KOHLSAAT, Circuit Judge
(after stating the facts as above). |’1] The substance of claims 1 and 2 in suit consists in adding to the prior art seif diking pen means for holding the pen lever of a self-filling pen in position, or, as expressed in claim 1, “firmly holding said lever in either open or closed position.” The lever works against the tension of the spring bar and the resiliency of the rubber reservoir to exclude the ink 'from the latter. The reaction of this tension serves to yieldingly hold the presser bar firmly up against the lower end of the lever when in open position and firmly hold the lever in that position. When released, the spring bar, without any aid from the resiliency of the rubber reservoir, lifts the presser bar from the top of the reservoir up into snug contact with the spring bar against the. inner wall of the casing and such portions of the lever as rest in the casing slot flush with or even slightly below the plane of the under face of the spring bar, thereby preventing vertical or other movement of the lever, and firmly holding the same in closed position, besides facilitating the insertion and removal of the ink reservoir.
The objects sought are to prevent accidental pressure upon the ink reservoir through a careless handling of the lever, and keep the lever handle from leaving the casing slot. In the former case, the presser bar may be depressed, with consequent leakage, and in the other the lever batidle, coming in contact with the pocket, would he likely to tear it, and itself be lifted toward open, and consequently operative, position, when not desired, and subjected to strain and other injury.
It was not new to employ barrels, or casings, rubber reservoirs, pfesser bars, levers fulcrumed in the casing slot, spring-actuating devices for lifting the presser bar, and other means for operating and relieving the rubber ink reservoir, but there nowhere appears any pen containing the combination of the patent in suit. Hamilton and Kaufmann call for lifting means independent-of the ink receptacle, and employ a spring in the casing, but have no lever for depressing the ink sack, nor lever locking means. Nor do their devices make any sug[78]*78gestión to that end. Barnes, Sheaffer (1908), and Johansson are provided with compressing levers, but rely upon the resiliency.of the ink tank for whatever lifting or holding means they employ, and make no provision for locking the lever. These latter methods are liable to result in wear and disarrangement of the ink tank, and eventually in unfitting it for use. In the self-filling fountain pen art accuracy is very desirable. Accidental lifting of the lever causes depression of the presser bar and effects an escape of ink, which soils the pocket, wastes the ink, and serves to make the pen unpopular. Therefore claim 1 of the patent calls for “firmly holding,” and claim 2 for “holding,” tire lever in open or closed position.
Claims 1 and 2, we think, cover a new combination of old parts and a new result. It was not new to substitute the lever for the finger pressure of Hamilton or the pin. of Kaufmann, unless a new result was obtained thereby. The examiner so held. It is this new result that Sheaffer claims, viz., means operable within,the casing and independent of the reservoir for firmly holding the lever in either open or closed position, as above described.
The invention is narrow, but in view of its value to the self-filling pen art, the presumption implied in the grant, and in view of the fact that, notwithstanding the approaches to it in the art, no effort was made to carry forward the improvements preceding it the one step further which has brought it out from the undiscovered, we are satisfied that the device of claims 1 and 2 was patentable, and therefore entitled to protection. The contention of .the appellants that it is disclosed in the Johansson Swedish patent is not well made. The meager statements of that patent, as well as the drawings, fail to satisfy us that the presser bar rests against the eccentric base of the lever. Considerable space above the bottom of the presser bar is shown in figure A of the drawings. There is no spring-lifting means; the rubber reservoir being the only lifting element. The presser bar is in the form of a'V-shaped trough, made of tin, and does not constitute a spring. Very clearly, this patent does not at all anticipate the claims in suit.
Appellants’ device may be considered without the supplemental spring located on the lever handle. We are of the opinion from the evidence that the spring elements within the casing of the alleged infringing penholder sufficiently control and hold the movements of the lever for the purposes of this proceeding, without tire intervention of the lever spring. Speaking of the alleged infringing device, appellants say:,
“This presser bar is under spring-control as the result of the coil spring at the left hand of the figure; this being in accordance with the teachings of Hamilton and generally what is shown in the Swedish patent or the Duryea.”
It appears from the drawings of appellants’ pen, shown in the brief, that the inner end of this coil spring is beneath tire presser bar when the lever is open, and therefore presses upwardly against it, and consequently tends to- yieldingly crowd tire lever foot upwardly, thus holding it firmly in open position. ' On the other hand, the tension of the spring lifts the lower end of the lever when released, and securely holds it against the upper wall of the pen casing, or snugly within the slot, or [79]*79both, as in the claims in suit. While appellants’ device lacks the specific spring bar of the patent, their double wire spring arms are clear equivalents therefor and for appellee’s lifting" elements; they create a firm, upward tension against the lever, whether in open or closed position and hold it in place.
We therefore are of the opinion that the so-called commercial device of appellants, that is, appellee’s cross-exhibit Kraker Pen Company’s present pen, if made after the patent was obtained, infringed claims 1 and 2 thereof, but did not infringe any of the other or specific claims of the patent," as it contains none of the improvements set out therein. There is in the alleged infringing device no means for limiting the opening movement of the lever as in claims 3, 4, and 5; no means for locating the foot of the lever within the slot in the spring bar for preventing turning in the casing, as in claim 7; none of the provisions of claim 11, except such as are common to all the claims in suit. Such being the case, we therefore find appellants not guilty of infringement as to each of the claims 3, 4, 5, 7, and 11 in suit.
[2] It will be remembered that the patent was issued, but not yet delivered, on November 24, 1914. In August, 1914, prior to the issue of the patent in suit, appellant Barrett accepted an order from the Kraker Pen Company to make 10,000 holders for fountain pens, upon which he secured a payment of $5,000. He expected to make the holders so they should take the double bar, like a sample holder given Sheaffer before the suit was brought. The sample was introduced in evidence as “Complainant’s Exhibit Defendants’ Sample Holder.” Of these holders, he delivered about 1,000 to the Kraker Pen Company in the earlj part of November, prior to the date of the patent, and on November 25, 1914, .delivered 108 holders to the Kraker Pen Company, the day after" the issue, all of which were slotted, and 14 of which were drilled for the lever pivot.
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KOHLSAAT, Circuit Judge
(after stating the facts as above). |’1] The substance of claims 1 and 2 in suit consists in adding to the prior art seif diking pen means for holding the pen lever of a self-filling pen in position, or, as expressed in claim 1, “firmly holding said lever in either open or closed position.” The lever works against the tension of the spring bar and the resiliency of the rubber reservoir to exclude the ink 'from the latter. The reaction of this tension serves to yieldingly hold the presser bar firmly up against the lower end of the lever when in open position and firmly hold the lever in that position. When released, the spring bar, without any aid from the resiliency of the rubber reservoir, lifts the presser bar from the top of the reservoir up into snug contact with the spring bar against the. inner wall of the casing and such portions of the lever as rest in the casing slot flush with or even slightly below the plane of the under face of the spring bar, thereby preventing vertical or other movement of the lever, and firmly holding the same in closed position, besides facilitating the insertion and removal of the ink reservoir.
The objects sought are to prevent accidental pressure upon the ink reservoir through a careless handling of the lever, and keep the lever handle from leaving the casing slot. In the former case, the presser bar may be depressed, with consequent leakage, and in the other the lever batidle, coming in contact with the pocket, would he likely to tear it, and itself be lifted toward open, and consequently operative, position, when not desired, and subjected to strain and other injury.
It was not new to employ barrels, or casings, rubber reservoirs, pfesser bars, levers fulcrumed in the casing slot, spring-actuating devices for lifting the presser bar, and other means for operating and relieving the rubber ink reservoir, but there nowhere appears any pen containing the combination of the patent in suit. Hamilton and Kaufmann call for lifting means independent-of the ink receptacle, and employ a spring in the casing, but have no lever for depressing the ink sack, nor lever locking means. Nor do their devices make any sug[78]*78gestión to that end. Barnes, Sheaffer (1908), and Johansson are provided with compressing levers, but rely upon the resiliency.of the ink tank for whatever lifting or holding means they employ, and make no provision for locking the lever. These latter methods are liable to result in wear and disarrangement of the ink tank, and eventually in unfitting it for use. In the self-filling fountain pen art accuracy is very desirable. Accidental lifting of the lever causes depression of the presser bar and effects an escape of ink, which soils the pocket, wastes the ink, and serves to make the pen unpopular. Therefore claim 1 of the patent calls for “firmly holding,” and claim 2 for “holding,” tire lever in open or closed position.
Claims 1 and 2, we think, cover a new combination of old parts and a new result. It was not new to substitute the lever for the finger pressure of Hamilton or the pin. of Kaufmann, unless a new result was obtained thereby. The examiner so held. It is this new result that Sheaffer claims, viz., means operable within,the casing and independent of the reservoir for firmly holding the lever in either open or closed position, as above described.
The invention is narrow, but in view of its value to the self-filling pen art, the presumption implied in the grant, and in view of the fact that, notwithstanding the approaches to it in the art, no effort was made to carry forward the improvements preceding it the one step further which has brought it out from the undiscovered, we are satisfied that the device of claims 1 and 2 was patentable, and therefore entitled to protection. The contention of .the appellants that it is disclosed in the Johansson Swedish patent is not well made. The meager statements of that patent, as well as the drawings, fail to satisfy us that the presser bar rests against the eccentric base of the lever. Considerable space above the bottom of the presser bar is shown in figure A of the drawings. There is no spring-lifting means; the rubber reservoir being the only lifting element. The presser bar is in the form of a'V-shaped trough, made of tin, and does not constitute a spring. Very clearly, this patent does not at all anticipate the claims in suit.
Appellants’ device may be considered without the supplemental spring located on the lever handle. We are of the opinion from the evidence that the spring elements within the casing of the alleged infringing penholder sufficiently control and hold the movements of the lever for the purposes of this proceeding, without tire intervention of the lever spring. Speaking of the alleged infringing device, appellants say:,
“This presser bar is under spring-control as the result of the coil spring at the left hand of the figure; this being in accordance with the teachings of Hamilton and generally what is shown in the Swedish patent or the Duryea.”
It appears from the drawings of appellants’ pen, shown in the brief, that the inner end of this coil spring is beneath tire presser bar when the lever is open, and therefore presses upwardly against it, and consequently tends to- yieldingly crowd tire lever foot upwardly, thus holding it firmly in open position. ' On the other hand, the tension of the spring lifts the lower end of the lever when released, and securely holds it against the upper wall of the pen casing, or snugly within the slot, or [79]*79both, as in the claims in suit. While appellants’ device lacks the specific spring bar of the patent, their double wire spring arms are clear equivalents therefor and for appellee’s lifting" elements; they create a firm, upward tension against the lever, whether in open or closed position and hold it in place.
We therefore are of the opinion that the so-called commercial device of appellants, that is, appellee’s cross-exhibit Kraker Pen Company’s present pen, if made after the patent was obtained, infringed claims 1 and 2 thereof, but did not infringe any of the other or specific claims of the patent," as it contains none of the improvements set out therein. There is in the alleged infringing device no means for limiting the opening movement of the lever as in claims 3, 4, and 5; no means for locating the foot of the lever within the slot in the spring bar for preventing turning in the casing, as in claim 7; none of the provisions of claim 11, except such as are common to all the claims in suit. Such being the case, we therefore find appellants not guilty of infringement as to each of the claims 3, 4, 5, 7, and 11 in suit.
[2] It will be remembered that the patent was issued, but not yet delivered, on November 24, 1914. In August, 1914, prior to the issue of the patent in suit, appellant Barrett accepted an order from the Kraker Pen Company to make 10,000 holders for fountain pens, upon which he secured a payment of $5,000. He expected to make the holders so they should take the double bar, like a sample holder given Sheaffer before the suit was brought. The sample was introduced in evidence as “Complainant’s Exhibit Defendants’ Sample Holder.” Of these holders, he delivered about 1,000 to the Kraker Pen Company in the earlj part of November, prior to the date of the patent, and on November 25, 1914, .delivered 108 holders to the Kraker Pen Company, the day after" the issue, all of which were slotted, and 14 of which were drilled for the lever pivot. He testified that he expected to deliver the balance of about 9,000 to the Kraker Pen Company some time, since they were paid for. In December, 1914, appellants’ foreman delivered to appellee on request a pen like one of the 108 delivered November 25, 1914, which was introduced in evidence by appellee as “Complainant’s Exhibit Defendants’ Incomplete Holder.” Appellant Barrett still has on hand 304 holders like the 108, all slotted and some drilled. Three thousand of the other holders on hand have the metal parts inserted, but are not slotted or drilled.
The case for infringement presents itself somewhat like this: The Kraker Pen Company was marketing, and, of course, manufacturing, the fountain pen introduced in evidence as Kraker Pen Company’s present pen, after the suit was begun, and such manufacture and marketing of that pen constituted an infringement of the fountain pen of claims 1 and 2 of the patent in suit. Appellant Barrett & Co. delivered 108 pens to Kraker Pen Company the day after the patent was granted. It does not appear that at that, time Barrett & Co. knew the patent was granted, though Barrett was told it was expected. Fourteen of these were slotted and drilled — the rest were only slotted. Barrett understood these holders would be made into the alleged infringing pens. In December, 1914, appellant Barrett delivered a sample like the 108, [80]*80presumably slotted and drilled, to Sheaffer. It does not appear that Barrett delivered any other pens after November 24, 1914. Barrett still has op hand 304 pens like the 108 which he says he expects to deliver to Kraker Pen Company. Appellant Barrett & Co. expect some day to turn over to Kraker Pen Company all the penholders on hand. The Kraker Pen Company inserts the pen, reservoir, and lifting devices. •
■ It appears that the holders delivered by Barrett to Kraker Pen Company, while only slotted, fitted with metal nonrotating devices, and in some cases drilled for lever pivots, were nevertheless not available for use in connection with other malees or designs of fountain pens, and capable of being used only in manufacturing infringing devices. Taking into consideration that appellants openly appropriated appellée’s claims; that about 1,000 holders had been delivered by Barrett & Co. to Kraker Pen Company before the patent was issued; that the pen-holders pút out by the latter prior to November 24, 1914, would be infringing devices, as shown by defendants’ sample holder, if made after such issue of the patent; that no' change had been made in appellants’ business at the date of the issue of the patent;.that Kraker Pen Company accepted the 108 incomplete holders after the grant; that appellants had been warned to desist from making appellee’s penholder, and had indicated an intention to disregard the patent; and in view of the large number of incomplete penholders in Barrett & Co.’s hands, partly made up in accordance with appellee’s construction, and suitable only for manufacturing the pens like the sample holder, together with the plain imminence of infringement — we are of the opinion that appellant Barrett & Co. was guilty of contributory infringement thereof, and that the appellee, Sheaffer, is entitled to injunctive relief and an accounting as to both appellants.
The proceedings in the nature of interference now pending in the Patent Office having eventuated in findings favorable to appellee here by the examiner in interference, the examiners in chief, and the Commissioner, and the record, so far as we can gather therefrom, fully justifyiiig the conclusions of the Patent Office in that finding, we concur in the several findings of that Office in respect to the issues of the interference and on the question of origin. In view of the failure of appellee to show infringement of claims 3, 4, 5, 7, and 11, the appellee will be required to pay one-third of the costs of this proceeding.
The decree of the District Court is affirmed as to claims 1 and 2. As to the other claims in suit, it is reversed.