BUMP'S PERFECTED PAPER FASTENER CO. et al. v. MAX GESSLER, Inc., 236 F. 242

ARSCHURER, Circuit Judge (after stating the facts as above). The one claim of the method patent describes a fastening quite unlike that of appellee. The slit being, as its name implies, simply a cut, and no part of the substance of the sheets being removed, the tendency of the material is to resume its first form and close the slit, causing pressure against the tongue protruding through it, and by this frictional engagement holding it in place and effecting the lock.

This result could not be accomplished if, instead of such a slit, this same tongue were passed through a slot of substantial width, as in the fastening complained of; for there would then be nothing to keep the tongue from slipping back to its former place.

The prior art shown discloses fastenings made at folded corners or edges of superposed sheets, but the claim of the patent is not broad enough to include any sort of fastening that might be made by cutting out and interlocking parts from the body of the sheets, leaving undisturbed the edges and corners; and, indeed, the bill does not allege that the patent has a scope so broad. Appellee’s lock is in no wise effected by frictional engagement of the sides of a slit against a tongue drawn through it, but reveals a conception substantially different from that of the patent and not included in its claim.

As to the devices, from the description given'oí them the resemblances and differences are quite .apparent. Both are in tiie form of hand punches with handles actuating parallel jaws, with cutting members on one jaw and corresponding dies on the other. Means for holding the sheets and for cutting and bending down the tongue which is to form the lock, are substantially the same. But so far there is nothing novel in either combination, and here the resemblance ceases. The knifelike blade or slitter in the combination of the patented device is wholly absent in the other.

The slitter with its eye, into which the tongue enters, is quite analogous in function to a needle having its eye near the point to receive the thread and draw it through the material. In defendant’s device there is no slitter, and nothing which is the equivalent of the needle mechanism and sewing action of the slitter of the patent. The pushing action of the dog, whereby the ears of the tongue cut by the alleged infringing device are pushed through the slot cut therefor is very different from the drawing of the tongue through the slot by means of the needle and thread action of the patented device.

The essential distinction between the drawing and the pushing action was explained and emphasized by the patentee himself in distinguishing, in the Patent Office, his method from that of the prior Ruth patents, upon which the examiner had rejected the Bump claim.

The Ruth patents show a triangular piece or wedge cut into the folded corner or edge of the sheets, remaining attached to the sheets at the. inner side, and the opposite points of the wedge pushed into slits cut into the paper to receive them, the slits being nearer together than the distance between the points of the wedge, so that the wedge had to be bent between the points in order to insert or push the points into the slits, and, on being inserted, and the wedge-like piece straightened out, the locking was effected. Rig. B shows this fastening.

Under date of March 21, 1911, in a letter to the Commissioner of Patents the applicant, Bump, said: “Applicant’s method proceeds with a sequence of steps quite distinct from the steps necessary in the Kuth patent, and it will be observed that not only is applicant’s tongue drawn through the slit instead of being pushed through as in the Ituth case, but the process is distinguished from Ituth also in that applicant’s tongue is bent back from its free end, and is thus drawn through in advance of the extreme end.” And in distinguishing the Ruth devices, which were cited in the Patent Office on Bump’s application for the device patent, Bump wrote October 2, 1909: “Applicant's invention appears to be clearly distinguished from the references cited in a number of respects.

In applicant’s case, the slitter passes into and is withdrawn from the paper, and, while its eye is exposed on the under side, the end of the tongue is tucked into the eye, and then, upon the withdrawal of the slitter, the tongue is drawn up through the slit. No such action is disclosed in any of the references. * * * ” The lack of this element and function, so necessary in Bump’s combination, distinguishes appellee’s device as well as Ruth’s.

Claim 1 is.the broadest of the claims of which infringement of the device patent is alleged, and while it does not mention the slitter, the designation “means for penetrating the paper adjacent to the attached end of the tongue, and means for causing said penetrating means to draw the end of the tongue through the opening made thereby,” in view of the specifications and drawings and the file history of this patent, as well as of the method patent which is referred to in the specification of the device patent, must be held to be the knife-like slitter with its needle-like eye to “draw” the end of the tongue-through the slit made by the slitter.

Claims 8, 12, and 15 mention the slitter, the function of which is particularly set forth in the application, which refers to the lode of the earlier granted method patent as the object to be accomplished by the device, by drawing through the slit the tongue threaded through the slitter’s eye.

We find the alleged infringing method to be substantially different and distinct from that of the patent, and that the device for producing it does not incorporate the necessary element of the combination of the patent embodied in the slitter, and that the District Court correctly found that neither patent had been infringed by appellee. The decree is affirmed.