
    297 F. 2d 251; 132 USPQ 282
    In re Karl E. Prindle and Ross C. Reed
    (No. 6714)
    
      United States Court of Customs and Patent Appeals,
    January 12, 1962
    
      Ely, Pearne d Gordon, Albert L. Ely, Jr. for appellants.
    
      Clarence W. Moore (Raymond E. Martin, of counsel) for the Commissioner of Patents.
    [Oral argument October 9, 1961, by Mr. Ely and Mr. Martin]
    Before Worley, Chief Judge, and Rich, Martin, and Smith, Associate Judges, and Judge William H. Kirkpatrick
    
    
      
       United Slates Senior District Judge for the Eastern District of Pennsylvania, designated to participate in place of Judge O’Connell, pursuant to provisions of Section 294(d), Title 28, United States Code.
    
   Wokekt, Chief Judge,

delivered the opinion of the court:

This is an appeal from the decision of the Board of Appeals of the United States Patent Office affirming the rejection of claims 1 to-10, and 17 to 19, inclusive, of appellants’ application, Serial No. 774,970, for a patent on “Tinsel.”

Claims 1 and 9 are typical of the appealed claims and read :

1. A tinsel staple comprising a narrow ribbon having a metal deposit coating its surface, said ribbon consisting essentially of a self-extinguishing organic plastic polymer.
9. Christmas tinsel comprising a package of multitudinous staples of rectangular cross-section arranged in substantially co-extensive parallelism, each of said staples comprising a halogen-containing flexible organic film, incapable of self-sustaining combustion and slit to a ribbon having substan-. tially greater length than width and a greater width than thickness, a specular metal deposit on at least one surface defined by the length and width of said ribbon, the length of each staple not exceeding a ratio of approximately 1500 to 1 with respect to its width.

The references relied on are

Clune, 1,441,266, January 9,1923.
McManus et al., 2,382,432, August 14,1945.
Croze et al., 2,689,805, September 21,1954.
Stein, 2,872,341, February 3, 1959.
(filed September 10,1954)

Appellants’ application relates to tinsel intended for use in decorating Christmas trees, either by draping lengths over the tree, more or less individually, as so-called “icicles,” or by attaching shorter lengths to a central cord to provide a garland type of decoration.

The tinsel is produced by applying a thin coating of a metal such as aluminum to a thin (dm or sheet of plastic material and cutting the sheet into narrow ribbons of the desired length. The base film may be an organic halogen containing polymeric material which will not support combustion. Known thermal evaporation mid.bods are employed to provide the aluminum deposits which may be as thin as 100 Angstrom units or less. Colored coatings may be applied to the t insel if desired.

The application also discloses packaging bundles of tinsel strands of substantially equal lengths.

The Clune [latent, discloses packaging tinsel or metal foil strips utiliza,ble for ornamental displays such as Christmas tree decorations.

The portion of the, McManus et al. [latent, relied on discloses flexible strip backings of various plastic materials, including chlorinated rubber, on which thin films of a metal, such as aluminum have, been vapor deposit,ed. The [latent stales that the product may be of “foil thickness” and discloses its use for decorative purposes.

The Croze et al. patent discloses a ribbon of polytelrafluoroethylene film hawing an extremely thin coating of a metal such as aluminum or gold vacuum deposited thereon. It is indicated that the ribbon may be of a t hickness of .008 to .0085 inch and that gold has been deposited in films of the order of 500 to 1000 Angstrom units in I,hickness; “but with much (flicker coatings, the stillness of the metal tends to reduce the, flexibility of the sheet, ⅜ * ⅜.”

The Stein [latent, discloses a layer of a fluorocarbon resin plastic, such as polytotrafluoroethylone and polytrifluorochloroethylone, to at least, one side of which a coating of aluminum or ot her metal is applied directly by thermal evaporation in a vacuum chamber.

Claims 1 to 8 and 17 to 19, drawn to a tinsel strand or “staple,” were rejected as unpatentable over Croze et al., Stein or McManus et al. Claims !) and 10, directed to a package of such “staples,” were rejected as unpatentable over Clune in view of the same patents. The board noted that the examiner t,rea,ted Stein and McManus el al. as cumulative to Croze et al., but staled that it regarded the disclosure by McManus et al. of the use, of their foil for decorating purposes as teaching the use intended by appellants. The board was also of the opinion that it would be obvious to the worker of ordinary skill in the art, with the McManus et al. and Clune patents before him, to combine their teachings in the making of packages of Christmas tinsel as appellants do.

Appellants state, that, ultra-thin deposits obtained by vacuum metal - izing on an incombustible film base, do not burn, and advance that as an unexpected property, the discovery of which resulted in their finding a new use for metalized (dins as Christinas tinsel. They refer to G'diman v. >Slcrn, 11 1 K. 2d 28, and other similar decisions for the proposition that even slight physical changes in an old article may be patentable where a. new use results.

in that connection, appellants rely here, as below, on the words “tinsel staple," particularly (lie word “staple,'’ as defining a structural limitation distinguishing (he claims on appeal from the metalized films disclosed in McManus e.t, al., Croze et al., and Stein. Appellants’ basic contention is that the term “staple” connotes the limitation of dejinilc length as opposed In the allegedly indefinito length of a “ribbon” referred to by Croze et al.

The board disposed of that contention, and we think corroctly, in the following manner:

We are unable to see, based on the foregoing definitions, Unit the quoted terminology of the claims requires anything more than a long, thin, Hut material having a glittering or sparkling appearance. We are equally unable to see how this concept could distinguish from any conventional sheet material made under I lie teachings of the references.
insofar as (he term “tinsel” conveys I lie intention to use the material of the references for ornamental or decorativa' purposes, it is well-settled Unit such intended use expressions cannot serve to palentabiy distinguish claims from references which otherwise meet them.
Furthermore, we consider Unit the McManus et al. patent, at page 10, column 2, lines ÍÍ5 through .r>7, in its disclosure that the foil may be used for its “decorating characteristics” constitutes a teaching of the use here intended.

Wo agree, with the hoard that, the disclosure by McManus et al. of the use of their metalized plastic for decorativo purposes suggests its uso for Christmas tree decorations. That suggestion makes obvious the concept of providing the flexible metalized plastic of that, patent, in the, form of narrow strands of delinito length for draping over the houghs as tinsel or “icicles” in the manner that Christ,mas foil is commonly used. It, likewise would be obvious to size the similar aluminized plastic ribbon of Croze et, al. and Stein for use its Christmas t insel in the, same manner.

Among t he base, materials used to make the aluminized ribbons of Croze et, al. and St ein are, polytetralluoroethylene and polyfritluoro-cliloroethylene, which materials are admittedly noncombustible. As indicated above, aluminized staples of such materials would ha ve been obvious from the prior art,. Further, such staples will not, support combustion. It is the, discovery of that inherent latent, property which appellants contend resulted in their finding a new use. However, mere recognition of those latent -properties does not render the otherwise obvious staples unobvious and thereby patentable. See General Electric Company v. Jewel Incandescent Lamp Co., 326 U.S. 242.

The thinness of the film and the resulting limpness which permits the tinsel elements to drape are urged by appellants as of patentable significance. However, even aside from Croze et al., it is clear that, metalized films for use as Christmas tinsel should be thin enough, to drape freely. Appellants have not shown that, in providing films; and deposits of the dimensions they disclose, they have done any more than follow procedures already taught in the art and available to a person of ordinary skill seeking to provide Christmas tree tinsel of materials disclosed by McManus et al., Croze et al. and Stein.

Claim 8 recites the provision of a color layer modifying the appearance of the metal deposit. Appellants do not argue that that feature has patentable significance, apparently recognizing its disclosure by both McManus et al. and Croze et al.

In connection with claims 9 and 10, drawn to a package of tinsel,, it would of course be obvious to pack Christmas tinsel of metalized plastic foil in the same arrangement which Clune packs his Christmas tinsel of “metal foil.” Appellants do not appear to make a contrary contention.

Appellants argue that their tinsel has enjoyed prompt commercial success and have introduced evidence in support thereof. However, evidence of commercial success is considered only where the issue of patentability is otherwise doubtful. In re Patton et al., 43 CCPA 974, 234 F. 2d 499, 110 USPQ 298. We have no doubt here that what appellants have done is no more than what would have been obvious to the skilled artisan with the references before him. Certainly appellants have failed to establish any right to a monopoly by merely following the teachings implicit in the art.

A final point raised by appellants is the refusal of the examiner to enter an amendment submitted after final rejection. Appellants allege that such action “appears to” estop the Patent Office from contending that the prior art meets claims 17, 18, and 19. They also assign as error the board’s refusal to disturb that action. We find nothing in the record to support the estoppel contention, nor any reason to depart from our settled practice noted in In re LiMich, 44 CCPA 991, 245 F. 2d 471, 114 USPQ 291, of refusing to review the action of the board in denying requests by applicants to amend appealed claims.

The decision is affirmed.

Smith, J.,

dissenting.

While I agree with the majority that claims 9 and 10 for packaging the tinsel are obvious over the Clune reference, I cannot agree with its conviction that the appellants’ invention, the tinsel itself, as claimed in claims 1 to 8 and 17 to 19 inclusive, is obvious over the other prior art cited.

Appellants’ invention is a modification of old products which creates a new and commercially better product. It is this category which Judge Learned Hand described as:

* * * one in which the inventor has culled this and that out of nearby arts, .and so formed a combination nowhere before existing. It has been a success; it has substantially driven out earlier cumbersome methods; it has enabled the art to do with ease what before it could only do slowly and imperfectly. The result seems to us a genuine invention, and we so hold. [Traitel Marble Co. v. 17. T. Hungerford Brass & Copper Co., 18 P. 2d 66, 68 (C.O.A. 2d), •cert, denied, 274 U.S. 753.]

The majority has not analyzed the invention in the manner prescribed by Judge Hand in Traitel Marble Co. v. U. T. Hangerford Brass & Copper Co., supra:

* * * We are to judge such devices, not by the mere innovation in their form or material, but by the purpose which dictated them and discovered their function. * * *

The “purpose” which dictated the appellants’ invention, as explained in their specifications, was that Christmas tinsel, as was •commonly used, had several disadvantages. It was flammable; it was not strong and was subject to matting, making it unattractive for reuse; and the lead strips presented a potential poison hazard to children. With these problems in mind, appellants perfected a tinsel composed of a halogen-containing polymer with a thin metallic coating which was non-flammable, did not mat and was non-toxic. The references cited by the board in its rejection do not disclose such a “staple” having the above combination of characteristics.

The affidavit of Prindle aptly points out the unobviousness of appellants’ discovery that their thin metallic coating was non-flammable. I disagree with the board in its assumption that the claimed invention relates to an “old thing.” The thing claimed is “a tinsel staple” of a new type. In its decision, the board merely states:

We have considered appellants’ allegation, on page 2 of their brief, that they have discovered the “wholly unexpected and unpredictable characteristic” of the claimed material, viz., its noninflammability, which adapts it for its Intended use. We have also considered the Prindle affidavit in this respect. However, we are not persuaded by this factor, since an increase in knowledge of its properties cannot render an old thing patentable.

I do not agree with either the board or with the majority that there is “no doubt” that the invention claimed is obvious over the references cited. I have considerable doubt as to its “obviousness" and am, therefore, willing to resolve that doubt by the showing of commercial success of appellants’ invention which is amply presented in the record by appellants’ exhibits D through F and by the affidavits of Ely and Campbell. Evidence of commercial success “should in a close case tip the scales in favor of patentability.” Goodyear Tire & Rubber Co. et al. v. RAY-O-VAC Co., 321 U.S. 275, 279 (1944).

For the foregoing reasons, I would reverse the decision of the Board of Appeals in rejecting claims 1 to 8 and 17 to 19. 
      
      
         Webster’s Now International Dictionary, DM1), delirios “staple” as:
      • *•**•*
      0. A. fiber of raw wool, cotton, flax, and the like, In Its natural state, or when carded or combed; the average of comparative length, linoncss, condition, of any kind, lot, or osp. Krade, of such fibers, as mohair staple in live to six Inches; tow Is llax with short staple.
     
      
      
         I also take Judicial notice that tinsel manufactured by appellants or by a licensee thereof is currently being sold at a number of retail stores here in the Nation's Capital.
     