In re Bourns , 252 F.2d 579 ( 1958 )

Worlet, 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 sustaining the Primary Examiner’s final rejection of the single claim of appellant’s application for a design patent on a potentiometer, on the ground of lack of invention over prior art.

The appealed claim is as follows:

The ornamental design for a potentiometer, substantially as shown.

The references relied on are

Radio’s Master Catalog, (c) 1944, page K-74, right hand side.

Harvey Radio & Electronic Equipment Catalog, (e) 1948, page 3-74, “Key and phones outlet box” at bottom of right column.

Appellant’s potentiometer is in the form of an elongated rectangular prism having square ends. A U-shaped channel member of slightly less length than the potentiometer is fitted around three of the long sides thereof and recessed into the body so that it is flush with it. The straight portions of the channel are slightly shorter than the width of the long sides of the potentiometer thus providing the effect of a border on three edges of two of those sides. An eyelet appears at each of the four corners of the channel member, and the head of a screw is located near a corner of one of the end surfaces of the potentiometer.

Radio’s Master Catalog shows a capacitator in the form of a rectangular prism similar in shape to appellant’s potentiometer but somewhat shorter in proportion to its transverse cross-sectional area. The capacitator is provided on one of its long sides with a label which appears, in one of the devices illustrated, to be of such size as to provide a border along at least two of the edges of the label.

The Harvey catalog shows an outlet box of rectangular form provided with two openings surrounded by circular borders which, give an appearance generally similar to that of eyelets.

The board was of the opinion that, while appellant’s device presented an appearance of neatness and efficiency not fully taught by the references, it did not involve a patentable design. The board pointed out that the features which distinguish appellant’s design from the prior art result largely from functional considerations, and that since a potentiometer of the kind shown by appellant is normally concealed from view when used for its intended purpose, its appearance is not a matter of concern, and protection of such devices by design patents is not encouraged, citing In re Stevens, 36 C. C. P. A. (Patents) 1017, 173 F. 2d 1015, 81 USPQ 362. Regardless of that particular consideration, we do not think appellant has made an inventive contribution.

The proportions of appellant’s device obviously result from considerations of utility rather than of appearance, while the screw head in one end and the eyelets in the side are also functional. Even the location of the eyelets at the corners of the channel member ■appears to be utilitarian, since those are the logical places for securing the channel to the potentiometer body. There is nothing in the appearance of the screw head or the eyelets to suggest that they were chosen on the basis of aesthetic considerations.

In view of the foregoing, it is clear that the only feature on which patentability as a design could be predicated is the provision of a ■channel member of such size as to provide the particular border above mentioned. In our opinion that feature involves nothing more than ■a selection which could be made by a skilled worker without the exercise •of invention. Radio’s Master Catalog shows a capacitor which closely •approximates appellant’s potentiometer in shape, and which has on -one face a label and border giving a general impression similar to that •created by appellant’s channel. The exact size and arrangement of such a border, and the number of faces on which it appears, are •obviously merely matters of choice.

■ Moreover, appellant’s potentiometer appears to be an article which would ordinarily be purchased on the basis of performance rather than appearance. In our opinion, appellant’s design does not satisfy the statutory requirement for patentability.

The decision of the Board of Appeals is, accordingly, affirmed.