUS FOR A PATENT FOR A “DESIGN OF ORNAMENT FOR ENAMELED IRON-WARE,” FILED JUNE 3, 1874.
    I. A beautiful appearance is not in itself entitled to a design-patent. The design must also be new and original, and the result of invention and genius.
    II. Mere exhibition of skill on the part of workers in enamel, in giving beautiful forms and colors to their productions, when they are the common efforts of persons ordinarily skilled in the art, is not the invention which is protected by the law.
    III. The use of an old design is clearly excluded by the statute, and mere change or “ double use” cannot receive its protection.
    IV. The same degree of originality is required in both design and functional patents; that is, the claim must not be a copy or an imitation of what is already in existence.
    V. A design of ornament or pattern, to be printed, painted, or otherwise placed on or marked into articles of enameled iron-ware, presenting a mottled appearance resembling granite in color, is not patentable.
    STATEMENT OE THE CASE.
    Frederick G. and William F. Niedringhaus made the following application for a design patent:
    “ To all whom it may concern:
    
    “Be it known that we, Frederick G. Niedringhaus and William F. Niedringhaus, both of the city and county of Saint Louis, State of Missouri, have invented and produced a new and original design of ornament or pattern to be printed, painted, or otherwise placed on, or marked into, the various articles of enameled iron-ware made and sold by us.
    “The nature and general characteristics, as to outline, are distinctly shown, and clearly appear in and by the photographic illustration hereto annexed, to which reference is hereby made. The article itself, however, when completed, presents to the eye a beautifully-mottled appearance, resembling granite in color, which the illustration fails to exhibit.
    
      “It is this peculiar mottled appearance-which constitutes the chief merit of our design, and it is on this we place most importance.
    “ What we claim as our invention, and desire to secure by letters-patent, is—
    “ The design for enameled iron-ware, substantially as shown and described.”.
    The application was rejected by the examiners-in-chief and the Commissioner of Patents for want of patentability, and the applicants took an appeal under the statute to this court, and assigned for reasons of appeal that the Commissioner erred in holding that the subject-matter of the application was not patentable, and that the design lacked novelty. The question presented is whether this is a new design within the statute.
    Charles D. Moody, of Saint Louis, for appellants:
    First. To the issue of novelty we reply:
    
      (a.) That the peculiar appearance presented by the exhibit is novel; that its ornamentation is unique; and that never before in “'wall-paper,” on “ wooden mantels,” “outside of houses,”or elsewhere, has that unique ornamentation been anticipated. In passing on this point, it must be borne in mind that the ornamentation in question is produced by a high degree of heat; that in its production certain ingredients are fused; that the result is a peculiarly spotted enamel, having a darker spot on, or rather in, a lighter background, and all having a bright distinctive expression, which never has been produced in oil or water colors in connection with the articles cited, or even in the art of marbling slate or iron. For none of these arts, owing to the fact that in them the colors are oil colors, and are not fused into each other and upon each other, but are simply mixed, and then, (in the case of marbled slate,) set by a slight degree of heat, produce any ornamentation, which, if painted or placed on iron, would or does, produce a result which an ordinary observer would mistake for the exhibit. In other words, we contend that the peculiar pattern worked into exhibit has not been shown in “wall-paper,” and that, if an ordinary stew-pan were covered with paper having a mottled grey pattern thereon, an ordinary purchaser would not be misled.
    (&.) We reply further, admitting “ wall-paper,” &c., to have been similarly ornamented, is this a sufficient answer, unless it is further shown that enameled iron-ware has been similarly ornamented.
    We hold not; for in Gorham Company vs. White, 14 Wall., 524, (the leading case on design-patents,) it is •stated: “ They contemplate not so much utility as appearance ; and that not an abstract impression, but an aspect .given to those objects mentioned in the arts.” Further, on page 525, * * * “is that which gives a peculiar or distinctive appearance to the manufacture or article to which it may be applied.” * * * “ That giving certain new and original appearances to a manufactured article may enhance •its salable value, may enlarge the demand for it,” &c. * * * « Jt is the appearance itself) therefore, no matter by what agency caused,” &c. * * # # “ But in whatever way produced, it is the new thing or product which the patent law regards.”
    It will be observed that the court is careful to say that the ■designas an “abstract impression” must not be “contem. plated,” but the “ aspect ” given to the “object” bearing the •design. For this we also contend. A design shown on wallpaper must not be contemplated in the abstract. We must only contemplate the aspect given to the exhibit. In. other words, if enameled iron-ware, having this design upon it, can, by an ordinary purchaser, be distinguished from other enameled iron-ware, we are within the statute. It matters not if the design has been previously used; if now combined with an “object” with which it has not been hitherto combined, and if, as a result of such association, a new and distinctive aspect is given to such object, the law is complied with.
    Second. But, admitting the novelty of the design, it has further been contended by the principal examiner and examiners-in-chief that no “invention” is “involved;” that “ genius ” is wanting; and the case of Weinberg (Commissioner’s Decisions, 1871) “ is in point.”
    The decision in this case was in answer to the question, ■“ Can color, &c., form the proper subject for a design-patent, and how far, if at all ?” After preliminary remarks touching the meaning of the words “ invented ” and “ produced,” the Commissioner proceeds to state that while “not prepared to-say that no design-patent could be based on colors,” (it apparently would be difficult to distinguish a carpet-design but for its colors,) “ a mere substitution of one color for another possesses no originality, and indicates no exercise of genius, and cannot, therefore, become the subject of a patent, neither can any blending or arrangement of colors, unless a new Eesthetieal effect is produced.”
    Produced how ? Produced upon what? Produced in the-abstract or in the concrete ? Produced upon things in general or upon the article particularly shown ? Produced as a mere color or blending or arrangement of colors; or as a design, applied so as to give a distinctive appearance to an object? Clearly the latter. The only question remaining,, then, is to inquire whether a new iesthetieal effect is now and here given to enameled iron-ware. If such be the fact, then, we submit, we are entitled to a patent.
    
      William H. Doolittle for the Commissioner:
    The object of the law in granting patents for designs is to foster and encourage the decorative arts. The same requirements, however, as to novelty and originality in the subject-matter and the exercise of invention in its production apply to design-patents as well as to what are known as mechanical or functional patents. Say the United States Supreme Court: “ Thelaw manifestly contemplates that giving certain new and original appearances to a manufactured article may enhance its salable value, may enlarge the demand for it,, and may be a meritorious service to the public. It therefore proposes to secure for a limited time to the ingenious-producer of those appearances the advantages flowing from them.” Gorham Manufacturing Company vs. White, (14 Wall., 511.)
    The distinctive appearance which a design presents to the eye alone constitutes its patentable merit. On this point the court, in the case just cited, said:
    “Manifestly the mode in which those appearances are produced has very little, if anything, to do with giving increased salableness to the article. It is the appearance itself which attracts attention and calls out favor or dislike. 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 laws deem worthy of recompense. 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. As the acts of-Congress embrace only designs applied, or to be applied, they must refer to finished products of invention rather than to the process of finishing them, or to the agencies by which they are developed. 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.”
    The appearance which constitutes the present alleged invention consists, according to the description of the specification-of “a beautifully-mottled appearance, resembling granite in color,” applied to enameled iron-ware. This is solely in imita tion, and without the slightest exercise of invention evinced in the idea of its application. The mottled appearance resembling granite in color is a very old and well known device in the decorative arts. Enameled iron plates, made to imitate marble mantels for fire-places, tables, &c., almost equal in beauty to the originals, have long been produced. The enameling of metals in various colors is an art of great antiquity, and reached its greatest perfection in Europe during the Middle Ages. The Venetians to this day supply other nations with the best kinds of enamel of every colored shade. Enameled iron-ware for domestic purposes is an art of later date, and patents for such processes were commenced to be granted in England about the close of the last century. (See Enameling, Ure’s Dictionary of Arts, G45; Chambers’s Encyclopedia, vol. 4.)
    The applicant may have discovered a new combination of ingredients or some new process of applying it, but, as already shown, new ingredients, combinations, or processes have nothing to do with the subject of a design-patent.
    
      Having been impressed upon innumerable articles before, to put this appearance for the first time upon the present article is a mere double use of an old device. The requirements of the law, that the impression “invented and produced” should be a “new and original one,” implies that the doctrine of double use, the mere application of an old device to a new purpose, is as pertinent an objection to an application for a design-patent, where such use is set forth, as to an application for a functional patent. And this provision is not “ inconsistent ” with others of the title relating to designs. The color or impression in question is now the common property of mankind, to be used in any way, or upon any article, their fancy may dictate. To give to any one person, then, its exclusive use upon an important class of manufactures would be to thwart the object of the patent laws, and establish a monopoly truly odious. Smith vs. Elliot, 5 Fish. Pat. Cas., 315.
   Mr. Justice MacArthur

delivered the opinion of the court:

This is an appeal from the decision of the Commissioner of Patents, refusing a design-patent in enameled iron-ware to Frederick G. Neidriughaus and William F. Neidringkaus. The statute in regard to design-patents reads as follows:

“ Any person who, by his own industry, genius, efforts, and expense, has invented and produced any new and original design for a manufacture, bust, statute, alto-relievo, or basrelief; any new and original design for the printing of woolen, silk, cotton, or other fabrics; any new and original impression, ornament, pattern, print, or picture to be printed, painted, cast, or otherwise placed on or worked into any article of manufacture; or any new, useful, and original shape or configuration of any article of manufacture, the same not having been known or used by others before his invention or production thereof, or patented or described in any printed publication, may, upon payment of the fee prescribed, and other due proceedings had the same as in cases of inventions or discoveries, obtain a patent therefor.” Sec. 4929, U. S. Eevised Statutes.

In their specification the applicants claim to have invented and produced a new and original design of ornament or pattern, to be printed, painted, or otherwise placed on or marked into the various articles of enameled iron-ware which they make and sell. A photograph is annexed to illustrate the outline. They also say that “ the article itself, however, when completed, presents to the eye a beautifully-mottled appearance, resembliug granite in color, which the illustration fails to exhibit. It is this peculiar mottled appearance which constitutes the chief merit of our design, and it is on this we jfiace most importance.”

The primary examiner, the examiners-in-chief, and the Commissioner have all concurred in refusing the application for the patent. The Commissioner, in his decision, says:

“ I concur in the opinion of the examiners-in-chief, so far as want of patentability in the general subject-matter embraced by the application is concerned. The so-called design is effected by printing, painting, or in any other way placing upon iron-ware a peculiarly mixed color. The enameling of iron-ware in various colors is an art well known. If applicant has achieved anything new, it is to be found in the mixing of colors, by which he produces a mottled appearance having the effect of granite coloring. If he has, in this way, ■obtained a new paint, it may or may not be patentable; but the application of such paint in an ordinary way does not constitute the subject-matter of a design-patent, even under the most liberal construction of the statute.”

The court are unanimously of the opinion that the decison of the Commissioner ought to be affirmed. The art of enameling has been practiced for many centuries, and the different kinds of enamel have been produced in every variety of shade and color. The materials used for the purpose of coloring and the process by which they are fused have been known so long, that to change them requires only the taste and skill of one engaged in the business. The appellants, of course, do not mean to claim any exclusive title to what is so well known. But their specification certainly seems to suggest that the change of color “ resembling granite ” imparts great value to their invention. They say “ the mottled appearance, which constitutes the chief merit of our design, and it is on this we place the most importance.” The specimen of enameled iron ware exhibited by counsel on the argument was of a color resembling granite, and was marked by spots of different shades darker than granite. The enamel and coloring substances are manifestly liquefied by intense heat, such as enamelers use, until they are completely fused, and they are- laid upon the iron-ware while in this condition. The spots are then formed at random, in larger and smaller patches, without regard to regularity or design of any kind. No two of the articles are alike, except in color and general appearance. It is undoubtedly ornamental to the article,, and has a pleasing effect on the eye. This is equally true of the hundreds of objects upon which this art is employed. Ornamental work in great variety and paintings that never lose their freshness are executed in enamel. Indeed, the primary object of this art is to impart greater luster and beauty to every article of luxury or utility to which it is applied. A beautiful appearance is not in itself patentable. The design must be new and original, and the work of invention and genius. The ingenuity and taste of workers in enamel are quite wonderful to all but those employed in it; but no one would imagine that these exhibitions of skill in giving beautiful forms or colors to their productions was the kind of invention to be protected by the law. They are the common efforts of persons ordinarily skilled in the art. The appellants contend in their brief that “ it matters not if the design has been iDreviously used, if now combined with an ‘ object’ with which it has not been hitherto combined, and if, as a result of such association, a new and distinctive aspect is given to such object, the law is complied with,” and refers to former decisions by the Commissioner of Patents as cases in point. We cannot concur in this view. The thing provided for in the law is in express language “ any new and original design for a manufacture,” “any new and original design for printing, ” “ any new and original impression, ” “ any new, useful, and original shape,” “ the same not having been known or used by others before his invention or production thereof.” The use of an old design upon an old object, is clearly excluded by the statute, and mere changes or “ double use ” cannot receive its protection.

Besides, it is now well understood that the same degree of originality is required in both design and functional patents. That is, the claim must not be for a copy or imitation of what is already in existence. If, for instance, the applicants should ■manufacture their iron-ware with a figure of the statue of the Three Graces, it might improve the appearance of the article, but would scarcely entitle them to the benefits of a patent. To manufacture it with enamel is a change of the same kind; for the same thing has been performed on metals from time immemorial. To give the enamel any particular -color is a matter of ordinary skill and taste. The coloring substances have always been fused with the enamel in the heat of the furnace. We can therefore observe nothing in the present specifications to which the term invention can be .applied.

I am aware that the Supreme Court of the United States, in Gorham Company vs. White, 14 Wall., 524, have said, in regard to design-patents, that “they contemplate not so much utility as appearance, and that not an abstract impression, but an aspect given to those objects mentioned in the arts.”

That was an action brought for the infringement of a design-patent for the handles of table spoons and forks. The design consisted in the configuration of the spoon and the ornamentation of the handle. The outline and all the details ofthedesignwerenewand,invariableinsuchspoon, alike. No question was discussed as to the originality of the patent, for it had never been known before; and the court decided that the article manufactured and sold by the defendant did not differ substantially from plaintiff’s, and that it was therefore an infringement. But the whole tenor of the decision is to the effect that the appearance or aspect of the object must be of a design that is new and original. Indeed, no other view is admissible, for such is the express requirement of the law.

The decision of the Commissioner is affirmed.  