
10 F.2d 30 (1926)
LYON et al.
v.
BOH et al.
No. 37.
Circuit Court of Appeals, Second Circuit.
January 15, 1926.
*31 *32 *33 Drury W. Cooper and H. Frank Wiegand, both of New York City, for appellants.
Frederick S. Duncan and John H. Hilliard, both of New York City, for appellees.
Before ROGERS, HOUGH and MANTON, Circuit Judges.
HOUGH, Circuit Judge (after stating the facts as above).
By taking notice of the decision in the Ninth Circuit in Weaver v. American Chain Co., and, remembering that equity acts in præsenti, we find ourselves in a legal atmosphere quite different from that prevailing in the court below, when its decision herein was rendered.
The parties to this suit, as against each other, can no longer anywhere assert that Lyon invented the subject-matter of his patent before Hoover invented that of his; but all controversy about that point is now beside the mark, for the same parties can never anywhere, as against each other, assert that Lyon's invention infringes claim 1 of Hoover. It follows that Hoover, in claim 1, sets forth something that did not and could not anticipate Lyon, something so remote from Lyon that the later invention is under no obligation to pay the slightest tribute to the earlier.
The ruling below in this case substantially restricted Lyon to a device by which both the strength of the front center of the buffer and the adjustability of the rear was derived from the two overlapping springs, so plainly shown in one of the diagrams above taken from Lyon's patent. This holding may be summed up in one sentence from the opinion below: "Lyon supposed that he had an invention made up of two connected springs." The court then in substance directed that Lyon should have no more than what in its opinion Lyon had thought out.
A second basic ruling below arose from a proceeding revealed by Lyon's file wrapper. Lyon and Hoover were copending applicants in the Patent Office, and the Examiner apparently drew a form of words which is now Hoover's claim 1, supra. He then invited Lyon's solicitor to enter upon an interference over this claim, although the Lyon application at the time embodied no such or similar claim.
Lyon declined entering into the interference, and the finding below is in substance that, because he declined to assert a right to something which is now conclusively held to be for a subject-matter wholly different from his own, he restricted himself to a device conposed of overlapping separate springs, and debarred himself from claiming infringement by something made of a hoop of steel.
Defendant's present position may, we think, be thus stated: Hoover's concept was of continuity, of making a buffer out of a *34 hoop, although his form shown above does not express that thought. Lyon had no such concept, he refused even to ask for claim 1 of Hoover; therefore he can never say that any of the claims he did obtain can cover a device embodying continuity of periphery; and the Biflex buffer patent dwells on that thought, and the buffer itself is licensed by Hoover, ergo there can be no infringement.
We cannot so think of the patent at bar, especially after our decision in the Hartford Case, supra. We there found infringement in a device which had no overlapping springs, and substantially denied to that peculiarity of structure the controlling force given it below. We then recognized, and now recognize, the rule that a patentee is entitled to all the advantages inherent in his disclosed invention and duly claimed, whether he understood these advantages or not.
In point of fact we do not think it true that Lyon (as stated below) "submitted to the rejection of claims which covered a one-piece spring," in the sense of abandoning all claims that would read upon such a structure; for we deem it too plain to require exposition that the claims now in suit do so read.
In point of law, also, we cannot agree that, when Lyon refused to claim what the Examiner suggested, and let Hoover have it, he thereby abandoned all right to deny (as he now does) that any one-piece spring was outside of his patented invention.
Lyon was undoubtedly bound by such estoppels as arose from his conduct in accepting Office rulings, but we are of opinion that he estopped himself only from asserting that a one-piece hoop device was his invention. He could never say that the hoop concept was his, but he could say, and now says, that his inventive concept, duly claimed, may be found appropriated in a one-piece hoop spring fender buffer or bumper. Thus, as usual in causes of this kind, we are required to state what is to be found disclosed as the essence or kernel of Lyon's thought.
We think that the great merit of his invention is that he first thought out what may be called an all-spring buffer, something that would resiliently resist severe strains, and on release regain approximately its original form, although the strain were applied in center, or either end, or anywhere between. The means for utilizing this mental conception is essentially the open-ended loops extending over and in front of the wheels. By this means the buffer is all-spring, and is exactly what Hoover, with his carriage spring ends collapsible by hand pressure, is not.
Hoover's idea may be and was sometimes reduced to practice by a continuous steel strip; defendant's Biflex device has such a strip; it is, indeed, made (save for the reinforce 8), of such a strip. But, if Hoover's ends, the only ends or extremities he shows and describes, be used, the Lyon idea is gone. A patent for a form is avoided by a change of form, but a patent for substance cannot be so avoided; the substance attacked must be different, to escape infringement.
Thus we feel sure, as we did when hearing the Hartford Case, that what gives merit to, and forms the central idea of, Lyon's buffer, is not continuity or solution thereof in the form of the metal whereof it is formed, but the arrangement of one, two, or (as in Hartford or Biflex) three pieces of metal to form a defense against collision, which shall be both strong and resilient wherever the contact shock occurs, by means of open-ended loops.
It may be agreed that Lyon improved upon Hoover, whose device, as found in the California case, was made rather to sell than to use; but it was an improvement of the kind (a long way behind to be sure) that was instanced by putting the needle's eye in the sharp rather than the blunt end of that instrument. It was assuredly a great deal more than fitting two overlapping springs together to secure adjustment to varying makes of motors.
Our estimate of the nature of the invention disclosed by the patent requires that the decree below be reversed, with costs.
