This is an action for a declaratory judgment that Hecking patent No. 1,909,616 is invalid for anticipation and lack of invention and that plaintiff, Pfanstiehl Chemical Company, and its licensees are not infringing that patent. The defendant, Hecking, was the purported inventor in the patent interest which was issued to and is jointly owned by Hecking and the co-defendant, O’Brien. The American Platinum Works, the exclusive licensee of the patent by an agreement made in 1933, is also a defendant. The lower court found the Hecking patent invalid and this appeal was taken by defendants.
The patent recites that it “relates to improvements in pens, pen-points and processes of making same”. Pens1 used in fountain pens must be made of acid and rust resisting metal if they are to be efficient. These metals are, however, for the most part too soft for long and continued wear. In order to overcome this difficulty the pen must be provided with a pen-point of hard, wear-resistant metal. Iridium or an alloy known as “iridium composition” is used for this purpose. This metal is available to the trade in the form of tiny granules, irregular in shape and size. Prior to the time of the patent in suit the process for affixing an iridium granule to the nib of a pen and obtaining a smooth writing pen was both laborious and expensive. The pen blank was made with an oversized nib and an oversized iridium granule was secured at its tip which was notched. The pen blank was then rolled out to the desired thinness and length, cut to the desired shape, pierced, and “raised” into the customary arched form. The nib and granule were then slit longitudinally. The pen-point was trimmed or ground to make various smooth surfaces and to round off the corners formed until the desired shape of the pen-point was attained. The entire pen was then smoothed by polishing or tumbling.
Hecking’s patent describes a change in the method of manufacture. The iridium granules are preformed by fusion into small spheres or balls. One of these is then secured to the notched nib of a pen blank, now no longer oversized, and the resultant pen-point and nib are slit. Since neither the nib nor granule is oversized, the only grinding now necessary is that which is required to round off the édges of the pen-point at the slit.
The typical claims of the patent fall into three categories: the process, the preformed pen-point and the product.
*173The Product.
This is described in claim ten as follows: “10. A pen comprising a pen body having a split and pointed outer end; and a pen point secured to said end and comprising two substantial halves of a shot-like body centrally split, said halves having curved and hard writing surfaces.”
The pen described in this claim does not differ sufficiently from pens made by the old process to render it a new article of manufacture. This is self evident from the recital in the patent referring to the then existing method of manufacture and the pens produced thereby.2 Under either process, the product consists of a metal pen, nib and pen-point of hard and durable quality. There are slight differences. The bond formed between the pen-point and the nib is firmer. Some of the pens produced by the old method were “scratchy”; the pens as described by Hecking in his application are uniformly smooth writing. However, smooth writing pens were also produced by the old method. Hecking’s pen can be adapted for use as a reversible pen. The same could be done with prior pens, although the operation was expensive. The pen-point on the Hecking pen has a spherical surface,3 whereas the surface of a pen-point prior thereto consisted of numerous flat faces with corners rounded off. These are but slight differences of degree and uniformity. Fundamentally the pens produced by either process are the same. Since Hecking’s product is not a new article of manufacture, the product itself is not patentable, even though the process by which it is manufactured may be different. In re Wood-Paper Patent, 1873, 23 Wall. 566, 23 L.Ed. 31; Risdon Iron & Locomotive Works v. Medart, 1895, 158 U.S. 68, 83, 84, 15 S.Ct. 745, 39 L.Ed. 899.
The Preformed Pen-Point.
Typical of the claims regarding the preformed pen-point is number eight. It reads as follows: “8. A body adapted to be split to form complementary portions of a pen point, said body comprising a small shot-like superficially hardened body of non-corrosive metal having a smooth polished curved surface.”
The crux of this claim is the reference to a “shot-like” body, with certain described qualities, to be used as a pen-point. Admittedly invention does not lie in the discovery of a “shot-like body” or small metal sphere. The evidence, apart from common knowledge, amply shows that these were well known long before the patent.4 No particular method for forming these is claimed except that in the patent reference is made to “fusion” as an available method. At the trial one of defendants’ witnesses, the manager of American Platinum Works, testified that the process of making the metal spheres varied and that the current method employed by his company was a business secret. Fusion, as a method of making small metal spheres, is an old process and is admitted by appellants to be a known “natural law.” The characteristics of the product, “superficially hardened”, “smooth polished curved surface” were attributed by defendants’ expert to any “small pellet, pressed powder or a granule of metal” which was fused and allowed to solidify quickly.
The only possible basis, then, for invention in this claim is in the use to which the object described is put, a pen-point. However, the use of a spherical metallic pen-point is not new. A German patent5 and a Swedish patent6 describe pens with ball-like pen-points, although, as found by the trial judge, neither shows a preformed pen-*174point, since in both the pen-point and nib consist of one piece of metal. An English patent7 and an American patent8 show a metal ball or sphere, mounted to revolve freely, for use as a pen-point, the former patent suggesting that the ball may be of platinum or other non-corrodible metal. Although none of these patents is for a “body adapted to be split to form complementary portions of a pen point,” the use of a shot-like body as a pen-point is common to all of them. The claim to a “body adapted to be split” is in and of itself not invention since this was true of the iridium granules used before the Hecking patent and would be true of any pen-point made of a metal which could be cut. Our conclusion is that this claim of the patent clearly does not amount to invention.
The Process.
Finally, there is involved the portion of the claims pertaining to process. Typical of these is number four which reads: “4. A process of pen making which comprises first forming by fusing a shot-like body having an operative writing surface, then securing said body to a pen, and finally splitting said body.”
It is apparent that the process claim lists three steps. The first is the formation of a shot-like body by fusion. Our previous discussion of this feature of the purported invention, shows that it was no new discovery. The last step described is that of splitting the pen-point and nib. However, Hecking’s patent itself states that this had been the prior practice in pen manufacturing. Thus, if invention is to be found in the process claims, it must be in the intermediate step, the procedure of affixing a shot-like body, the preformed pen-point, to the nib of a pen blank.
The patent in question, however, claims no new method of attaching the pen-point to the nib. In fact, no method at all is specified. The prior practice, it will be remembered, also consisted of affixing a granule to the nib of a pen. What is different here is the substitution of a small preformed sphere for the former irregular-sized granule. On this departure from prior practice rests the entire process claim. However, we fail to see how this amounts to invention. The process remains in substance and theory as it was before. A pen of softer metal is given a hard point by attaching to it a piece of harder metal.
The trial court found that the Hecking development has been a factor in making available to the public inexpensive fountain pens having satisfactory, spherical, writing points and capable of wearing for five years or more. Figures were also stated as to the large number of pen-points manufactured. Commercial success is a factor to be considered where the issue of invention is in doubt; not where it is otherwise clear that invention is lacking. 1 Walker on Patents (Deller’s Ed. 1937) § 44.
We think that the lack of invention here is clear. Hecking’s unnovel use of materials, in themselves not the result of invention, to form a pen not different from those being manufactured at the time, was, as the trial judge stated, “not invention but merely an instance of that dexterity which one skilled in the art would naturally resort to.”
The decree of the District Court is affirmed.
As used in this opinion “pen” refers to that portion of a fountain pen which is generally called the “pen-point”. “Nib” refers to the pointed part of a pen. “Pen-point” refers to the tip placed on the nib of a pen.
“As heretofore manufactured, gold pens tipped with the material known in the pen-making trade as ‘iridium’ or ‘iridium composition’ have been provided with tips of varying irregular shapes and configuration, and in order to provide a smooth writing surface these tips of irregular shape were necessarily slit and then held in order to be trimmed or ground on opposite sides, at front and rear and on top to bring the iridium tip portion into a conformation substantially like a frustum of a pyramid with the top corners rounded.”
This feature is not new however, as shown by the instances mentioned in the following portions of this opinion.
For instance, small metal spheres were employed in the writing instruments of Lambert (see f. n. 7, infra) in 1892 and Parkinson (see f. n. 8, infra) in 1921. One Baker and Company sold, prior to tho Hecking invention, sparking points or electric contacts which were small metal spheres of a diameter from .05 to .25 of an inch. Small metal spheres had been produced by fusion.
Hewitt, German Patent, No. 27,262 ,(1883).
Aberg, Swedish Patent, No. 23,669 (1906).
Lambert, English Patent, No. 21,747 (1892).
Parkinson, Patent, No. 1,373,146 (1921).