Application of John O. Hruby, Jr

RICH, Judge.

These appeals are from split decisions of the Patent Office Board of Appeals wherein the majority affirmed the rejection of appellant’s claims in four design patent applications, serial Nos. 70,-815, 70,816, 70,827, 70,828, all filed July 6, 1962, each entitled “Water Fountain.”

The appeals of the four applications were argued as one, before both the board and this court, and the single issue in each is the same: is the subject matter sought to be patented within the statutory subject matter designated in 35 USC 171, namely, “an article of manufacture” ?

*998The single claim in each application reads:

The ornamental design for a water fountain as shown and described.

As illustrative of the nature of the designs it will suffice to reproduce the drawings from one of the cases as typical, serial No. 70,816:

The full description, referred to in thE claim, consisted, when filed, of the draw ings and the following:

Fig. 1 is a perspective view of a water fountain showing my new design and showing in broken lines a catch basin and a fountain producing device; and

Fig. 2 is a cross section through the water fountain taken upon a plane indicated on Fig. 1 by line 2-2, and including a directional arrow which shows that the water fountain rotates.

In an office action the examiner said:

The arrow on Fig. 2 indicating that the instant subject matter rotates should be removed as superfluous. * *

In view of the above proposed correction to the drawing, and for brevity, it is suggested that the description of Fig. 2 be revised to read-Fig. 2 is a cross-sectional view thereof taken on line 2-2 of Fig. 1.-

Appellant obligingly so amended his applications which, we assume, did not change the fact that the water fountain rotates.

No references are relied on.

The sole rejection was that the claim in each case does not define an article of manufacture. The precise question before us, therefore, is whether that portion of a water fountain which is composed entirely of water in motion is within the statutory term "article of manufacture." This appears to be a question of first impression without any closely analogous case.

The board majority disposed of the precedents cited by the examiner 1 with the statement that it did "not find therein such analogy to the present issues as *999to be considered controlling.” We agree with that appraisal. It said, “ appreciate that the forms created in water by fountains are a well recognized and much used decorative device” and that it “is evident as urged by appellant that the shape created in a specific fountain is manufactured by man in the sense that water as a raw material is put planned patterns of motion for accomplishment of a decorative purpose.” The majority further expressed disagreement with the examiner’s objection that the water of which the designs are produced is a “natural” product, and wisely so as that argument would apply to every article made of wood or stone. Nor did it think much of the argument that the water droplets constantly changed position. Nevertheless the board majority concluded that the water display itself is not “an article of manufacture.” The only reasons we can perceive for this conclusion in the board’s opinion are that “the pattern created is wholly a fleeting product of nozzle arrangements and control of operating pressure or pressures” and that “the pattern exists only as a product or ‘effect’ of the mechanical organization during its continued operation * * into

The dissenting member of the board soundly answered the “fleeting” argument as follows:

Although appellant did not disclose the particular means for producing the fountain effect, it is recognized that if certain parameters such as orifice configuration, water pressure and freedom from disturbing atmospheric conditions are maintained, the ornamental shape of the fountain will remain substantially constant and will at such times present an over-all appearance virtually the same from day to day. Under these conditions, I am not influenced by the statement of the majority “However, it seems to us to be inescapable that the pattern created is wholly a fleeting product of nozzle arrangement and control of operating pressure or pressures.”

We agree with the dissenter on that and would add that the permanence of any design is a function of the materials in which it is embodied and the effects of the environment thereon. Considering the fact that the Romans and the French built now famous fountains hundreds of years ago which still produce the same water designs today, the notion that a fountain is “fleeting” is not one which will “hold water.” See the Columbia Encyclopedia under “fountain,” for example. The dissenting member continued :

It is true that a particular droplet or droplets may be “a fleeting product” but the fountain itself is not. The fountain in its entirety under proper conditions presents a product of constant appearance rather than a fleeting product. I assume that the majority would find no objection if a design effect would be produced in the form of frozen water. Is it logical or reasonable to find objection to a related design effect also having a constant appearance merely because of continuous movement of water droplets? I am unable to find any logical or legal basis for such a distinction. It must be remembered that in a design it is the over-all appearance