The opinion
SMITH, Judge
(dissenting).
The majority opinion finds the claimed invention to be obvious and hence unpat-entable. Some of the elements of appellant’s claimed combination are, in a broad sense, old. But I do not think we should accept this as the criterion for determining the obviousness of the subject matter. Judge Learned Hand, in Reiner v. I. Leon Co., 285 F.2d 501, 503 , (2d Cir. 1960), expressed a point of view which I find relevant here when he stated:
“ * * * It is idle to say that combinations of old elements cannot be inventions; substantially every invention is for such a ‘combination’: that is to say, it consists of former elements in a new assemblage. * *
“The test laid down is indeed misty enough. It directs us to surmise what was the range of ingenuity of a person ‘having ordinary skill’ in an ‘art’ with which we are totally unfamiliar; and we do not see how such a standard can be applied at all except by recourse to the earlier work in the art, and to the general history of the means available at the time. To judge on our own that this or that new assemblage of old factors was, or was not, ‘obvious’ is to substitute our ignorance for the acquaintance with the subject of those who were familiar with it. There are indeed some sign posts: e. g. how long did the need exist; how many tried to find the way; how long did the surrounding and accessory arts disclose the means * * V*
In order that knowledge of the claimed invention not be presumed a part of the relevant prior art, the mandate of 35 U.. S.C. § 103 is that the question of obviousness must be determined as of the time the invention was made. My disagreement with the conclusion of the majority opinion arises at this point. It seems to me that the analysis of the prior art, as set forth in the majority opinion, discloses significant differences from the claimed invention. Thus, the Pleasants reference discloses a penholder having three similar, symmetrically arranged gripping surfaces each of which terminates at its lower end in a notched-out recess having a curved wall which meets, the gripping surface at substantially a right angle. From this curved wall the gripping surfaces extend straight upwardly, terminating at a point where they are twisted sharply to form a short, steeply inclined helix. The effect of sandwiching the steeply twisted helical surfaces between the two sections of flat, straight surfaces is to force the user to grasp the holder in an incorrect writing position. That is, the short, flat, straight surfaces at the lower end of the holder are the only ones which provide useful gripping surfaces. These surfaces, being short, require the user to grip the holder with the thumb opposite the fingers, thereby forcing a crooking of the fingers in an incorrect writing position. If the user of the Pleasants penholder attempts to use the correct writing position with the fingers extended, the thumb is required to engage the steeply twisted helical portion in an uncomfortable position.
As the examiner has observed, the actual gripping surfaces of the Pleasants penholder are flat. They do not first curve downwardly toward the axis and then curve upwardly away from the axis, as required by appellant’s claims. Thus *684 Pleasants does not disclose the compound curvature which is characteristic of appellant’s gripping surfaces. Each of appealed claims 13,14 and 15 calls for three symmetrical angularly disposed gripping surfaces for engagement by the thumb, forefinger and middle finger of the hand. Each of the gripping surfaces is defined as extending away from a tapered end portion longitudinally of the body and helically around the axis of the body so that in successive cross-sections taken through the body and through the gripping surfaces, the angle between each of said gripping surfaces and a given longitudinal axial plane of reference increases continuously throughout the length of the gripping surfaces.
While the majority opinion does not expressly repeat what seems to me to be an erroneous analysis of Pleasants initially made by the examiner and concurred in by the board, it seems to have accepted it. In the majority opinion the differences referred to above are said to be what the majority terms “minor variations,” with respect to which the opinion states:
“ * * * it would be obvious to make slight modifications of Pleas-ants as suggested by the teachings of the secondary references. To recite them in more detail would not, in material substance, amount to more than the analysis and comparison made by the examiner and expressly affirmed by the board.”
The examiner’s position which was accepted by the board was stated in the action of January 10, 1961 as follows:
“ * * * The portion of the gripping surfaces in Pleasants which receives the tip of the fingers defines structure which first curves downwardly toward the axis then upwardly away from the axis as recited. * * * ”
This statement of the examiner, concurred in by the board, seems to me to be unsupported by anything which may reasonably be derived from the Pleasants drawings. On the contrary, the drawings indicate a curved, notched-out configuration at the end of each gripping surface, which is designed to receive the tips of the fingers. This clearly indicates to me that the gripping surfaces are straight and flat and lack the curvature specified in the appealed claims.
The secondary references were relied upon to meet those limitations of the appealed claims not found in Pleasants. In describing the references, the examiner used the language of appellant’s claims, despite the fact that such language seems inappropriate, and is misdescriptive as applied to the actual disclosures of Lehmann and Karpoff, as well as Pleasants. It is difficult to suppose that anyone would use this precise language at the time appellant’s invention was made in attempting at that time to describe the Pleasants holder. Thus, absent appellant’s disclosure, I fail to find any suggestion that the art could or should be combined in the manner employed by the examiner. With respect to Lehmann and Karpoff, the examiner’s statement that these references show gripping surfaces which extend “helically around the axis of the body” seems misdescriptive. In these patents the surfaces referred to are recesses with raised edges (Lehmann) or cup-like depressions (Karpoff), and while they are angled across the longitudinal axis in some cases, they do not curve around the axis in the manner of a helix. Cf. In re Philip A. Shaffer, Jr., 229 F.2d 476 , 43 CCPA 758.
The question of obviousness as presented by this case requires that appellant’s invention be appraised not only against the background of the prior art, but also against the practical reality that to be acceptable it must not only perform a useful function, it must be simple, it must require little or no instruction to the user, it must be universal in the sense that it can be used to advantage by hands of many sizes and shapes, and it must be inexpensive to manufacture. Within these requirements and limitations appellant created a holder which, it is asserted, has been found to produce a significant improvement in writing habits and a corresponding improvement in penmanship. This appellant attributes to *685 reduction in writing fatigue due to the claimed construction of the holder, which encourages the fingers of the writer to assume a correct writing position.
Appellant has contributed a new pen-holder which possesses significant differences over the prior art. And it seems to me that, except as one reads the elements of appellant’s invention into Pleas-ants and the secondary references, those differences are such that appellant’s invention would not have been obvious at the time it was made. I would, therefore, reverse the decision below.