(dissenting in part).
The majority conclude that Hecking’s patent discloses and claims nothing of patentable novelty. I think that this conclusion is erroneous.
Hecking’s patent discloses and claims a pen, a pen point and a process for manufacturing them. His pen consists of a pen nib on which is fastened a preformed “completely spherical” or “shot-like” body of hard material such as iridium. This shot-like or spherical body takes the place of the pen point as theretofore known to the art.
An iridium tip fastened to a pen nib to form a pen point was a product old in the art. It was the practice to select grains of iridium as nearly suitable in shape and size for pen points as could be found. The iridium grain was embedded in the gold at the end of the pen nib and then was slit and ground. “ * * * the end, front, the top and the back and all the corners” of the hard metal point were ground off. The finished point had a “table top flat writing surface with the corners rounded off”.1 *175The grinding was a laborious and expensive process.
Hecking got the idea of using spheres of iridium preformed by surface tension. Surface tension will cause small particles of molten metal to “crawl” into balls or shot-like shapes. The use of the principle of surface tension to form shot-like or spherical bodies was well known, but as I have indicated Hecking made his pens by fastening these preformed spherical points to pen nibs. He thus eliminated grinding or polishing and the finished product consists of nothing more than the pen nib with the ball fastened to it, slit as was usual in the art. The result is what Hecking refers to in his pen claims as “A pen comprising a pointed and formed metallic blank having * * * fastened thereto at the pointed end a writing point composed of a preformed body of hard metal of completely spherical shape, the said pen having a slit * * *» 2
An examination of the prior art indicates that it is a far cry from its disclosures to those of Hecking. Wiley’s United States Patent, No. 228,427, of 1880, discloses a process for mixing commercial iridium with a small proportion of platinum and fusing the two metals “into globules of the desired size”. Wiley then “sweated”, i. e. welded the globules to pen nibs but thereafter ground them down and finished them “in the ordinary way”. This is not the Hecking product which requires no grinding. Wiley’s patent was in fact a paper patent which has lain dormant for thirty years in the art. Wiley did not anticipate Hecking.
The court below largely relied on the disclosures of the United States Patent to Kegrize, No. 744,557 of 1903, because the figures of the illustration accompanying that patent showed a ball point sweated to the end of a pen nib. This was nothing more than an over-simplification of the patent’s specification by the draftsman who made the drawings. Though Kegrize’s patent calls for and claims an iridium tip or writing point, there is nothing in the patent which discloses that the iridium tip was to be preformed into a spherical body. The majority of this court do not rely on Kegrize.
Hewitt’s German Patent No. 27,262 of 1883 and Aberg’s Swedish Patent No. 23,-669 of 1906, do disclose “pens with ball-like pen-points”, although as the majority opinion points out and as the trial judge found, neither patent discloses a preformed pen point since the pen point and nib were to be formed from one piece of metal. There is no anticipation of Hecking by Hewitt or Aberg.
The majority opinion really rests on Lambert’s British Patent No. 21,747 of 1892, and Parkinson’s United States Patent No. 1,373,146 of 1921. Lambert does disclose “A spring-pressed revolving ball [for the nib or needle of the fountain pens', of that date] partially enclosed in a cap or casing * * *, the ball protruding from said casing sufficiently to come in contact with the writing surface by which it is caused to revolve as specified”. Lambert states that the ball may be made of “vulcanite or of platinum, or other noncorrodible metal”. The illustration accompanying the specification illustrates how far Lambert is from Hecking. A revolving ball inserted in a socket and kept in place by a spring device is not the equivalent of Hecking’s ball point fastened to a pen nib. I think that it may not be said justly that Lambert anticipates Hecking.
Parkinson discloses a ball point held in place by another and larger ball placed just behind it, all held in position by a plunger with a powerful spring.
Neither Parkinson nor Lambert disclose or suggest the fastening of the ball to the end of a pen nib. Their disclosures make no references to pen nibs and the use of pen nibs was not contemplated by them. Parkinson’s and Lambert’s ball points are not to be split as are Hecking’s spherical points. As a matter of fact if Parkinson’s and Lambert’s ball points were split they would become inoperative. Both Parkinson’s and Lambert’s patents are paper patents.
In the long and detailed article “Reservoir, Fountain and Stylographic Pens” appearing in the Scientific American Supplements in evidence, in which the whole art of pen making is reviewed, pens similar to Hecking’s product are not even suggested. Lambert’s device is referred to but these references 3 are very brief and his contributions to the art apparently are not considered to be of greater importance than *176those of his predecessor, Loud.4 Loud’s writing instrument had a ball head held in an aperture at the end of the instrument by two smaller balls, all being kept in place by a plunger and spring. Loud’s ball like that of Lambert was not slit. It is interesting also to note that in another article, “The Twentieth Century Pen” in the last Scientific American Supplement in evidence, dated December 20, 1906, reference is made to an iridium point pen but the iridium point “is [to be] coated with a 'cream of borax which is ground in water”. Parkinson is the lineal descendant of Lam’bert and Loud. Hecking is in fact unrelated to Parkinson, Lambert and Loud.
In retrospect Hecking’s idea seems simple but I think that that simplicity has the touch of genius. What Hecking disclosed revolutionized the making of pens for fountain pens. He aided greatly in arriving at the present-day cheap long-lasting fountain pen. Pens covered by certain claims of his patent have achieved tremendous commercial success. In my opinion, the majority of the court adopts too strict a test in the case at bar.
I think that claims 1, 2, 3 and 13 of the Hecking patent are valid. The other product claims are invalid because they do not claim a preformed body of hard metal of completely spherical or shot-like shape. The specification so clearly deals with iridium or other hard metal points that the claims of the patent should be so limited. The process claims are invalid for the same reason. If Hecking had qualified the word “body” (first occurrence) used in claim 4 with some descriptive clause such as “iridium or similar hard metal” preceding the adjective “shot-like” I should consider that claim 4 was valid. Claim 5 is invalid for the reasons stated and for a further reason. It is too indefinite since it refers to “fusing a point body”, without claiming any degree of fusing. This might result in bodies which were not completely spherical or shot-like. Claim 6 is invalid since it suffers from the vices of claims 4 and 5 but to a greater degree.
The issue of infringement must be decided against the appellants. Pfanstiehl creates by its Process “A” 5 small spheres of iridium formed by fusion. These, in many instances are sold to Goldsmith Bros. Smelting and Refining Company, which in turn sells them to pen manufacturers who affix the iridium spheres to pen nibs. None the less there is grinding or tumbling of the Pfanstiehl spheres before they are affixed to pen nibs. This grinding or tumbling was described even by Pfanstiehl himself as “mild”, but Hecking’s specification states that his preformed points are in such a condition that “ * * * substantially all grinding is eliminated.” I think that “mild” grinding or tumbling is not the equivalent of substantial elimination of all grinding. Hecking’s invention is not so basic as to require a broad interpretation of his specification and claims. Pfanstiehl’s Process “C”,6 the powdered metallurgy process,7 does not create spherical iridium points which, where mounted on nibs, form pens which fall within the scope of Hecking’s valid product claims. The iridium points formed by Process “C” frequently are not spherical at all and the points formed by the process, even when almost shot-like, require grinding or tumbling.
I conclude therefore that part (I) of the decree of the court below should be reversed to the extent indicated; that part (II) of the decree should be affirmed as should part (III) also.
Seeking, testimony record pp. 153, 154.
See Claim 1 of the Hecking patent.
See J. P. Maginnis Reservoir, Fountain and Stylographic Pens Scientific American Supplements 61:25,344 — 6 April 28, 1906.
See pp. 25, 345 — 6 of the Scientific American Supplements supra.
So designated in the record and upon the briefs.
So designated in the record and upon the briefs.
This is a process in which grains of iridium are thrust into a rubber pressing die and subjected to great pressures. The grains are" then taken from the die and sintered to the pen nibs. A fusing process is sometimes used to aid in perfecting the points.