(dissenting).
I would hold the Scott-Garfield patent invalid for want of invention. New combinations of old elements producing new results, prior art, ordinary skill, and flashes of genius are terms incapable of exact definition. They are terms readily applicable to most any given state of facts to produce most any desired result, or support any desired view. Whether a combination of old elements rises to the dignity of inventive genius producing new and extraordinary results generally depends upon the views of a judge learned in the law but possessed of ordinary engineering or mechanical learning, training, skill or ability. For myself, I fail to discern any spark let alone flash of genius in the arrangements of three conical grinding surfaces upon synchronized rotating axes.
Leading a stream of water from the radiator of an automobile to a miniature radiator equipped with a fan in the body of a car, certainly led to startling and revolutionary results in the heating of automobiles. At once out of the window went heated bricks, hot water bottles, and all •other heating pads. Hot water heaters were universally accepted and yet without exception we have held that the perfection of a hot water heater in an automobile did not involve a flash of genius — only mechanical skill — and therefore the device was mot patentable.
The arrangement of three revolving or moving elements upon synchronized axes or pivotal devices is old in the field of mechanics. The principle is employed in many ways. I fail to see any flash of genius in the arrangement of three conical shaped grinding surfaces with intermeshed teeth rotating in unison upon a drilling stem. Such an arrangement, at best, is but an extension of the same idea embodied in a patent involving two such surfaces and at most requires the application of ordinary mechanical skill.
I am of the further view that in any event the retipping operations constitute permissible repair and not reconstruction. The principal case dealing with this subject is the old case of Wilson v. Simpson, 9 How. 108. This case is a good illustration that we seem to find what we look for in the field of patent law. Like Chief Judge Phillips, I place strong reliance for my views upon this case. In the opinion, in speaking of repairs and giving examples of repairs, the Supreme court says: “In either case, repairing partial injuries, whether they occur from accident or from wear and tear, is only refitting a machine for use. And it is no more than that, though it shall be a replacement of an essential part of a combination. It is the use of the whole of that which a purchaser buys, when the patentee sells to him a machine; and when he repairs the damage which may be done to it, it is no more than the exercise of that right of care which everyone may use to give duration to that which he owns or has a right to use as a whole.”
And again the court says: “It would be the right of a purchaser to repair such a thing as that, so as to give it what was its first shape, if it had been turned from it, or, by filing, grinding, or cutting to keep it up to the performance of its original use. But if, as a whole, it should happen to be broken, so that its parts could not be readjusted, or so much worn out as to be useless, then a purchaser cannot make or replace it by another, but he must buy a new one.”
As I understand, neither the Fletcher nor the Scott-Garfield patents covered the length, thickness or shape of the teeth. The Fletcher patent covered intermeshing teeth on two synchro-conical grinding surfaces. The Scott-Garfield patent covered the additional element of three such conical surfaces instead of two.
*287It is clear from the record that appellant’s retipping operations are performed on ‘bits whose teeth still intermesh and at a time when the bits have continuing usability, and that the lessee, as possessor thereof, asserts the continuing right to their further use and releases them only temporarily for the restoration of the teeth to their original size.
Since the teeth still have left some of the original economic use when they are repaired, retipping does not create new teeth or new economic life. It merely extends the economic use of the original teeth beyond a point of time where it would have expired, save for the retipping.
Paraphrasing the language of the Supreme Court in the Wilson case, supra, “A lessee of the Hughes’ bit had the right to the use of the bit until the original teeth and/or bearings were worn out, and when he repaired the damage to the teeth, he did no more than exercise that right of care which everyone may use to give duration to that which he owns or has a right to use as a whole.”
Neither do I see anything in the leasing agreement which prohibits retipping. Since it is an agreement relating to a patented article, it will be carefully scrutinized to make sure that it does not extend the patent monopoly. It is worthy of note that the agreement does not mention retipping or repair. If retipping is held to constitute repair, an agreement prohibiting it would be void because it would extend the patent monopoly. The asserted reason for the agreement is to enable appellee to repossess worn out bits for laboratory experiments and tests. It is conceded that only a small percent of the recovered bits are so analyzed and that the remainder are junked. So it is also without dispute that only a small percent of the bits are capable of being retipped. Permitting retipping of this small number of bits would in no wise interfere with any analytical operations appellee might wish to conduct.
I would hold the Scott-Garfield patent invalid and that the lease agreement does not prohibit retipping.