ALSCHURER, Circuit Judge
(after stating the facts as above).
[1, 2] The nearest citation in the prior art, and the one mainly relied on for reversal, is McIntyre, No. 629,586, 1899. It assumes to be in the “box or case” art, and to relate more particularly to boxes “adapted to receive and hold pencils, penholders, rules,” etc. Fig. 2 of that patent shows the device.
The rod B is connected with the top G, which serves also the purpose of a handle to' grasp it, and to the lower disk C. When G is grasped and raised it also raises disk C, bringing up and exposing pencils, etc., which have been placed within the cylinder A, and when C is lowered the contents are retained wholly within the then covered cylinder.
McIntyre’s device, used as a “scholar’s companion” for holding pencils, etc., clearly presents in reduced form the structure of Berman’s claim 1. If McIntyre’s device had only to be made on a larger scale, in order to use it as a straw dispenser, as described in Berman’s claim 1, the latter would not be patentable over McIntyre. The fact that a patented article, without addition, subtraction, or reorganization, except to change its size, may be suited to a use wholly different from that contemplated by its inventor, does not entitle the one who so enlarges it, and subjects it to the new use, to a patent for the enlarged device. But if, to adapt the patented device to the new use, an element must be brought in, not found in the patented article, the combining of the new element with the old device, whereby a new and useful result is obtained, generally involves invention, which is patentable.
Unlike McIntyre’s device, which was evidently designed for'the individual use of its possessor, Berman’s contrivance is intended to be placed on bars and counters where the public may operate it, helping themselves to straws as may be required for use in drinking. If just the. enlarged McIntyre box were devoted to this use, it would find serious handicap in the fact that, in lifting the straws, they would frequently be raised too high, thereby causing them to fall out of the cylinder onto the bar or floor, exposing them to unsanitary conditions, subjecting them to breakage, and involving the annoyance and labor of gathering them up and replacing them in the. cylinder, perhaps only to be thrown out again by the next user. If Berman may be said to [57]*57have had the McIntyre device in mind, he not only conceived its possible adaptability to the new use, but realized that to make practical and successful the intended new use would require a limitation on the upward movement of the straws to avoid the danger of spilling them out of the cylinder. This result he achieved by the very simple expedient of making indentations in the cylinder at places where the straws would be prevented from going higher than just high enough to spread them so the customer may withdraw such as he desires, retaining the others in the cylinder, without danger of their being thrown out through being lifted too high.
Appellant maintains that the expedient of an indentation for such a purpose is so old and so simple that its employment would not involve invention. Considered merely as an element in a device this is undoubtedly true. But, simple as it is, it remained for Berman to conceive, not only the possibility of the McIntyre device in this new use, but also the additional element essential to make the new structure practical and desirable for that use. In this we find Berman exercised invention which was patentable, and which is covered by his claim 2. Claim 1 omits this added element. Respecting the validity of the patent, we therefore conclude that claim 2 is valid, and that claim 1 is invalid on McIntyre.
To escape the charge of infringement, it is claimed appellant’s device does not show tliat the lower plate or holder “fits” in the cylinder, as stated in claim 2, and does not have “an upper plate secured to said rod.” We do not think that the word “fit,” as employed in claim 2, is to be considered as indicating such a fitting of parts as might be implied between a steam cylinder and its piston, but must be considered with reference to the object of the patentand the function of the plate or holder in such structures. There is no reason why the fit of the plate or holder in the cylinder should be exact, and difference shown in this regard between appellant’s and appellee’s device is not at all functional or essential. Appellant does not avoid infringement by fitting bis plate within the cylinder more loosely than the patentee seems to have done. Appellant’s upper plate or lid does not appear to be rigidly secured to the rod, but it is slidably secured to it. The lid could not be removed from tire rod without removing screws or cutting the mefal. The construction of appellant’s device is such that the user must lift a handle at the upper part of the lid. But in lifting this handle he must at the same time lift the rod thus slidably secured to it, and in lifting the rod he lifts the lower plate on which the straws re • pose, and he thus lifts and exposes the straws in the precise manner of Berman’s claim 2. Therefore to all intents and purposes appellant’s lid is secured to the rod the same as is Berman’s. It accomplishes the same result and in the same manner, and does not escape infringement merely because, after his lid is raised, there is the possibility of an additional movement by sliding the lid down the rod. This slidability in appellant’s device is protected by a junior patent grant to Eisenhardt, Ño. 1,195,451, 1916; and, while this may show improvement of decided merit, which is not necessary here to be considered, yet, in so far as appellant’s device incorporates the Berman conception oí a rod to be. [58]*58lifted at its upper end whether by grasping a handle integral with the rod proper, or a handle on the upper end of the lid, which engages the rod, it infringes in this respect. The alleged infringing device incorporating as it does, also, the indentations in the outer cylinder for arresting at the proper place the upward movement'of the plate or straw-holder, we find claim 2 is infringed.
The decree of the District Court should be modified, by finding claim 1 invalid, and, as so modified, it is affirmed.
On Petition for Modification.
[3, 4], Petition for modification of the order of this court directs attention to sections 4917 and 4922, Rev. Stat. U. S. (Comp. St. 1916, §§ 9462, 9468) (see margin1) and it is urged there should be no decree in appellee’s favor' under valid and infringed claim 2 of the patent, unless claim 1, which we found to be void, was disclaimed as in these statutes provided, and that in no event is appellee entitled to recover any costs.
That under the circumstances indicated in these statutes, benefit of any recovery by the patentee is denied unless or until disclaimer is filed, and that he is entitled to recover no costs where disclaimer is not filed prior to the beginning of the suit, appears to be too well settled by the statutes and the decisions applying them, to require further elucidation. Sessions v. Romadka, 145 U. S. 29, 12 Sup. Ct. 799, 36 L. Ed. 609; Gage v. Herring, 107 U. S. 640, 2 Sup. Ct. 819, 27 L. Ed. 601; Seymour v. McCormick, 19 How. 96, 15 L. Ed. 557; O’Reilly v. Morse, 15 How. 62, 14 L. Ed. 601; Westinghouse v. Cooper, 245 Fed. 463, 157 C. C. A.
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ALSCHURER, Circuit Judge
(after stating the facts as above).
[1, 2] The nearest citation in the prior art, and the one mainly relied on for reversal, is McIntyre, No. 629,586, 1899. It assumes to be in the “box or case” art, and to relate more particularly to boxes “adapted to receive and hold pencils, penholders, rules,” etc. Fig. 2 of that patent shows the device.
The rod B is connected with the top G, which serves also the purpose of a handle to' grasp it, and to the lower disk C. When G is grasped and raised it also raises disk C, bringing up and exposing pencils, etc., which have been placed within the cylinder A, and when C is lowered the contents are retained wholly within the then covered cylinder.
McIntyre’s device, used as a “scholar’s companion” for holding pencils, etc., clearly presents in reduced form the structure of Berman’s claim 1. If McIntyre’s device had only to be made on a larger scale, in order to use it as a straw dispenser, as described in Berman’s claim 1, the latter would not be patentable over McIntyre. The fact that a patented article, without addition, subtraction, or reorganization, except to change its size, may be suited to a use wholly different from that contemplated by its inventor, does not entitle the one who so enlarges it, and subjects it to the new use, to a patent for the enlarged device. But if, to adapt the patented device to the new use, an element must be brought in, not found in the patented article, the combining of the new element with the old device, whereby a new and useful result is obtained, generally involves invention, which is patentable.
Unlike McIntyre’s device, which was evidently designed for'the individual use of its possessor, Berman’s contrivance is intended to be placed on bars and counters where the public may operate it, helping themselves to straws as may be required for use in drinking. If just the. enlarged McIntyre box were devoted to this use, it would find serious handicap in the fact that, in lifting the straws, they would frequently be raised too high, thereby causing them to fall out of the cylinder onto the bar or floor, exposing them to unsanitary conditions, subjecting them to breakage, and involving the annoyance and labor of gathering them up and replacing them in the. cylinder, perhaps only to be thrown out again by the next user. If Berman may be said to [57]*57have had the McIntyre device in mind, he not only conceived its possible adaptability to the new use, but realized that to make practical and successful the intended new use would require a limitation on the upward movement of the straws to avoid the danger of spilling them out of the cylinder. This result he achieved by the very simple expedient of making indentations in the cylinder at places where the straws would be prevented from going higher than just high enough to spread them so the customer may withdraw such as he desires, retaining the others in the cylinder, without danger of their being thrown out through being lifted too high.
Appellant maintains that the expedient of an indentation for such a purpose is so old and so simple that its employment would not involve invention. Considered merely as an element in a device this is undoubtedly true. But, simple as it is, it remained for Berman to conceive, not only the possibility of the McIntyre device in this new use, but also the additional element essential to make the new structure practical and desirable for that use. In this we find Berman exercised invention which was patentable, and which is covered by his claim 2. Claim 1 omits this added element. Respecting the validity of the patent, we therefore conclude that claim 2 is valid, and that claim 1 is invalid on McIntyre.
To escape the charge of infringement, it is claimed appellant’s device does not show tliat the lower plate or holder “fits” in the cylinder, as stated in claim 2, and does not have “an upper plate secured to said rod.” We do not think that the word “fit,” as employed in claim 2, is to be considered as indicating such a fitting of parts as might be implied between a steam cylinder and its piston, but must be considered with reference to the object of the patentand the function of the plate or holder in such structures. There is no reason why the fit of the plate or holder in the cylinder should be exact, and difference shown in this regard between appellant’s and appellee’s device is not at all functional or essential. Appellant does not avoid infringement by fitting bis plate within the cylinder more loosely than the patentee seems to have done. Appellant’s upper plate or lid does not appear to be rigidly secured to the rod, but it is slidably secured to it. The lid could not be removed from tire rod without removing screws or cutting the mefal. The construction of appellant’s device is such that the user must lift a handle at the upper part of the lid. But in lifting this handle he must at the same time lift the rod thus slidably secured to it, and in lifting the rod he lifts the lower plate on which the straws re • pose, and he thus lifts and exposes the straws in the precise manner of Berman’s claim 2. Therefore to all intents and purposes appellant’s lid is secured to the rod the same as is Berman’s. It accomplishes the same result and in the same manner, and does not escape infringement merely because, after his lid is raised, there is the possibility of an additional movement by sliding the lid down the rod. This slidability in appellant’s device is protected by a junior patent grant to Eisenhardt, Ño. 1,195,451, 1916; and, while this may show improvement of decided merit, which is not necessary here to be considered, yet, in so far as appellant’s device incorporates the Berman conception oí a rod to be. [58]*58lifted at its upper end whether by grasping a handle integral with the rod proper, or a handle on the upper end of the lid, which engages the rod, it infringes in this respect. The alleged infringing device incorporating as it does, also, the indentations in the outer cylinder for arresting at the proper place the upward movement'of the plate or straw-holder, we find claim 2 is infringed.
The decree of the District Court should be modified, by finding claim 1 invalid, and, as so modified, it is affirmed.
On Petition for Modification.
[3, 4], Petition for modification of the order of this court directs attention to sections 4917 and 4922, Rev. Stat. U. S. (Comp. St. 1916, §§ 9462, 9468) (see margin1) and it is urged there should be no decree in appellee’s favor' under valid and infringed claim 2 of the patent, unless claim 1, which we found to be void, was disclaimed as in these statutes provided, and that in no event is appellee entitled to recover any costs.
That under the circumstances indicated in these statutes, benefit of any recovery by the patentee is denied unless or until disclaimer is filed, and that he is entitled to recover no costs where disclaimer is not filed prior to the beginning of the suit, appears to be too well settled by the statutes and the decisions applying them, to require further elucidation. Sessions v. Romadka, 145 U. S. 29, 12 Sup. Ct. 799, 36 L. Ed. 609; Gage v. Herring, 107 U. S. 640, 2 Sup. Ct. 819, 27 L. Ed. 601; Seymour v. McCormick, 19 How. 96, 15 L. Ed. 557; O’Reilly v. Morse, 15 How. 62, 14 L. Ed. 601; Westinghouse v. Cooper, 245 Fed. 463, 157 C. C. A. 625; Cummer & Son v. Atlas Dryer Co., 193 Fed. 993, 113 C. C. A. 611; Herman v. Youngstown Car Co., 191 Fed. 579, 112 C. [59]*59C. A. 185; Novelty Glass Co. v. Brookfield, 172 Fed. 221, 97 C. C. A. 25; Fairbanks, Morse & Co. v. Stickney, 123 Fed. 79, 59 C. C. A. 209; Metallic Extraction Co. v. Brown, 110 Fed. 665, 49 C. C. A. 147.
Claim 1, which we found void, is material and substantial, though it docs not appear that the claim was made through “any willful default or intent to defraud or mislead the public,” but rather “through an inadvertence, accident or mistake.” No disclaimer of it appearing to have been entered as in the statutes provided, but no unreasonable delay or n'eglect therein appearing, the order we heretofore made must be and is set aside, and in lieu thereof we make the following order:
The decree of the District Court is reversed, and appellee shall have 60 days after mandate herein is filed in the district court, in which to file there a certified copy of disclaimer of claim 1 of the patent which disclaimer is to be entered in the United States Patent Office; and on the filing of such certified copy of disclaimer the District Court shall enter the usual decree for injunction and accounting under claim 2 of said patent, Without costs to appellee. Failing to enter and to file such disclaimer as prescribed, the bill shall be dismissed at appellee’s costs. Neither party shall recover costs of this appeal.