
    ECCO MFG. CO. v. NELSON TIMER CO. et al.
    (Circuit Court of Appeals, Seventh Circuit.
    March 10, 1926.
    Rehearing Denied April 26, 1926.)
    No. 3657.
    Patents <§=328 — Robinson patent No. 888,195, for timer held not infringed.
    The Robinson patent, No. 888,195, for a timer construed narrowly, as it must.be, in view of the prior art, helé not infringed by the structure of Lehman patent, No. 1,054,219.
    Appeal from the District Court of the United States for the Eastern District of Wisconsin.
    Suit in equity by the Eceo Manufacturing Company against the Nelson Timer Company and Oscar E. Sehwemer, receiver.
    Decree for defendants, and complainant appeals. Affirmed in part, and reversed in part.
    Arthur L. Morsell, of Milwaukee, Wis., for appellant.
    John J. Krizek, of Milwaukee, Wis., for appellees.
    Before ALSCHULER, PAGE, and ANDERSON, Circuit Judges.
   PAGE, Circuit Judge.

The District Court found against appellant, called plaintiff, in its suit on claim 1 of Lehman patent, No. 1,054,219, applied for April 23, 1908, and issued February 25, 1913, and found for appellees, called defendants, on counterclaim on claim 1 of Robinson patent No. 888,195, application filed August 24, 1907, patent issued May 19, 1908.

Originally, all of the claims of the Robinson application were rejected on the British patent to De Yeulle, No. 17,286, of 1905, in view of No. 808,554 to Le Pontois on December 26, 1905, the examiner saying:

“To employ the roller and arm 46 of Le Pontois in connection with the ring H of De Yeulle is without invention.”

Le Pontois, applied for in 1904 and issued on December 26, 1905, and Yarley, No. 861,921, applied for November 3, 1906, and issued July 30, 1907, used the identical roller and yoke, or arm, used by Robinson, with the exception that they carried the roller on the end of the arm and attached the arm at its middle to the center post, whereas Robinson carried his roller in the middle of the arm and attached the end of the arm to the center post. Further amendments were made, and the applicant pointed out to the examiner that he claimed, specifically, a ring, 21, having smooth inner and outer faces, and said:

“By this construction the ring has a smooth periphery and is given a slip so that the points of the contacts may contact with any part of the periphery of the ring, which is impossible in the reference.”

This slipping feature and its purposes are set out at lines 71 to 75 of the specification. The words “having smooth inner and outer faces” were inserted in all four of the claims of the Robinson patent, and, after some further suggestions, the two claims of the patent were allowed.

In the British patent, Hamilton, No. 13,-651, antedating in application and issue the Robinson patent, there is a ring (7, having smooth inner and outer surfaces arranged loosely upon the eccentric F and concentrically with F, and there appears to be no difference between that ring and the ring 21 in Robinson. Robinson was not in any sense a pioneer. He took the Hamilton ring (7, the Yarley and the Le Pontois yoke, or arm, and roller, and the old easing and binder posts, with the old conducting contact pieces, used by many. His patent was only allowed after inserting as an element the words:

“A ring (21) having smooth inner and outer faces, located between the roller and the wall of the hollow casing.”

The Lehman patent had even a more difficult -passage through the Patent Office. While to our minds there is quite an obvious difference between the effect of the use of ball bearings as Lehman sought to use them, between two moving parts, and the use of them between a stationary part and a moving part, as they appeared in the latter form quite frequently in the prior art, yet the Patent Office was not able to see any such difference, and rejected all elaims made by Lehman based upon the ball bearing feature, except that covered by claim 2, not here in question.

While 29 of the Lehman patent has ring (7 of the Hamilton Patent and 21 of the Robinson patent, and while 29 and 30 of the Lehman patent are concentric to each other, as were rings F and G of the Hamilton patent, and though we concede that the ball bearings as used were rightfully rejected as having no novelty, and that all of the elements in Lehman are old, yet Lehman used neither the roller nor the yoke, or arm, of Robinson. The District Court found that that which Lehman used was obviously an equivalent of the Robinson device, and that their use by Lehman constituted infringement.

We are of opinion that Robinson’s patent was so narrow that he is not entitled to such a range of equivalents as will enable him to say that the Lehman uses constitute infringement. ' In addition, what all the workers in that field were trying to get away from was friction that produced wearing of the contacting parts of the timer. While Robinson was trying to accomplish that thing and did make some progress, yet, speaking of this contact between his ring 21 and the contact pieces 10, he said:

“As the .ring is of less diameter than the wall Of the chamber wherein it moves, and also slips slightly, practically a new contact surface is presented to the pieees 10 with each revolution of the sleeve, preventing pitting or wear of the ring,” etc. (Italics ours.)

It appears that in the operation of the Robinson timer there is a slipping of the ring 21 and a jumping of the ring as it passes over i the contact pieces 10. While the Robinson claims are not limited to¡ the extended pieees 10, yet the jumping and the slipping appear to be defects in the operation of his timer, and the slipping is not at all necessary to change the contacting points between the outer surface of the ring 21 and the pieces 10, because change in the point of contact necessarily follows from the fact that the outer circumference of 21 is smaller than the circumference of the track around which it moves. In the Lehman patent the slipping is done away with, and there is, throughout its action, that true rolling motion, as claimed, that is continuous, wherein and whereby the slipping is eliminated and the friction decreased. Lehman made • an ad-, vanee over Robinson, and we are of opinion that there is no infringement by one patent of the other.

The decree is affirmed as to the dismissal of the bill, and reversed as to the counterclaim, with directions to dismiss it.  