CITE: 13 USPQ 214 CMON: June 1931 PLAIN: Boggs DEFND: Robertson, Commissioner of Patents COURT: Supreme Court of the District of Columbia DATE: Decided June 23, 1931 HISTORY: Printed matter per se is unpatentable, i.e., where an idea is simply an abstraction the mere reduction of it to writing does not amount to invention; but where paper or physical body upon which matter is printed is designed to be used with printed matter, as by tearing apart or punching, it becomes more than abstract idea, but actual physical article of manufacture within R.S. 4888 and is patentable; cases reviewed. SUMMARY: An idea reduced to writing (printed matter), is not patentable. JUDGE: Adkins, Judge. - DECISION: I think the claims were properly refused in the Patent Office on the ground that the subject-matter does not come within the purview of section 4886, Revised Statutes (35 U.S.C.A. 31). Plaintiff relies upon the generally accepted definition that a manufacture is "whatever is made by the art of industry of man, not being a machine, or composition of matter, or a design." It is apparent from the authorities cited by plaintiff that to be a patentable manufacture the thing or object resulting from such industry must be composed of component parts which constitute a novel and useful entity; and that where the physical means embodying an inventive idea is novel, such means may be patentable whether the idea is itself old or new. Plaintiff does not disclose any means for which a patent may issue; but on the contrary the whole novelty of the case resides merely in the abstract idea of using certain geometrical curves for a particular purpose. The authorities are uniform in holding printed matter per se to be unpatentable, i.e., where an idea is simply an abstraction the mere reduction of it to writing does not amount to invention. The decisions listed in plaintiff's brief hold various printed sheets and books wherein the claimed novelty resides in the system of arrangement or identity of the printed matter to be without the scope of the patent statutes. Other cases cited by him held valid patents for the following objects - index book; transfer ticket; scrip book; menu card; advertising card. The index book case, Johnson v. Johnson, 60 F. 618, involved a set of index books the leaves of which were used in cooperation to locate names and certain data. The transfer ticket case, Cincinnati Traction Co. v. Poue, 210 F. 443, involved in general the street-car transfer ticket in general use today with a coupon to be either torn off or left on to indicate a.m. or p.m. use of the ticket. The paper on which the printed matter appeared was used physically in addition to serving as a mere support for the printed matter. The coupon was also arranged to be punched to indicate dates and time of the day. The scrip book case, Rand, McNally & Co. v. Exchange Scrip Book Co., 187 F. 984, involved a book having a series of coupons to be detached from a strip for use in payment of transportation calculated in terms of money instead of mileage coupons. The Benjamin Menu Card Co. v. Rand, McNally Co., 210 F. 285, involved a menu card consisting of a combined waiter's check, a cook's check, and a guest's check. Here again the physical card was used by tearing it into definite parts and as such was an article of manufacture. The advertising card case, Mitchell v. International Tailoring Co., 170 F. 91, involved an advertising card consisting of two parts so designed that one of the parts could be thrown away after having it served its purpose while the other part was designed to be kept. The card was physically used in addition to its use as a support for the printed matter. In each of these cases the thing involved was a physical object adapted to be handled and used in a certain manner due to the physical construction thereof; in each case the complete object was formed of a definite form and substances of a physical body supplemented by indicia disposed thereof in a particular manner to provide an actual physical cooperation between the body and indicia. In the present case, no article comprising a definite physical body and structurally-related indicia is shown; but merely a system of lines without reference to any tangible article. Plaintiff's thorough brief discusses a large number of decisions on both sides of the question here involved. I am of the opinion that in all cases where the printed matter, irrespective of the material upon which it is printed, is the sole feature of alleged novelty it does not come within the purview of the statute, as it is merely an abstract idea. But where the paper or physical body upon which the matter is printed is designed to be used with the printed matter, as by tearing apart or punching, it becomes more than an abstract idea but an actual physical article of manufacture within the terms of section 4886, Revised Statutes (35 U.S.C.A. 31), and as such is patentable if it be a new and useful inventive concept. The decisions make this distinction -- that where no dependence exists between the printed matter and the object on which arranged such matter is merely an idea reduced to writing and is not a manufacture. The present claims are worded so as to cover a mere mental vision, and in fact it is not material upon what surface the projection may be reproduced or how the reproduction is effected; the so-called manufacture is completely lacking in material substance. In American Fruit Growers v. Brogdex Co., 404 O. G. 1043, decided at this term, the United States Supreme Court ruled that an orange, the rind of which has become impregnated with borax through immersion in a solution and thereby rendered resistant to blue mold decay is not a manufacture, or manufactured article, within the meaning of section 31, Title 35, U.S. Code stating -- "Manufacture", as well defined by the Century Dictionary, is the "production of articles for use from raw or prepared materials by giving to these materials new forms, qualities, properties or combinations, whether by hand labor or by machinery". Also, "everything made for use from raw or prepared materials". Addition of borax of the rind of natural fruit does not produce from the raw material an article for use which possesses a new or distinctive form, quality or property. The added substance only protects the natural article * * *. There is change in the name, appearance or general character of the fruit. It remains a fresh orange * * *. In Anheuser-Busch Assn. V. U.S. 207, U.S. 556, the same Court said -- "Manufacture implies a change, but every change is not a manufacture, and yet every chant in an article is the result of treatment, labor, and manipulation, as set forth in Hartrauft v. Wiegmann, 121 U.S. 609. There must be a transformation, a new and different article must emerge * * *." In plaintiff's map lines were drawn, sculptured or otherwise reproduced upon a natural marble slab there would be no conversion of such natural object into a new and distinct object "made for use from raw or prepared materials". Plaintiff relies on the fact that numerous patents for printed devices have been granted in the past by the Patent Office and particularly for map projections. While these actions of the Patent Office are persuasive they are not controlling and the question should now be decided on the merits. In the recent decision of the United States Court of Customs and Patent Appeals, Ex parte Russell, application Serial No. 98,392, decided April 15, 1931, patent appeal 2,673, [410 O. G. 820, 48 F.2d 668, 18 C.C.P.A. 1184], it was held that "the mere arrangement of printed matter on a sheet or sheets of paper, in book form or otherwise, does not constitute 'any new and useful art, machine, manufacture or composition of matter * * * as provided in section 4886 Revised Statutes;" Russell, No. 1,481,744, January 23, 1924, and No. 1,435,663, November 14, 1922. In the case of In re Dixon, 44 F.2d 881, 18 C.C.P.A. 711, 402 O.G. 3, the court held unpatentable an application relating to a form of promissory note with attorney's fee clause, and a declaration of lien written thereon. The court said -- "Both the Examiner and the Board of Appeals rejected the application on the ground that the alleged invention did not constitute a new and useful art, machine, manufacture, or composition of matter, or any new and useful improvements thereof, as required by Section 4886 R.S. We are in entire accord with the decision of the Patent Office tribunals. The law is well settled by Hotel Security, etc. v. Lorraine Co. 160 F. 467; Berardini v. Tocoi, 200 F. 1021; Moore v. United States, 50 Ct. Cls. 120; In re Moeser, 27 App. D.C. 307." The last-mentioned decision of the Court of Customs and Patent Appeals is particularly interesting. Plaintiff's claims were properly denied and the bill of complaint will be dismissed.