In the consideration of the case by the Court no objection was made to this statement or claim. In the case of Root vs. Ball, 4 McLean 180, the learned judge instructed the jury that "if they should find that the defendants had infringed the plaintiff's patent by using substantially the same device as ornamental on the same part of the stove they would, of course, find the defendant guilty. To infringe a patent right it is not necessary that the thing patented should be adopted in every particular; but if, as in the present case, the design and figures were substantially adopted by the defendants, they have infringed the plaintiff's right. If they adopt the same principle the defendants are guilty. The principle of a machine is that combination of mechanical powers which produce a certain result. And in a case like the present, where ornaments are used for a stove, it is an infringement to adopt the design so as to produce substantially the same appearance."

It has been the constant practice to grant patents for designs for fonts of type, for sets of silver plate, for a series of printers' flourishes, and the like. This class of cases has always passed without objection.

Two other cases which have arisen within the Office deserve notive. The first was for a series of miniature shoulder straps, with emblems denoting rank, provided with a pin, to be worn under an officer's coat, upon his vest, or as a lady's breastpin. The drawing shows eight of these pins with emblems of rank, varying from that of second lieutenant to major-general, specification describing the brooch for a second lieutenant goes on to say: "I propose to introduce, on some of them, the different ornaments showing the respective ranks of the army, from a major-generalship to a second lieutenancy. See Figs. 2, 3, 4, 5, 6, 7, 8."

The second case was that of an application for a monogram visiting card, on which the name was to be inscribed or printed in the form of a monogram. The applicant filed a drawing, showing a card upon which was a monogram of his own name. In his specification he gives certain rules for forming such monograms, and then says: "It is manifest that the form of the letters as well as the letters themselves can be changed as required by circumstances or the taste of the individual for whom the monogram is designed; and that the general form and outline of the monogram may be varied; and indeed, must vary to be adapted to the particular name it is required to represent."

The claim was for "a monogram, visiting card, or visiting card upon which the name is inscribed or printed in the form of a monogram, substantially as herein specified."

This application was rejected by the Examiner and Board of Examiners-in-Chief, but was allowed by the Commissioner upon appeal.

It is true that, before and since this patent was issued, many patents have been refused for what I have called generic designs. One man having designed a tack head, ornamented with radial lines, was compelled to take out one patent for his tack with six radial lines, and another for the same tack with eight. There are other instances of like character, but they only serve to show that the practice of the Office has not been uniform, and that the true practice is still to be adopted and followed.

I have no hesitation in saying, in view of the premises, that a valid patent may be granted for a new genus or class of ornaments as well as for specific ornaments, though I do not doubt that, under the statute, every species, variety, and individual having distinct characteristics under such a genus might also be patented, the patent being subordinate and tributary to that which covered the class. From the nature of this subject-matter there must always be more latitude in the issue of patents for trifling changes, or form, or outline, since it is only necessary that such changes should constitute a new "design" to entitle them to a patent of this class.

The second question relates to the elements of utility in patents for designs.

Upon this point, it is said by my predecessor, in Jason Crane ex parte Commissioners, December-May, 1869, p. 1, that the construction which has been given to the act of 1842, by the Office, ever since its passage, is that it relates to designs for ornament merely; something of an artistic character as contradistinguished to those of convenience or utility.

The Board of Examiners-in-Chief, in the present case, say "The practice of the Office has been uniform from the beginning, and has always excluded cases like the present from the benefit of the laws relating to designs." And, again, "The general understanding has always been that the acts of 1842 and 1861 were intended to cover articles making pretensions to artistic excellence exclusively."

In thus denying that a new "shape or configuration" of an article, whereby utility or convenience is promoted, is the proper subject of a patent under the acts referred to, the Office would seem to have involved itself in the absurdity that if a design is useless it may be patented; whereas, if it be useful, it is entitled to no protection.

Fortunately no such "uniform practice" has existed, and the Office is relieved from so grievous an imputation. The practice seems to have been taken for granted by the appellate tribunals, and, so far from being as stated, is, as nearly as possible, the reverse of it. Articles have been, and are being, constantly patented as designs which possess no element of the artistic or ornamental, but are valuable solely because, by a new shape or configuration, they possess more utility than the prior forms of like articles Of this character are designs for ax heads, for reflectors, for lamp shades, for the soles of boots and shoes, which have been heretofore patented as designs, and to this class might be added, with great propriety, that class of so-called "mechanical" patents, granted for mere changes of form, such as plowshares, fan blowers, propeller blades, and others of like character.