The appeals and cross-appeals to Complainant's Drawing of Defendant's (W. F. Burns Co.'s) Structure. this court present all of the questions passed upon in the District Courts. We shall endeavor to avoid repetition of the matters contained in the opinions hereinabove referred to, and shall confine our review to such supplementary statement of facts and of law as may be essential to make clear the grounds of our agreement or disagreement with the several conclusions therein reached. [1] 1. On the appeal and crossappeals of the Automatic Company, the principal question in each case is the scope of claims 1 and 5 of the first Fisher patent, No. 793,779, in suit. If they are valid, and if they are not to be limited by the specifications, prior art, or the proceedings in the Patent Office, as evidenced by the file wrapper and contents, to the device shown in the drawings of the patent, if the difference in language between these two claims, on the one hand, and claims 2, 3, and 4, on the other, is to be given its natural effect, and the language of the claims their natural interpretation, then, as clearly pointed out in the opinion of Judge Lacombe, these claims must be held infringed. Concededly, the prior art shows no direct anticipation. The cited coin holders, toy banks, purses, and poker chip boxes, while having some elements in common with those of the savings bank, serve a different purpose and operate in a different way. Fisher did not merely carry forward an old art by slight improvements, or by the mere substitution of equivalent elements. Practically, and from a commercial standpoint, he invented a new and useful product; as fully pointed out by Judge Sanborn, his invention lay, not in any or all of the elements, but in the novel combination of core and casing, equipped as specified by him and resulting in the first successful portable savings bank-a bank which, because of its core arrangement, as distinguished from Thompson's multiple complete compartments and from the earlier single compartment safes, enabled each denomimation of coins to remain in separate stacked position, and thus to be much more rapidly handled and counted by the bank teller when he unlocked the safe and removed the casing. We fully concur in holding that Fisher exercised more than mere mechanical skill-indeed, a fair measure of inventive genius-in devising this construction with its novel method of operation. Nor does the prior art compel such a construction of the claims as to exclude therefrom Fisher's later oval-shaped bank, in which the flanges are curved and the coin compartments consequently narrower at the vertical slot opening than the diameter of the coins, and thus to restrict the invention to devices conforming strictly to that shown in the patent drawings. Complete coin tubes, such as Thompson gath241 F.-31 ered together to form his bank, have neither flange nor vertical slot opening, and the prior art patents for other articles with cores or compartments show both kinds of flanges and slots. Neither the radial nor the circular flange, with its resulting open or narrow slot compartment, was new in Fisher. His novel combination and novel method of operation would produce a similar result in either case. It is true that in the specifications the flanges are always described, and in the drawings they are shown, as radial. But the broader language, "vertical flanges," of these claims' should not be so limited by the specifications and drawings as to deprive the inventor of some part of his actual invention, unless it clearly appears therefrom or from the proceedings in the Patent Office that he had intentionally renounced the broader grant. It is to be noted, however, that the vertical compartment walls as shown in the drawings are not strictly speaking radial, as they do not radiate from a common center. It is apparent, too, that the inventor in his specifications was only describing the structure of his preferred form shown in the drawing, and not intending to renounce any part of his invention, or to limit it to this specific device. Greatest stress, however, is laid on the Patent Office proceedings. These five claims were first rejected on the Young toy bank patent, No. 697,309. The amendments then made, designed more clearly to indicate that the compartments were to be wider than the coins, so that, when these dropped in, they would lie flat, expressly stated as to claims 1 and 5 that the flanges-that is, the vertical flanges-were so spread apart that the distance between the flanges of each compartment should be greater than the diameter of the coins; but as to claims 2, 3 and 4, in which the flanges were described as radial, the amendment properly specified that this greater distance was not merely between the flanges, but between the outer edges of the radial flanges. In our judgment, the effect to be given to this express differentiation cannot be destroyed by the apparently inadvertent and certainly erroneous statement of the solicitor, in his remarks accompanying the amendment, that: "Claims 1, 2, 3, 4, and 7 (the present claim 5) have been amended more clearly to distinguish applicant's invention from the prior art, by setting forth the fact that the distance between the outer edges of the adjacent flanges is greater than the diameters of the coins to be received." While stating that "this feature facilitates the counting of the contents of the bank," this facility is said to be due to the stacked condition of the coins within the compartment and their ready removability by the teller in counting them, as against the necessity in Young's bank of removing and then assorting the coins before they can be counted. Neither here nor in the specifications did the applicant assert that this ready removability was lateral. If the distance between the outer edges of the flanges is sufficient to enable the bank teller to grasp. the stack with his thumb and a finger, it can be readily lifted upwards and removed vertically and counted as readily as if withdrawn horizontally. Undoubtedly the inventor had in mind this lateral remova bility. It inhered in his preferred form of structure, that with the radial flanges. But it was not essential to his invention. With or without it, his device, the first practical recording safe, had that novel combination of elements resulting in a new mode of operation, giving a ready accessibility for removal in stack and greater facility in counting the contents, which evidences invention. A different question would be presented if the actual amendment of claims 1 and 5 had in fact been identical with that of claims 2, 3 and 4; if the solicitor here, as in Matheson v. Campbell, 78 Fed. 910, 24 C. C. A. 384, had erroneously amended the specification or the claims. The answer thereto we need not now consider. Here, however, the language of the amendment itself is clear and correct. The error occurs only in the remarks accompanying it and forming no part of the grant itself. The applicant, never called upon to renounce any part of his actual invention, cannot be estopped by this inadvertent erroneous statement of his solicitor, unnecessarily made in thus attempting merely to differentiate an earlier patent cited. against him. Moreover, the claims, as amended, were again rejected on the Young patent, in view of Holmes patent, No. 202,545, for a coin holder. The examiner stated that to make the Young coin tubes out of elastic material, as in Holmes, whereby the coins could be laterally removed, did not amount to invention. To meet this objection, a further amendment was made in each of these claims by describing the flanges as rigid, and, thus amended, the claims were allowed. It is obvious, however, that in the device described in claims 2, 3, and 4 as first amended, the lateral removability was due not to resiliency of the flanges, but to their radial form and the resulting size of the opening; only if the flanges were curved inwardly, so that the distance between their outer edges was less than the diameter of the compartment and of the coins to be stacked therein, could their resiliency or rigidity affect the lateral removability of the stacks. It would seem, therefore, that in requiring this differentiation from Holmes the examiner must have believed that some of these claims, as first amended, covered a resilient inwardly curved flanged device. And this was true as to claims 1 and 5, if the first amendment be given its literal and natural interpretation. By the final amendment, the shape of the flanges and the resulting shape of the compartments as theretofore described were in no manner limited or affected. The opinion expressed in National Recording Safe Co. v. International Safe Co. (C. C.) 158 Fed. 824, on an application for preliminary injunction, that, in view of the file wrapper and contents, even claims 6 and 8, which were never amended, and which described the vertical flanges merely as "spaced apart to form compartments for the coins," must be limited to radial flanges, cannot be followed. Subsequently the defendant in that case acknowledged the larger scope and validity of the claims, and a final consent decree was rendered against it. The claims in this patent are to be interpreted in the light of their history and of the art at the time of application. The inventor's state ments, made after he had assigned his letters patent, whether in the form of an affidavit in a lawsuit or otherwise, can have no bearing thereon. On the other hand, his application for another patent, made two years after the one on which the patent in suit was issued, while demonstrating that he then apprehended the value of the curved flange compartment, reflects no light on the interpretation of the patent in suit. That the inventor may not have grasped the full significance of his actual invention does not detract therefrom. At that time, he described the radially flanged compartment as the preferred form. Under the sand-molded process of casting then in general use, such a core could be more easily produced. Later, however, the die-molded casting obviated this difficulty. Doubtless, too, the lateral as well as vertical removability of the stack in such structure was deemed by him an advantage. Experience, however, has now demonstrated that this is more than compensated for in the curved flanged compartment, for in the latter, unlike the former, accidental knocks and jars will not readily disturb the stacks of coins after the casing has been removed. Inasmuch, however, as the language of these claims clearly covers both the then preferred form and the later device, commercially adopted first by complainant and then by all of the defendants, and as we find no basis for a limitation thereof, we conclude that claims 1 and 5 must be held infringed by each defendant. [2,4] 2. Claims 2 and 6 of the second Fisher patent in suit, No. 990,534, and 1, 2, 3, and 5 of the fourth Fisher patent in suit, No. 1,072,709, relate particularly to the slot guards and their co-operating sockets in combination with the other elements of a portable savings bank. In the first Fisher patent, these were shown as round bolts and described as inwardly yielding plungers carried by the cover; in the second Fisher patent, they are described, in claim 2, as angular formed; in claim 6, as nonrotatable plunger formed with beveled end surfaces. In the fourth Fisher patent, the plungers are described as T-shaped. Two of three exhibits of Savings Loan & Trust Company's banks have, in combination with the other elements, these Tformed and therefore nonrotatable plunger slot guards with beveled outer ends, fully corresponding in shape, location, and mode of operation with those of the claims in suit. These must be held to infringe, if, as the District Court found, complainant's claims are valid. While the improvement over the original Fisher device is not great, it is substantial, in that the slots are more securely protected by the new form of guard. And its adaptation to this kind of device in combination with the other elements would involve, in our judgment, at least some degree of inventive genius, even if the guard were identical in form with the Patterson latch, patented October 19, 1829, or the Hotchkiss latch, patented January 19, 1835. Priority, however, is claimed by defendant through the Stone patent, No. 1,011,521, under which it operated. This was applied for on January 7, 1911, and issued December 12, 1911, three months before Fisher's application that resulted in his patent No. 1,072,709. Without detailing the evidence, we are, however, satisfied therefrom that the complainant has |