In re Fischer , 47 F.2d 794 ( 1931 )

GaReett, Judge,

delivered the opinion of the court:

Appellant appeals from a decision of the Board of Appeals of the United States Patent Office, affirming the action of the examiner in rejecting claims 16 to 19, inclusive, of appellant’s application.

Claim 16 is illustrative of the claims in issue and reads as follows:

16. Hoofing units comprising a foundation strip provided on its upper surface with suitably spaced vertical and horizontal guide lines to form a pattern-chart for facilitating the laying and securing of shingles and a group of individual shingles attached to said strip as indicated by the pattern-chart.

The references cited are :

Warren, 175532, March 28, 1876.

Rahr, 1340348, May 18, 1920.

The decision of the Board of Appeals is brief and reads as follows:

This application relates to a roof covering in which each row of shingles is placed upon a foundation strip. The foundation strip has marks placed thereon to facilitate the placing of the shingles.

The patent to Warren shows an identical arrangement of shingles and foundation strips but the foundation strips are not marked. While marks are desirable and convenient in positioning objects, we do not consider that their use involves more than mechanical skill. We therefore concur in the opinion of tlie examiner that it does not involve invention to provide markings on the foundation fabric of Warren.

The decision of the examiner is affirmed.

Appellant concedes that' the only question of x>atentability is whether the marking of the foundation strips to facilitate the placing of the shingles constitutes invention. As stated in the decision quoted, the patent to Warren does not show such marking of the foundation sheet.

In the Rahr specifications it is said:

The present invention has for its object so to form the shingles as to insure their being laid in proper relation by unskilled workmen, and also to insure ihe contact of each shingle, bridging a gap or space, with the shingle there-beneath.

Certain unsurfaced marginal strips are then described, and the specifications continue:

These unsurfaced strips extend from the upper edge of the shingle to a transverse line which may, for example, be located about four inches (more or less) from the lower edge of the shingle, * * ⅞. The width of the strips determines the extent to which each shingle is laterally overlapped by the contiguous shingles of the superimposed horizontal row, and the length of the strips determines the extent to which the shingles of each row project below the shingles of said superimposed horizontal row.

Rahr’s claim No. 2 refers to a “ transverse line ” and sets out an arrangement:

⅜ * * in which asphalt coating is exposed to be overlapped by the corners of contiguous shingles.

The patent to Rahr was not discussed by the board in its decision and, apparently, was not relied on by it as a reference. It does not anticipate the precise arrangement called for by appellant, but does "clearly suggest the idea of a pattern line and discloses a means of providing same.

The case seems really to have been determined by both of the Patent Office tribunals, in so far as the line or pattern feature is concerned, upon the theory that appellant’s markings upon the foundation sheet involve mere mechanical skill and do not constitute invention.

Appellant has presented another question.

It was made of record in this case, the matter having been pre- • sented to both tribunals of the Patent Office, that on May 1, 1928, a patent was issued to one Faison, No. 1668269, upon an application filed April 20, 1925, for a claimed invention which is alleged to be practically identical with that claimed by appellant. Faison’s application was filed subsequent to that of appellant, the latter’s filing date being January 15, 1921. The final rejection by the examiner of appellant’s appealed claims was on February 25, 1928; the affirmation thereof by the Board of Appeals was on July 5, 1929.

Since the applications were co-pending in the Patent Office, it would seem that if the Faison claims were there regarded as patentable an interférence between Faison and appellant should have been declared and the issue of priority determined. Why this was not done the record does not disclose. That issue is, of course, not before us for determination.

It is, however, argued that we may and should consider the Faison patent upon the question of the patentability of appellant’s claims in this respect, viz, that the granting thereof demonstrates a lack of concurring thought on the part of different tribunals of the Patent Office upon the subject matter, and that, therefore, the usual rule of practice in this court of not disturbing findings of fact agreed upon by all the tribunals of the Patent Office, unless manifestly wrong, is not made applicable here simply by reason of the concurrence by those who respectively passed only upon the application of appellant.

The insistence is that, since there was a grant to Faison, by an examiner, upon subject matter alleged to be almost identical with that of appellant, this is at least sufficient to create doubt, not to say more, upon appellant’s application and that this doubt should be resolved in appellant’s favor.

To this insistence we are unable to agree. Faison’s right to a patent is in no way involved here. There was never any action upon it by the Board of Appeals, so far as the record in this case discloses, and there is no reference to it in the decisions of either the examiner or the board in this case.

The question with which we are concerned is whether invention is present in appellant’s device and this we must determine without-considering whether invention was present in that of Faison.

If there was error in the issue to Faison and his patent is invalid (as to which we have no concern in this proceeding) that constitutes no reason why another error should be committeed by issuing another invalid patent. In re DeLany, 18 C. C. P. A. (Patents) 924, 46 F. (2d) 370; In re Engelhardt, 17 C. C. P. A. (Patents) 1244, 40 F (2d) 760.

If, on the other hand, the Faison patent is a valid one, then, as has been intimated heretofore, it would seem that there should have been an interference declared between the parties at some time during the proceedings, but the possibly unfortunate situation created by the failure to declare such an interference can not be remedied in this proceeding, nor are we at liberty to help solve the problem by granting patent to appellant, unless we are convinced that he has patentable matter or that, at least, there exists sufficiently substantial doubt to justify the application of the rule of doubt.

'A careful examination of appellant’s appealed claims fails to convince us that he has produced a patentable article.

Independent of the references, it must be old in the building art to mark shingles and roofing material with lines to indicate the point to which the ends of the respective covers are to extend as they are applied to the roof. A familiar method of doing this, of which there is common knowledge, is that of stretching taut a line which has been chalked, flexing it and snapping it upon the last laid course of shingles, thus making a mark to indicate the line to which the lower end of the succeeding course is to extend. Sometimes such a line may be drawn with pencil, or lines are marked upon the roofing foundation.

In applying weather-boarding to the walls of a structure the carpenter not infrequently, after having attached one piece, draws a line upon it to fix the point of overlap for the succeeding piece.

It is doubtless a great convenience, and is useful, to have the shingles themselves, or the foundation, so marked at the time of manufacture, or before the time of using them or it, as that a pattern will be supplied for their application, but we are unable to see patentable novelty in an article simply because, it is so marked for that purpose. Drummond et al. v. Venable et al., 26 Fed. 243, is in point.

As stated by the board, Warren shows all that appellant shows except the marking. Rahr suggests lines and a certain method of forming them, but even without this suggestion invention is lacking.

We find no error in the conclusion reached by the Board of Appeals and its decision is affirmed.