1. Patents43-Mere difference in dimension cannot add novelty to new design.

Mere difference in dimension cannot add novelty to a new design, nor detract from the teaching of the prior art.

2. Patents

28-Exercise of inventive faculty

is as essential to validity of design patent as of patent for mechanical device.

Exercise of the inventive faculty is as essential to the validity of a design patent as to that for any kind of mechanical device.

3. Patents 28-Application of old flared base to old top or superstructure in design patent for barn ventilator heid not patentable invention.

Application of old flared base to old top or superstructure in Klima design patent No. 50,624, for barn ventilator, held to involve no more than mechanical skill, as distinguished from patentable invention.

4. Patents37-Popularity and increasing sales of patented article are unimportant, when invention is clearly without patentable novelty.

Mere fact that patented article is popular

and meets with large and increasing sales is unimportant, when invention is clearly without patentable novelty.

5. Patents 16-To authorize patent, there must be creative mental conception, as distinguished from ordinary reasoning faculties and facility of manipulation.

To authorize issuance of patent, there must be present a creative mental conception, as distinguished from ordinary faculties of reason

ing on materials supplied by special knowledge

and facility of manipulation resulting from its habitual and intelligent practice.

6. Patents 328-Design patent No. 50,624, for barn ventilator, held void for lack of invention.

Klima design patent No. 50,624, for a barn ventilator, held void for lack of invention.

Appeal from the District Court of the United States for the District of Minnesota; Joseph W. Molyneaux, Judge.

Suit by the King Ventilating Company

F. C. Caswell, of Minneapolis, Minn. (Farmer & Tighe, of St. James, Minn., on the brief), for appellees.

Before STONE and VAN VALKENBURGH, Circuit Judges, and PHILLIPS, District Judge.

VAN VALKENBURGH, Circuit Judge. April 17, 1917, design patent No. 50,624 was issued to one Louie Klima. The specification, with its claim, reads as follows:

"Be it known that I, Louie Klima, a citizen of the United States, residing at Owatonna, in the county of Steele and state of Minnesota, have invented a new, original, and ornamental design for ventilators, of which the following is a specification, reference being had to the accompanying drawing, forming a part thereof.

"The figure is a perspective view of a ventilator, showing my new design.

"I claim:

"The ornamental design for a ventilator as shown."

Appellant, a Minnesota corporation, is the owner of this patent. Appellee St. James Ventilating Company, of which appellee Jolly is president and manager, is also a Minnesota corporation. Both companies are engaged in the manufacture and sale of barn and stable ventilators. Appellant brought suit in the District Court for the District of Minnesota, charging appellees with infringement of its said design patent, and praying for injunctive and other appropriate relief. The court adjudged and decreed that said letters patent are void, because anticipated in the prior art more than two years before the filing of Klima's application, and because lacking in novelty and invention. The bill of complaint accordingly was dismissed.

The applicable law is thus stated:

Section 4929, R. S. (35 USCA § 73; Comp. St. § 9475): "Any person who has invented any new, original, and ornamental design for an article of manufacture, not known or used by others in this country before his invention thereof, and not patented or described in any printed publication in this or any foreign country before his invention

and another. From a decree of dismissal (17 F.[2d] 615), plaintiff appeals. Affirmed.

James F. Williamson, of Minneapolis, Minn. (Williamson, Reif & Williamson, of Minneapolis, Minn., and Leach & Leach, of Owatonna, Minn., on the brief), for appellant.

application, and not in public use or on sale in this country for more than two years prior to his application, unless the same is proved to have been abandoned, may, upon payment of the fees required by law and other due proceedings had, the same as in cases of inventions or discoveries covered by section forty-eight hundred and eighty-six, obfain a patent therefor."

Section 4886 (35 USCA § 31; Comp. St. §9430), to which reference is made, provides: "Any person who has invented or discovered any new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, not known or used by others in this country, before his invention or discovery thereof, and not patented or described in any printed publication in this or any foreign country, before his invention or discovery thereof, or more than two years prior to his application, and not in public use or on sale in this country for more than two years prior to his application, unless the same is proved to have been abandoned, may upon payment of the fees required by law, and other due proceeding had, obtain a patent therefor."

It will be observed that the rule respect ing prior publication and prior public use is the same under both these sections. The essential facts were stipulated. From this stipulation it appears that during the year's 1913 to 1918, inclusive, the appellant made and sold large numbers of ventilators of the following design:

And such ventilators made and sold by appellant have been in public use since the year 1913. These ventilators are like the design shown in appellant's patent in every respect except that the base is not flared. It is further conceded that in said year 1913 Louie Klima, the patentee, was general manager of the appellant company. It is also stipulated that one J. J. Sobolik, of Cresco, Iowa, doing business under the firm name of Queen Cupola Manufacturing Company, has continually, since a time prior to 1910, manufactured and sold cupolas of the following design:

נמר

2

That prior to 1910 the said Louie Klima, patentee of the patent in suit, was associated with said Sobolik in the business of manufacturing and selling cupolas of said design.

The drawing accompanying and forming a part of the specification in Klima's application for patent No. 50,624, and the exhibits tendered by appellant in the District Court, present the following design:

It is conceded that appellees' structure is in all substantial respects similar to that of appellant, and that, if appellant's patent is valid, infringement is present.

It will at once be seen that the patented design is similar in all but one essential particular to that manufactured and sold by appellant itself, and to that of the Queen Cupola Manufacturing Company many years prior to the Klima application; also that the patentee was associated with both manufacturers and well aware of the public use made of their products. The one particular of difference, which is claimed by appellant to sustain its patent against anticipation, is that the base is "flaring" to conform to the pitch of the roof, instead of arising perpendicularly as in such prior structures. It is urged that this adds the element of beauty and novelty, which establishes validity.

[1] In this connection it is to be noted that the stipulation of facts shows that one A. R. Voss, of St. James, Minn., in the year 1898 constructed a barn equipped with ventilators

having the bases thereof flared as in appellant's design; that Voss is also the owner of a second barn, constructed in 1895 and similarly equipped. Counsel for appellant seek to distinguish its structure from that of Voss in this particular, upon the ground that the Voss base is lower and less prominent than that of the patented design. This ignores the well-known principle that mere difference in dimension cannot add novelty to a new design, nor detract from the teaching of the prior art. The height of the base will generally he suggested by the pitch of the roof upon which the ventilator is superimposed. Appellant's design stands or falls in its entirety. The base, of course, is not claimed apart from the superstructure. Without finding it necessary to decide that the Voss structure, standing alone, is anticipation sufficient to render appellant's claim invalid, it is an important factor in determining whether the change in the base made in the patent design discloses patentable novelty and invention.

[2] The exercise of the inventive faculty is just as essential to the validity of a design patent as it is to that for any kind of mechanical device. Star Bucket Pump Co. v. Butler Mfg. Co. (D. C.) 198 F. 857; Smith v. Whitman Saddle Co., 148 U. S. 674, 13 S. Ct. 768, 37 L. Ed. 606; Knapp v. Will & Baumer (C. C. A.) 273 F. 380; Whiting Mfg. Co. v. Alvin Silver Co. (C. C. A.) 283 F. 75; Imperial Glass Co. v. Heisey & Co. (С. С. А.) 294 F. 267. In Strause Gas Iron Co. v. William M. Crane Co. (C. C. A. 2) 235 F. 126, the rule is thus stated: "The test for invention is to be considered the same for designs as for mechanical patents." Mere mechanical skill is insufficient. There must be something akin to genius-an effort of the brain as well as the hand.

[3] The great similarity between appellant's patented design and the structures of the prior art is strikingly apparent. In its opinion the trial court said: "I do not believe it can be said in this case that the application of the old flared base to the old top or superstructure rises to the point of anything more than the ordinary routine skill of a competent architect." With this statement, we agree. The change in form of the base involved no more than mechanical skill, as distinguished from patentable invention. (4) It is urged that the new design has met with popular favor and acceptance, as evidenced by increasing sales. It does not appear, however, that this device has supplanted and superseded other forms. The latter are still made, sold, and used in large quantities. "The mere fact that a patented article is popular, and meets with large and increasing sales, is unimportant, when the alleged invention is clearly without patentable novelty." Duer v. Corbin Cabinet Lock Co., 149 U. S. 216, 13 S. Ct. 850, 37 L. Ed. 707.

[5] There must be present a creative mental conception, as distinguished from "the ordinary faculties of reasoning upon the materials supplied by a special knowledge, and the facility of manipulation which results from its habitual and intelligent practice." American Road Machine Co. v. Pennock & Sharp Co., 164 U. S. 26-41, 17 S. Ct. 1, 7 (41 L. Ed. 337); Hill v. Wooster, 132 U. S. 693, 10 S. Ct. 228, 33 L. Ed. 502; Western Willite Co. v. Trinidad Asphalt Mfg. Co. (C. С. A. 8) 16 F.(2d) 446-449.

[6] It follows, in our judgment, that the patent in suit is void for lack of invention. The charge of infringement need not, there fore, be considered.

The decree dismissing the bill was right, and is affirmed.

UNITED STATES v. GOKHALE.

Circuit Court of Appeals, Second Circuit.

May 21, 1928.

No. 282.

1. Aliens 61-Hindu is not "white person" subject to naturalization.

A Hindu is not a "white person," within meaning of naturalization law, and not in fact eligible for naturalization.

[Ed. Note. For other definitions, see Words and Phrases, First and Second Series, White

Person.]

2. Aliens 712(10)-Admission of Hindu to citizenship by Supreme Court of New York held open to review by United States by bill in equity (Naturalization Act, $$ 11, 15 [8 USCA §§ 399, 405]).

Admission to citizenship by Supreme Court of New York of a Hindu held open to review by bill in equity under Naturalization Act, § 15 (8 USCA § 405), even assuming that United States had in fact opportunity given by section 11 (8 USCA § 399) to appear in opposition to the petition; it being a jurisdictional prerequisite to naturalization that alien shall be of a class that may be made citizens.

Appeal from the District Court of the United States for the Northern District of New York.

Suit by the United States against Shanker Lakman Gokhale to cancel certificate of naturalization. Decree for plaintiff, and defendant appeals. Affirmed.

The defendant is an Aryan Hindu of high caste, the graduate of a university in Calcut

ta, the possessor of degrees in chemistry and physics, at one time professor of physics in Holkar College, Indore, and now chief research engineer of the magnetic division of the General Electric Company at Schenectady, New York. On May 7, 1920, the Supreme Court of New York for Schenectady county admitted him to citizenship and issued his certificate.

The plaintiff filed a bill in equity to cancel this certificate under section 15 of the Naturalization Law (8 USCA § 405) on June 25, 1924. The defendant answered, alleging that he was a free white person, though admitting that he was a Hindu as alleged.

The District Court entered a decree for the plaintiff on the pleadings. Thereafter an appeal was taken, and while it was pending the defendant moved for a rehearing on the ground that the court was without jurisdiction to entertain the bill. This application the court denied, and the defendant did not appeal from the order entered thereon.

Celler & Kraushaar, of New York City (Meyer Kraushaar and Emanuel Celler, both of New York City, of counsel), for appellant.

Oliver D. Burden, of Syracuse, N. Y., for the United States.

Before L. HAND, SWAN, and AUGUSTUS N. HAND, Circuit Judges.

PER CURIAM. [1,2] That the defendant was not in fact eligible for naturalization is settled by U. S. v. Thind, 261 U. S. 204, 43 S. Ct. 338, 67 L. Ed. 616, for he is concededly a Hindu, and under that case a Hindu is not a white person as the statute defines that phrase. This being so, the only question remaining is whether his admission by the Supreme Court of New York was res judicata and not open to review by bill in equity under section 15 of the Naturalization Act (8 USCA § 405). We assume that the United States had in fact the opportunity given by section 11 (8 USCA § 399) to appear in opposition to the petition, and, although this does not appear in the papers, that it was there represented. The result is perhaps to be accounted for because in 1920 it was the understanding that Hindus were eligible to citizenship. We treat the case as though a plea of res judicata had been formally interposed.

U. S. v. Ginsberg, 243 U. S. 472, 37 S. Ct. 422, 61 L. Ed. 853, and U. S. v. Ness, 245 U. S. 319, 38 S. Ct. 118, 62 L. Ed. 321, control and sustain the ruling below. The first case held that a bill like that at bar would search the record in the naturalization proceedings at least to see whether there was any evidence to support the necessary findings of the court below. The second held that, when a necessary prerequisite to naturalization was concededly missing, i. e., the certificate of arrival, the bill would also lie. We should have relied also on Akhay Kumar Mozumdar v. U. S., 299 F. 240 (С. C. A. 9), and U. S. v. Siem, 299 F. 582 (С. С. А. 9), except that these were distinguished in U. S. v. Sakharam Ganesh Pandit, 15 F.(2d) 285 (C. C. A. 9), on the theory that the plea of res judicata had not been presented or considered. While we should not ourselves have so supposed from the opinions written, we must accept the construction so put upon those decisions.

Nevertheless we are not persuaded that the case at bar does not fall within the rulings of the Supreme Court. It is certainly a jurisdictional prerequisite to naturalization that the alien shall be of a class which may be made citizens. It is not suggested that any issue of fact was raised before the naturalization court, and indeed it could not honestly have been. We need not of course say that, if the naturalization proceedings were like an ordinary suit or action, the order could be attacked in this way. They are not; the statute has provided cumulative reviews of them, one by section 11, Tutun v. U. S., 270 U. S. 568, 46 S. Ct. 425, 70 L. Ed. 738; the other by section 15. U. S. v. Ness. How deeply that under section 15 searches we have no occasion to ask; it goes far enough for the purposes of the case at bar.

The refusal of the Supreme Court to grant certiorari in the case of U. S. v. Sakharam Ganesh Pandit, in no sense indicates its approval of that decision, as that tribunal has said over and over again.

Decree affirmed.

BOGHICH v. LOUISVILLE & N. R. CO. Circuit Court of Appeals, Fifth Circuit. May 21, 1928.

No. 5044.

1. Master and servant 129 (5)228(1)-Violation of Safety Appliance Acts must proximately cause injury to warrant recovery, and contributory negligence may be so great as to bar recovery (Employers' Liability Act [45 USCA §§ 51-59]).

Showing of violation of Safety Appliance Acts does not alone support recovery under

Employers' Liability Act (45 USCA §§ 51-59; Comp. St. §§ 8657-8665); but violation must be the proximate cause of the injury, and contributory negligence of injured employee may be so great as to bar recovery.

2. Master and servant274(7)-Evidence of railroad's rules requiring trains to come to full stop before proceeding over grade crossing of another railroad held admissible in action for death of experienced engineer (Employers' Liability Act [45 USCA §§ 51-59]; Boiler Inspection Act, as amended by Act March 4, 1915 [45 USCA §§ 22-34]).

In action against railroad for death of experienced engineer in collision at grade crossing of another railroad track, under Employers' Liability Act (45 USCA §§ 51-59; Comp. St. §§

8657-8665), on ground of railroad's violation of Boiler Inspection Act, as amended by Act March 4, 1915 (45 USCA §§ 22-34; Comp. St. §§ 86308639b), evidence of company's rules requiring all trains to come to a full stop before proceeding over a grade crossing of another road's track, and that deceased's attention had been called to these rules, held admissible. 3. Master and servant 296(3)-Instruction

on state law requiring trains to stop before making grade crossing of another road held not error, in action for engineer's death (Employers' Liability Act [45 USCA §§ 5159]; Boiler Inspection Act, as amended by Act March 4, 1915 [45 USCA §§ 22-34]).

In action against railroad for death under Employers' Liability Act (45 USCA §§ 51-59; Comp. St. §§ 8657-8665), and Boiler Inspection Act, as amended by Act March 4, 1915 (45)

USCA §§ 22-34; Comp. St. §§ 8630-8639b), instruction charging jury on state law requiring trains to stop before making grade crossing of another road held not error.

4. Appeal and error263(1)-Assignments to portions of charge not excepted to need not bè considered.

Assignments to portions of court's charge to which no exception was taken at the time of the trial need not be considered.

Appeal from the District Court of the United States for the Northern District of Florida; William B. Sheppard, Judge.

Suit by Hattie S. Boghich, as administratrix of the estate of Mark L. Boghich, against the Louisville & Nashville Railroad Company. Judgment for defendant, and plaintiff appeals. Affirmed.

R. P. Reese, of Pensacola, Fla., for appellant.

Francis B. Carter, of Pensacola, Fla. (Carter & Yonge, of Pensacola, Fla., on the brief), for appellee.

Before WALKER, BRYAN, and FOSTER, Circuit Judges.

FOSTER, Circuit Judge. Appellant brought suit under the provisions of the Federal Employers' Liability Act (45 USCA §