Full opinion text
MEMORANDUM OF DECISION SWEIGERT, District Judge. This is a patent infringement action brought by plaintiff Crown Machine & Tool Co., (hereinafter “Crown”) against defendant KVP-Sutherland Co., (hereinafter “Sutherland”). Defendant Sutherland has counterclaimed for violation of the antitrust laws. Jurisdiction of the patent action is founded upon 62 Stat. 931 (1948), 28 U.S.C. § 1338 (1964). The case is presently before the Court after a trial of the issues and extensive post-trial briefing. The Court has also had the benefit of its extensive and fairly well detailed notes made during the trial of the case. The extent of the transcript, the exhibits, the briefs and these trial notes account for the length of the submission period. Crown is the owner of U. S. Patent Nos. 2,951,260 (hereinafter ’260), 3,125,780 (hereinafter ’780) and 3,162,705 (hereinafter ’705) relating to apparatus and method for making plastic containers from expandable polystyrene beads. The complaint charges that defendant Sutherland’s use of so-called “Thompson Machines” to make cups from expandable polystyrene beads infringes its ’260, '780 and ’705 patents. The claims in issue herein are the single claim of the ’705 patent, claims 1 and 3 of the ’780 patent, and claim 12 of the ’260 patent. The issues in the case are: (1) Is the sole claim of Crown’s ’705 patent valid in law?; (2) Are claims 1 and 3 of Crown’s ’780 patent valid in law?; (3) Is claim 12 of Crown’s ’260 patent valid in law?; (4) Are any of the foregoing claims infringed by the Thompson Machine?, and (5) Has Crown violated the antitrust laws of the United States in its obtaining of and/or its use of the ’780, ’705 and ’260 patents ? In order to adequately deal with these issues it is first necessary that the background and history of the patents and polystyrene foam cup art be covered. I. BACKGROUND AND HISTORY OF THE PATENTS AND POLYSTYRENE FOAM CUP ART Expandable polystyrene is a lightweight thermoplastic material impregnated with a “foaming” or “blowing” agent which is activated by heat. This material is marketed in the form of tiny beads (resembling sugar) and when heated the foaming or blowing agent causes the beads to expand uniformly in all directions to as much as thirty times their original size. Upon heating within a closed mold the beads expand and fuse together into a so-called “foam” in the shape of the mold. Such foams have the properties of toughness, high strength-to-weight ratio, low thermal conductivity and low water absorption. Hot drink cups, ice chests, buckets and Christmas decorations are just a few of the many items made of this material. Badische Anilin & Soda-Fabrik AG, a German company, originated expandable polystyrene in the early nineteen fifties and is the owner of a number of United States patents on its process of manufacture and on the production of articles (foams) therefrom. (See Pit. Ex. No. 62). None of these patents, however, are the subject matter of this infringement suit. On March 1, 1954, the Koppers Co., Inc., made the first public announcement in the United States of “expandable polystyrene”. From that date until the spring of 1960 Koppers marketed an expandable polystyrene bead designated F-40 which had a relatively wide bead size distribution range, to wit: the beads varied in “average diameter from .5 to 3.0 millimeters.” (Def. Ex. No. V-4.) In the spring of 1960 Koppers came out with a special grade of high quality expandable polystyrene bead designated F-40-C which, unlike F-40, was of a standardized uniform bead size. Since then, F-40-C has been the type of bead material used by manufacturers of foam cups. From 1954 until the early nineteen sixties, Mr. Edwin A. Edberg was in charge of Koppers’ expandable polystyrene bead market development program. In that capacity Mr. Edberg gave many talks before trade associations and wrote a number of articles about expandable polystyrene beads — their properties, applications and methods of making the “foams” therefrom. In an article appearing in the March 1955 issue of The Rubber and Plastics Age Mr. Edberg wrote that these beads “may be expanded in heated molds into a variety of shapes and sizes in just one operation.” Mr. Edberg gave three methods for heating and expanding the beads in the molds: “Direct introduction of dry steam into the mold cavity” or “steam heated molds” or “hot-air heated molds”. The latter two methods were recommended where the thickness of the molded article was to be less than one inch. For “thin-vertical” sections it was recommended that the beads be partially expanded (using dry heat such as infrared bulbs or strip heaters) outside of the mold prior to their being introduced in the mold. (Def. Ex. No. V-5.) In a paper presented at the Packaging Conference of the American Management Association at the Palmer House, Chicago, April 18-20, 1955, and later printed in No. 46 of Packaging Series, Mr. Edberg stated: “The molding operation consists of the following simple steps: 1. Charge a measured amount of expandable polystyrene to the mold to obtain the desired density. 2. Close the mold and apply heat (usually dry steam) until the beads are expanded. 3. Remove the source of heat and cool the mold. 4. Open the mold and remove foamed article.” (Def. Ex. No. V-4). Other articles by Edberg subsequently appeared in the January 1956 issue of Refrigerating Engineering (Def. Ex. No. V-3), the March 1957 issue of Refrigerating Engineering (Def. Ex. No. V-2) and the September 1957 issue of Modern Plastics Encyclopedia (Def. Ex. No. V-l) — all giving information on the means for molding “foams” from expandable polystyrene beads. During the early days (1955-56) of expandable polystyrene beads a number of people were engaged in the commercial production of various “foam” articles. About October 1955 William L. Parsons commercially produced foam hi-fi speaker enclosures from a molding machine of the type shown in Def. Ex. No. F-H; in January 1956 Robinson Industries placed in commercial production a molding machine of the type shown in Def. Ex. No. G-H for making foam enclosures for air conditioning units; around May 1956 Donald Stevens molded for commercial use foam minnow buckets on a molding^ machine of the type shown in Def. Ex. No. H-H; and in August 1956 La Della Plastics placed in commercial use apparatus shown in Def. Ex. No. I-H for molding foam float rings. The aforesaid four molding machines were all very simple slow-cycle, manually operated devices wherein a predetermined amount of beads were either dumped or blown (via an air stream) into a mold cavity through an inlet port, the port was then manually plugged and the mold heated. After cooling the mold was manually cracked and the foam article removed. The thickness of these various articles varied from %" to 1 inch. The time to manufacture them ranged from 4 to 7 minutes. In 1955 plaintiff Crown was in the business of making and selling plastic injection-molding machines and solid (as opposed to foam) plastic cups for the vending industry. These solid plastic cups had the disadvantage of high thermal conductivity, making them too hot to hold by the hand when containing a hot liquid. In 1955 Crown undertook a development program to develop an automatic molding machine which would produce a thin-walled (in the order of .060 inches wall thickness) hot drink cup from expandable polystyrene beads. Sometime during 1955 or 1956 Crown build its first foam cup machine. The evidence is in dispute as to the date of the first production of foam cups upon this machine. Based upon the development of this machine, James M. Harrison and Robert E. Smucker, employees of Crown and developers of this machine, filed U.S. Patent Office application serial No. 619,259 on October 30, 1956, for improvements in “Apparatus and Method for Making Plastic Containers”. On May 1, 1958, the Patent Office Examiner required Crown to make what is termed a “division” between the method claims and the apparatus claims in the application and prosecute the application on one or the other type of claims. Crown elected to prosecute application serial No. 619,259 on the method claims and to file a new application containing the apparatus claims. On December 22, 1964, U.S. Patent No. 3,162,705 issued on this application with one claim for “Method of Making Plastic Containers”. (See Pit. Ex. No. 15.) On April 19, 1962, Harrison and Smucker filed application serial No. 191,662 with the Patent Office. This application contained, with modifications, the non-elected apparatus claims of the application serial No. 619,259 filed on October 30, 1956. On March 24, 1964, this application matured into U.S. Patent No. 3,125,780 containing four claims. (See Pit. Ex. No. 11.) According to Crown, in order to successfully operate this first cup machine which it developed and upon which the ’705 and ’780 patents were based, it was necessary to screen the Koppers’ F-40 polystyrene beads and remove beads larger than a certain size. This resulted in as much bead material being thrown away per cup as was used for making a cup. Accordingly, this machine was discarded and never used to commercially manufacture foam cups. To solve the problem of the low grade material being supplied by Koppers during the fifties, Crown developed a second type of cup molding machine which solved this problem and went into commercial production on December 12, 1957. Based upon the development of this second machine, Harrison and Smucker filed on October 1, 1957, U.S. Patent Office application No. 687,394 for improvements in “Molding Mechanism and Heating Arrangement” which, on September 6, 1960, issued into U.S. Patent No. 2,951,260 containing thirteen claims. (See Pit. Ex. No. 7.) Crown manufactured 300 of these ’260 type machines and from December 12, 1957, until March 1960 all foam cups produced in the country were made on these machines by either Crown or its exclusive licensee Champion Papers, Inc., (hereinafter “Champion”). At approximately the time that Koppers introduced its high quality standardized expandable polystyrene bead F-40-C (March 1960) the first foam cups in competition with the Crown foam cups began to appear on the market. The first competitors were Bridges Plastic Products, Inc., of Los Angeles, California, and James A. Young of the San Francisco Bay Area. Bridges sold its first cups in March 1960 and Young in August 1960. Since then, numerous others, both licensed and unlicensed by Crown, have entered the foam cup manufacturing business. Late in 1959 Darrow and Stanley Thompson of Thompson Industries, Inc., (hereinafter “Thompson”) observed a Crown manufactured foam cup and decided that foam cups might be a product their company could make. Thompson then commenced to design a machine for manufacturing such cups and on November 10, 1960, Thompson produced its first commercial foam cups. Thereafter Thompson began the production and sale of its foam cup production machines (hereinafter referred to as the “Thompson Machine”) and in January, 1963, Thompson sold several of them to defendant Sutherland. In August, 1963, Sutherland commenced the manufacture of foam cups on the Thompson Machines in Santa Clara, California. On March 24, 1964, Crown commenced this suit against Sutherland. This is but one of many suits which Crown has commenced against purchasers and users of the Thompson Machines as well as against users of other types of machines (including Bridges and Young heretofore mentioned) and against Thompson Industries, Inc. Only this suit and the one against Thompson has been tried. On May 23, 1967, the United States District Court for the District of Arizona found that the ’260, ’780 and ’705 Crown patents were not infringed by the Thompson Machines and that Crown had not violated the antitrust laws in its obtaining of and/or use of the foregoing patents. See Crown Machine & Tool Co. v. D & S Industries, Inc., 270 F.Supp. 271. Due to the particular nature of the Arizona suit against Thompson the Court there held, prior to trial, that defendant Thompson could not raise the issue of patent invalidity. Ibid. 270 F. Supp. at p. 279. After the emergence of foam cup competition in 1960 the ’260 type molding machine was, according to correspondence between Crown and its exclusive licensee Champion, not able to meet the competition. (See Def. Ex. No. B-D). In September, 1961, Champion demanded and obtained a modification of its original license agreement which enabled it to buy molding machines from manufacturers other than Crown or to develop its own machines if Crown was unable to furnish machines of comparable or better efficiency than the competition’s. (See Def. Ex. No. F-D). Champion then designed and constructed its own cup molding machine which it placed in commercial production in the fall of 1962. (Def. Ex. No. G-D). In 1963 Champion relinquished its exclusive license and since then, Crown has itself manufactured cups and has licensed others to manufacture foam cups on its patented machines. Subsequent to 1963 Crown developed and manufactured a model P cup molding machine which Sutherland contends is a copy of the Thompson Machine. The ’260 type machine is no longer being manufactured or used by Crown. Finally, the growth of the foam cup industry is evidenced by the approximately one billion foam cups sold in 1963, the approximately 1.7 billion foam cups sold in 1964 and the September, 1963, formation of the Foam Cup Manufacturers Division of the Society of the Plastics Industries. II. THE 3,162,705 PATENT The ’705 patent (Pit. Ex. No. 15) relates to a method for making thin-walled containers from expandable plastic beads. The patent contains the following sole claim: “A method of forming a cup shaped article having a relatively thin wall section from light weight, low density, finely divided beads of a foamable plastic materia], such as polystyrene beads containing a foaming agent, such as butane or the like, including the steps of defining a cup shaped molding cavity with a thin wall section, supplying the relatively light weight, finely divided beads freely and on a demand fill basis to the bottom of the cup, applying an air pressure differential, through the full 360 degree circumferential extent of the cup cavity, and in a direction from the bottom of the cup to the top so that the beads will be accelerated into thé cavity and will move into the most remote portions of the cup cavity from the point of initial supply, closing the point of initial supply of the cup cavity, and thereafter heating the beads in the cavity to their full foaming temperature to thereby cause the beads to individually unite, one with the other, and to glaze the outer surface of the thus formed article due to the internal pressure developed in the expanding beads.” Figures 1 and 2 of the ’705 patent are shown in Appendices I and II, attached to this Memorandum. The claim of the ’705 patent first calls for the step of “defining a cup shaped molding cavity with a thin wall section”. As shown in Appendix II and described in the specification, this cup shaped molding cavity 70 is defined by the core element 40 and the cavity element 38. The claim next calls for “supplying the relatively light weight, finely divided beads freely and on a demand fill basis to the bottom of the cup.” As provided in Appendices I and II, and disclosed in the specification, a hopper 22 containing the beads is connected through the central passage 28 and inlet opening 52 to the bottom of the cup cavity. The plunger 32 opens and closes the inlet opening 52. When the plunger 32 is in the raised position beads flow into the mold cavity 70. The specification provides no definition of the words “demand fill basis” or meaning thereof, although it does state that “during loading, prefoamed beads are supplied until the mold cavity is substantially filled.” (Pit. Ex. No. 15, col. 5, 11. 35-37.) The claim next calls for “applying an air pressure differential, through the full 360 degree circumferential extent of the cup cavity, and in a direction from the bottom of the cup to the top so that the beads will be accelerated into the cavity and will move into the most remote portions of the cup cavity from the point of initial supply.” The specification and drawings denote only one embodiment for accomplishing this: A vacumrn' 76 (Appendix I) is connected to the bead source 28 for sucking the beads into the mold cavity 70 via the connections 77 and 75, chamber Y (Appendix II), porous core element 40, mold cavity 70 and inlet opening 52. The specification suggests two other general means for loading the cavity but no structure is given in the drawings. The specification suggests applying a vacuum to the stripper ring 68 (Appendix II) or applying a positive pressure to the inlet opening 52 and blowing the beads into the mold cavity. Further, no definition or meaning of the words “through the full 360 degree circumferential extent of the cup cavity” is given in the specification. The claim next calls for “closing the point of initial supply of the cup cavity”. As shown in Appendices I and II and described in the specification, this is accomplished by the lowering of plunger 32 into the inlet opening 52. The claim finally calls for “heating the beads in the cavity to their full foaming temperature to thereby cause the beads to individually unite, one with the other, and to glaze the outer surface of the thus formed article due to the internal pressure developed in the expanding beads.” According to the specification and drawings this is accomplished by hot air or steam from source 74 (Appendix I) being drawn by vacuum 76 through connections 73 and 72 into chamber X (Appendix II), through the porous cavity element 38 into the mold cavity 70 (containing the beads), thence through the porous core element 40 into chamber Y and through connections 75 and 77 (Appendix I) to heat exchanger 86. The specification suggests another method of heating the beads but no corresponding structure is given in the drawings, to-wit: disposing a dielectric assembly around the cavity element 38 to instantaneously heat the beads in the mold cavity 70. B. Prosecution History in the Patent Office Referring now to the file wrapper (Pit. Ex. No. 44) of the ’705 patent it discloses that the initial application filed on October 30, 1956, contained 18 claims, of which ten were method claims and eight apparatus claims. The broadest method claim in this initial application was claim No. 1 and it claimed the process of forming an article from finely divided foamable plastic material by (1) prefoaming the raw beads by heating them, (2) pressing the prefoamed beads so that all of the prefoamed beads will be no larger than a predetermined size, (3) supplying a predetermined quantity of the pressed, prefoamed beads to a mold, (4) heating the beads and (5) removing the finished' article from the mold. (Pit. Ex. No. 44, p. 12.) In the first action by the Patent Office all the claims were rejected. The method claims were rejected as unpatentable because nine of the claims (Nos. 1-7, 9, 10) were met by the British patent in view of the Wiss, et al., patent and the O’Neill patent. The other method claim (No. 8) was rejected for being obvious in view of the cited references. In response to the above action of the Patent Office, Harrison and Smucker filed an amendment on October 17, 1957, cancelling seven of the method claims (Nos. 2-5, 7, 9, 10), amending the other three (Nos. 1, 6, 8) and adding a new method claim (No. 19). All the amended method claims except No. 1, now contained the additional limitation of supplying a predetermined quantity of the pressed, prefoamed beads into the mold by “applying a vacuum”. In the accompanying remarks applicants conceded that prefoaming was old but that “In none of the references of record do we find any mention of loading a thin walled, somewhat elongated type cavity by drawing prefoamed beads into the cavity with a vacuum. Nor do we find any mention of preliminarily sizing the prefoamed beads by rolling, pressing or otherwise, so they will not stick or jam in the thin space in the cavity”. (Pit. Ex. No. 44, p. 29.) In this same response the following language in the specification was can-celled: “While we have stated that loading the cavity is done by vacuum, it might be more accurate to say that loading is done by the creation of a pressure differential. For example, we might apply a positive pressure to the inlet or gate opening and blow the prefoamed beads into the mold.” Accordingly, at this stage of the prosecution, applicants urged that the patentability of their invention rested on the features: (1) vacuum means of loading the beads into the mold cavity and (2) preliminary sizing of the prefoamed beads so that beads larger than a predetermined size are not used in the molding process. In the second action taken by the Patent Office, dated May 1, 1958, the Examiner required applicants to make the heretofore mentioned “division” between the method claims and the apparatus claims so as to restrict the application to one or the other type of claims. On September 8, 1958, applicants filed their election to prosecute the application on the method claims. In the third action taken by the Patent Office, dated January 30, 1959, all claims were rejected as indefinite and application claims 1, 6 and 8 were rejected as unpatentable over the Koppers booklet in view of Glaxner, et al., and Jeffery patents. In this regard the Examiner stated: “The Koppers booklet shows pre-expanding polystyrene beads, placing said pre-expanded beads in a mold cavity, and heating said bead filled cavity to expand and unite said beads into the desired final product. There appears to be no invention in compressing the pre-expanded beads to reduce their volume for insertion into a mold cavity with closely spaced walls in view of Glaxner et al who shows in column 1, lines 36-44, that compression may be used for reduction of the volume of pellets. In addition there appears to be no invention in using a vacuum to draw said beads into the mold cavity in view of Jeffery who shows on page 2, column 2, lines 46-75, the use of a vacuum for filling a mold with granular material.” (Pit. Ex. No. 44, p. 36.) In reply, applicants filed an amendment, dated July 28, 1959, wherein they cancelled all the foregoing claims (Nos. 1, 6, 8, 19) and in their place submitted two new claims (Nos. 27, 28). Neither of the two new claims mentioned any particular method of supplying the beads to the mold cavity (e. g., applying a vacuum). Applicants in their remarks emphasized the problem of preliminary sizing of the prefoamed headings and that this problem “is totally foreign to the Koppers Booklet.” (Pit. Ex. No. 44, p. 39.) No mention was made in the remarks of the previously mentioned problem of loading the cavity with a vacuum or the Examiner’s previous citation of the Jeffery patent as teaching the use of a vacuum to fill a mold cavity to be old. Thus, at this stage of the prosecution applicants relied entirely upon the preliminary sizing of the prefoamed beads as their exclusive patentable difference over the prior art. In the fourth action by the Patent Office, dated February 15, 1960, the Examiner rejected the two new claims (Nos. 27, 28) “as unpatentable over the Koppers booklet in view of common practice shown by either Ratner or Gates, et al. To merely reduce the size of the prefoamed pellets in order that they may be enterable into the given mold cavity, if prefoaming resulted in the pellets being oversize, would not amount to invention in view of the secondary references since no new and unobvious results have been show (sic).” (Pit. Ex. No. 44, p. 40). The Examiner also informed applicants that final action on their application would be taken in the next Patent Office action. In response thereto, Harrison and Smucker on July 20, 1960, requested the Examiner to reconsider his rejection of claims 27 and 28 on the ground that “the Examiner has not found art showing or suggesting or otherwise anticipating the idea of preliminarily sizing prefoamed beads before they are supplied to a molding cavity having thin walls.” (Pit. Ex. No. 44, p. 44.) Thus, after four Patent Office actions and faced with a final action by the Examiner, applicants rested the patentability of their device exclusively on the step of preliminarily sizing the prefoamed beads. However, six months later, but prior to any action by the Patent Office, Harrison and Smucker filed on January 3, 1961, a supplementary amendment cancelling claims 28 and 29 and adding two new claims in their stead (Nos. 29, 30). Both of these new claims lacked any mention of the recently emphasized step of sizing the prefoamed beads. Rather, they emphasized the method of supplying the beads to the mold cavity, to-wit: “applying an air pressure differential to the cup cavity in a direction from the up bottom to the down upper lip of the cup cavity so that the beads will be accelerated down into the cup cavity and packed into the thin wall section” (No. 29) and “applying the air pressure differential to and through the full 360° circumferential extent of the down upper lip of the cup cavity to insure that the most remote portions of the cup cavity from the point of initial supply will be filled with beads.” (No. 30.) (Pit. Ex. No. 44, pp. 45-46.) No amendment was made to the specification explaining the meaning of this new claim language quoted above. In their accompanying remarks applicants argued that the patentability of their process now lay in the “idea of disposing a cup shaped cavity upsidedown, and then supplying finely divided, lightweight beads to the up bottom and insuring filling of the most remote portions of the cavity — meaning the down upper lip — by the use of an air pressure differential.” (Pit. Ex. No. 44, p. 47.) In the fifth action by the Patent Office, dated February 3, 1961, the Examiner rejected claims 29 and 30 as unpatentable over the Koppers booklet in view of the Jeffery patent, stating: “Jeffery shows introducing a lightweight granular material into a mold cavity by a pressure differential. There appears to be no invention in introducing the preexpanded beads of the Koppers booklet into the mold cavity by using a pressure differential in view of Jeffery.” (Pit. Ex. No. 44, p. 49.) The Examiner made the rejection final. After a personal interview with the Examiner, applicants filed on April 12, 1961, an amendment cancelling claims 29 and 30 and submitting claim 31 which, in essence, combined the two claims. Applicants stated that this amendment was for the purpose of placing the application in better condition for appeal if allowance of the claim was not granted. Claim 31 was rejected on April 18, 1961, by the Examiner but entered for purpose of taking an appeal. On August 4, 1961, applicants filed a notice of appeal. On appeal, applicants again stressed the method used to load the molding cavity arguing that Jeffery does not teach the step of “applying an air pressure differential, through the full 360° circumferential extent of the cup cavity, and in a direction from the top of the cup to the bottom so that the beads will be accelerated into the cavity and will move into the most remote portions of the cup cavity from the point of initial supply.” (Pit. Ex. No. 44, p. 64.) On October 31, 1963, the Board of Appeals affirmed the decision of the Examiner stating, “The feature upon which patentability is predicated is the application of suction to draw the material into the mold cavity as specified in the claim”; that Jeffery discloses the application of a vacuum “through an annular passage which extends through the full 360° circumferential extent of his mold cavity” to draw material into the mold cavity; and “that the place of application of the vacuum would depend upon the shape of the cavity and would be obvious.” (Pit. Ex. No. 44, p. 74.) On November 21, 1963, applicants filed a Petition for Reconsideration, upon the ground that the Board misinterpreted the Jeffery patent in that Jeffery uses a quick vacuum to move a moist material while applicants use “air pressure differential to set up an airstream to a thin wall molding cavity with the airstream being the medium for moving light, foam, polystyrene beads into the furthest recesses of a thin wall cavity — something Jeffery clearly did not contemplate.” (Pit. Ex. No. 44, p. 79.) On August 4, 1964, the Board of Appeals reversed itself, stating: “The petition presents a cogent argument as to the character of the material treated in the Jeffery patent. Taking into account the specific material treated by Jeffery, i. e., a relatively moist powdered material, and considering appellants’ purpose and specific mode of utilization of vacuum (air pressure differential), ‘through the full 360 degree circumferential extent of the cup cavity, and in a direction from the top of the cup [mold cavity] to the bottom * * *,’ we believe that we should depart from our decision and reverse the rejection of the appealed claim.” (Pit. Ex. No. 44, pp. 80-81.) Thereafter, on August 21, 1964, certain amendments to the specifications and claim 31 were submitted to the Examiner by applicants and allowed as “editorial amendments” in accordance with Rule 312 of the Patent Office. One so-called editorial amendment was the re-insertion of two sentences (“While we have stated that loading the cavity is done by vacuum, it might be more accurate to say that loading is done by the creation of a pressure differential. For example, we might apply a positive pressure to the inlet or gate opening and blow the prefoamed beads into the mold”) in the specification which applicants had deleted from their original application in their first response of October 17,1957. Claim 31 is now the sole claim of the ’705 patent and its validity and infringement are two of the issues in this action. C. Prior Art Only two of the many prior art references cited by the Patent Office Exam-iner in the prosecution of the ’705 patent need to be considered herein; Koppers Booklet, “Dylite-Expandable-Polystyrene” (1954) (Def. Ex. Nos. 1-18 and Jeffery U. S. Patent Re. 20,460 (1937) (Def. Ex. No. I). The Koppers Booklet shows the process of making articles from lightweight low density, finely divided beads of a foamable plastic material containing a foaming agent by (1) supplying the relatively lightweight, finely divided beads freely to a mold cavity, (2) heating the beads to expand and fuse them together into a porous mass of the shape of the mold cavity, (3) cooling the mold and foamed article and (4) removing the artyrene” (1954 (Def. Ex. Nos. 1-18 and p. 19.) In Jeffery a vacuum is used to draw a uniform fine dust with approximately 10% moisture into a molding cavity. Jeffery states that one of the purposes of this vacuum is to evacuate the cavity so that “the powder is moved into the cavity quickly, uniformly and in a more dense condition than would result from merely pouring the powder into the container.” (Def. Ex. I, p. 6, 11. 51-53.) Thereafter, the mold in Jeffery is closed and a higher vacuum is applied to “remove the air and gasses from the powder, so that the compressed blank will have the entrapped gas therein eliminated as far as possible.” In addition to the foregoing, defendant cites and places great emphasis upon the alleged prior uses of Parsons who manufactured foam hi-fi speaker enclosures, Robinson Industries which made foam enclosures for air conditioning units, Stevens who made foam minnow buckets and La Della Plastics which manufactured foam float rings. However, as heretofore mentioned these devices were slow-eycle, manually operated, molding machines whose molded articles were quite thick. In the opinion of the Court these prior public uses are not closely in point on the question of patent validity. D. Patent Validity The 1952 Patent Act sets forth three conditions of patentability: Utility (35 U.S.C. § 101), Novelty (35 U.S.C. § 102) and Nonobviousness (35 U.S.C. § 103). We assume that the prior art does not disclose the process claimed in plaintiff’s ’705 patent and concern ourselves directly with the question of whether the '705 claim meets the test of nonobviousness, to-wit: “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.” 66 Stat. 798 (1952), 35 U.S.C. § 103 (1964). In applying this test, the Court in the recent case of Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 694, 15 L.Ed.2d 545 (1966) said: “Under § 103, the scope and content of the prior art are to be determined; differences between the prior art and the claims at issue are to be ascertained ; and the level of ordinary skill in the pertinent art resolved. Against this background, the obviousness or nonobviousness of the subject matter is determined. Such secondary considerations as commercial success, long felt but unsolved needs, failure of others, etc., might be utilized to give light to the circumstances surrounding the origin of the subject matter sought to be patented. As indicia of obviousness or nonobviousness, these inquiries may have relevancy.” Regarding the claims at issue the Court in John Deere admonished, at page 33, 86 S.Ct. at page 702, that: “* * * an invention is construed not only in the light of the claims, but also with reference to the file wrapper or prosecution history in the Patent Office. * * * Claims as allowed must be read and interpreted with reference to rejected ones and to the state of the prior art; and claims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent.” Turning to the sole claim of the ’705 patent we have seen from its file wrapper history that from the time the Examiner first cited the Jeffery patent in the Patent Office action of January 30, 1959, until January 3, 1961, Harrison and Smucker did not urge the step of loading the mold cavity by applying an air pressure differential, but, instead, relied entirely upon the step of preliminarily sizing the prefoamed beads as the exclusive patentable difference in their method or process over the prior art. Apparently, at this time, the applicants agreed with the Examiner that there was “no invention in using a vacuum to draw said beads into the mold cavity in view of Jeffery.” (Pit. Ex. No. 44, p. 36). In addition, applicant’s position at this time would be consistent with the commercial realities of the foam cup business, wherein, according to Crown, their main problem in making commercial use of the machine first developed (disclosed in the ’705 and ’780 patents) was the sizing of the beads from low quality material being supplied by Koppers. After Koppers introduced its high quality F-40-C bead, there was no sizing problem, and everybody then got into the foam cup business. Thus, it is crystal clear that when Crown abandoned the foregoing line of argument on January 3, 1961, and thereafter concentrated on the step of supplying beads by an air pressure differential, it was a result of Koppers’ introduction of the F-40-C bead which eliminated the problem of sizing. Turning to the step upon which the Board of Appeals allowed the claim, we have seen from the file wrapper history that initially the Board affirmed the decision of the Examiner finding that “the application of suction to draw the material into the mold cavity” was taught by Jeffery and that the “place of application of the vacuum would depend upon the shape of the cavity and would be obvious.” (Pit. Ex. No. 44, p. 74). The Board reversed itself based upon the specific material treated by Jeffery (a relatively moist powdered material) vis-a-vis plaintiff’s dry, lightweight particles and the purpose and specific mode of utilization of vacuum (air pressure differential) by plaintiff. This Court is at a loss to explain the Board’s allowance on the basis of the above distinction. Whether a vacuum is used to move a fine dust with approximately 10% moisture into a mold cavity or used to move dry lightweight particles into a mold cavity is a distinction without a difference. Vacuums are used for moving many different types of materials and a mere change of usage is not the sort of non-obvious difference upon which a patent may be obtained. The Board, however, also reversed itself upon the specific mode of utilization of vacuum by Harrison and Smucker’s ’705 claim vis-a-vis Jeffery. Previously the Board had held in affirming the Examiner that the application of the vacuum “would depend upon the shape of the cavity and would be obvious.” The language of the claim on this point, “applying an air pressure differential, through the full 360° circumferential extent of the cup cavity, and in a direction from the bottom of the cup to the top so that the beads will be accelerated into the cavity” was (as to the italicized portion) added for the first time on January 3, 1961, without any amendment to the specification in aid of explanation. What this language means in terms of a specific mode of utilization of air pressure differential to fill the mold cavity is unclear. The Board of Appeals in allowing this language did not specify what this unique mode of applying air pressure differential was, but merely quoted the language of the claim. Plaintiff claims this language covers blowing the beads into the mold cavity or sucking them in by drawing a vacuum either through the stripper ring 68 (Appendix II) or through the porous walls and top of the core element 40. In effect, plaintiff seeks to use this unclear language to cover any and all means whereby an air pressure differential transfers the polystyrene beads to all portions of its cup shaped cavity. (See plaintiff’s proposed finding No. 50). This plaintiff cannot do. Jeffery shows loading a cavity by means of a vacuum to be old. Nor can this claim be restricted to any particular embodiment disclosed in the specification of applying air pressure differential. The specific embodiment in the specification providing (without corresponding structure in the drawings) that the mold cavity be loaded by applying a positive pressure at the inlet to the mold cavity and blowing the beads therein is obvious in light of all the other steps of the process claimed (which are met by the Koppers booklet.) The embodiments of applying a vacuum through the stripper ring 68 or through the porous core element 40 are obvious means (in view of Jeffery) of vacuum loading plaintiff’s particular mold cavity. The drawing of the vacuum through the stripper ring 68 would be obvious to one skilled in the art since it is the area furthest from the point of initial supply of beads (inlet opening 52) and, therefore, the most logical place for insuring that the mold cavity be completely filled. The pulling of the vacuum through the porous walls of the core element 40 would also be obvious to a person having ordinary skill in the art since the beads are supposed to completely surround said element and be molded thereon. Naturally, the application of vacuum to all portions of the core element would accomplish this. The fact that all portions and recesses of plaintiff’s thin-walled mold cavity can be successfully loaded by a vacuum (applied through either the stripper ring 68 or the core element 40 or by merely blowing the beads in at the inlet opening 52) clearly shows that there is no special problem associated with supplying plaintiff’s thin-walled mold cavity with beads as they so strenuously urged during the latter period of the prosecution of their ’705 application. In support of patentability plaintiff Crown cites the failure of others to produce a thin-walled foam cup during the fifties, the commercial success of its foam cup and the fact that it and its exclusive licensee Champion were the sole commercial producers of foam cups from December 1957 until March 1960. However, Crown’s commercial success was not due to the foam cup machine disclosed in the ’705 and ’780 patents, but rather to the development of the ’260 type machine which solved the problem, according to Crown, of the low grade polystyrene bead material being supplied by Koppers during the fifties. The foam cup machine disclosed in the ’705 and ’780 patents was discarded and never used commercially. The fact that after Koppers solved its materials problem everyone jumped into the foam cup manufacturing business would tend to refute the patentability of the process claim of the ’705 patent since the problem was one of sizing the beads prior to Koppers’ introduction of the F-40-C beads, not of the application of any air pressure differential to load the mold cavity (which was the sole feature upon which patentability of the ’705 claim was predicated and allowed by the Board of Appeals). Except for the step of applying an air pressure differential, the Koppers booklet (Def. Ex. No. I) teaches all the other steps of the ’705 method claim. Plaintiff, however, claims that these other steps of its ’705 claim are not met by the teachings of the Koppers booklet. (See plaintiff’s Ex. No. 51-A). This plaintiff cannot now do. “[Cjlaims that have been narrowed in order to obtain the issuance of a patent by distinguishing the prior art cannot be sustained to cover that which was previously by limitation eliminated from the patent.” Graham v. John Deere Co., supra at 33, 86 S.Ct. at 702. And, as we have seen from the file wrapper history of the ’705 patent the sole feature of patentability upon which the claim, was allowed by the Board of Appeals was the application of the air pressure differential. In view of the foregoing it is the conclusion of this Court that the sole claim of the ’705 patent is invalid upon the ground that it fails to meet the test of nonobviousness as specified in 35 U.S.C. § 103. III. The 3,125,780 PATENT A. Description The ’780 patent (Pit. Ex. No. 11) relates to an apparatus for making foamed cups from a plastic material containing a foaming or blowing agent. While the patent contains four claims, only claims 1 and 3 are at issue in this action. Claim 1 provides: “In a molding mechanism for forming plastic articles, such as drinking cups and the like, from foamable plastic material, a base, a frame supported on the base, mold parts thereon defining a cup-shaped molding cavity including a cavity element and a core element, a source of supply on the frame adapted to supply foamable plastic material to the cavity, a supply passage between the source of supply and the cavity communicating with the cavity generally in the center of the small end of the cup as defined by the cavity, a valve for controlling the supply passage including a movable plunger generally aligned with the axis of the cavity and having a diameter less than the diameter of the bottom of the cup, the plunger being movable between a withdrawn position to allow foamable material to flow through the supply passage into the cavity and an extended position in which the plunger closes the supply passage and the face of the plunger completes the bottom of the cup as defined by the cavity, means for creating an air pressure differential through the cavity to convey the beads from the supply passage to the top edge of the cup as defined by the cavity, including means for applying a positive air pressure to the supply passage for blowing the prefoamed beads into the molding cavity, and means for heating the cavity to foam and unite the foamable material into a finished article.” Claim 3 provides: “The structure of claim 1 further characterized in that the cavity and core elements that make up the molding cavity are impervious so that the air stream caused by the means for creating an air pressure differential flows through the cavity between and generally parallel to the opposed faces of the elements.” Figures 1 and 2 of the ’780 patent are reproduced in Appendices III and IV, attached to this Memorandum. These drawings are almost identical with the drawings of the ’705 patent except for two additions: the ’705 patent drawings (Appendices I and II) do not contain the air pipe 94 seen in Appendices III and IV, nor the vacuum 88 connected to stripper ring 68 seen in Appendix IV. Claim 1 of the ’780 patent calls for a “base” and “a frame supported on the base.” As described in the specification the base is denoted with the number 12 (Appendix III) and. the frame with number 10. Claim 1 next calls for “mold parts thereon defining a cup shaped molding cavity including a cavity element and a core element.” As shown in Appendix IV and described in the specification the mold cavity 70 is defined by the cavity element 38 and the core element 40. Claim 1 next calls for “a source of supply on the frame adapted to supply foamable plastic material to the cavity.” As described in the specification this source of supply is hopper 22 (Appendix III). Claim 1 also calls for “a supply passage between the source of supply and the cavity communicating with the cavity generally in the center of the small end of the cup as defined by the cavity.” As seen in Appendix IV and described by the specification, the supply passage 28 connects the source of supply 22 with the mold cavity 70 at a point (inlet opening 52) just above the center of the top surface of the core element 40 (i.e., center of the small end of the cup as defined by the cavity 70). The claim next calls for “a valve for controlling the supply passage including a movable plunger generally aligned with the axis of the cavity and having a diameter less than the diameter of the bottom of the cup, the plunger being movable between a withdrawn position to allow foamable material to flow through the supply passage into the cavity and an extended position in which the plunger closes the supply passage and the face of the plunger completes the bottom of. the cup as defined by the cavity.” The specification describes this valve as plunger 32 which is raised and lowered by air cylinder 30. When plunger 32 is raised (the withdrawn position) prefoamed beads flow through inlet opening 52 into the cavity and after a predetermined time the supply passage 28 is closed by the lowering of the plunger 32 into inlet opening 52. It is noted in Appendix IV that in the lowered position the plunger 32 completes the top of the cavity element 38 (i.e., the bottom of the cup as defined by the cavity). Claim 1 next calls for “means for creating an air pressure differential through the cavity to convey the beads from the supply passage to the top edge of the cup as defined by the cavity, including means for applying a positive air pressure to the supply passage for blowing the prefoamed beads into the molding cavity.” The specification and drawings provide three different embodiments for creating an air pressure differential to convey the beads from the supply passage 28 to the mold cavity 70, to-wit: (1) A vacuum 76 (Appendix III) is connected to the bead source via the connection 77 and 75, chamber Y (Appendix IV), porous core element 40, mold cavity 70, and inlet opening 52; (2) The cavity element 38 and core element 40 are impervious and the vacuum 88 (Appendix IV) is connected to the supply passage 28 via the passage 90, channel 92, porous stripper ring 68, mold cavity 70 and inlet opening 52; and (3) a positive air pressure blows the beads into the mold cavity 70 by means of the air pipe 94 which directs a jet of air at the inlet opening 52. Finally, claim 1 calls for “means for heating the cavity to foam and unite the foamable material into a finished, article.” The specification describes two embodiments for accomplishing the hearing: (1) Hot air or steam is drawn from source 74 (Appendix III) by vacuum 76 through connections 73 and 72 into chamber X (Appendix IV), thence through the porous cavity element 38 into the mold cavity 70, thence through the porous core element 38 into chamber Y and thence through connections 75 and 77 to heat exchanger 86 (Appendix III) and (2) disposing a dielectric assembly around the cavity element 38 to instantaneously heat the prefoamed beads in the mold cavity 70. No structure is given in the drawings for accomplishing this latter method of heating. Claim 3 is dependent upon claim 1 and calls for the additional'limitation, “that the cavity and core elements that make up the molding cavity are impervious so that the air stream caused by the means for creating an air pressure differential flows through the cavity between and generally parallel to the opposed faces of the elements.” This claim merely limits the embodiments for creating an air pressure differential, heretofore discussed, so that the embodiment wherein a vacuum is applied to the porous core element is excluded. B. Prosecution History in the Patent Office As previously noted, this application serial No. 191,662, filed on April 19, 1962, is a division of application serial No. 619,259, filed on October 30, 1956. In reviewing the file wrapper history of the ’780 patent (Pit. Ex. No. 43) it will first be necessary to examine the file wrapper of the ’705 patent (Pit. Ex. No. 44) from the time of filing until the Examiner required a “division” on May 1, 1958. Referring again to the file wrapper of the ’705 patent (Pit. Ex. No. 44) it appears that the initial application filed on October 30, 1956, contained not only ten method claims (heretofore discussed), but also eight apparatus claims (Nos. 11-18). In the broadest apparatus claim filed (No. 11) and the one upon which all other apparatus claims were dependent there was provided as one element thereof “means for applying a pressure differential to the cavity to convey beads into the cavity from the hopper.” (Pit. Ex. No. 44, p. 14). In the first action by the Patent Office, dated May 3, 1957, apparatus claims 11, 12-14, 16, 17 were rejected as unpatentable over Wiss, et. al., in view of the O’Neill, Wiley, Gard and Mollers patents. (Pit. Ex. No. 44, pp. 19-20.) In response thereto, Harrison and Smucker filed an amendment on October 17, 1957, wherein the heretofore mentioned element of the broadest apparatus claim (No. 11) was narrowed to read, “means for applying a vacuum to the cavity to convey beads into the cavity from the hopper.” (Pit. Ex. No. 44, p. 26.) All but two of the other apparatus claims were cancelled and a new apparatus claim was added (No. 20). All apparatus claims now contained the limitation of loading the cavity by means of a “vacuum”. In this same response, applicants deleted from the specification the sole mention of loading the cavity by applying a positive pressure and blowing the prefoamed beads into the mold. In their accompanying remark's applicants stressed the problem of filling a thin-walled cavity with prefoamed beads and that they had solved this problem “by loading the cavity with vacuum.” (Pit. No. 44, p. 28.) Thus, at this stage of the prosecution, it is evident from the fact that all apparatus claims contained only the vacuum means of loading the mold cavity and, in addition, the deletion from the specification of the sole mention of using positive pressure to fill the mold cavity, that applicants either had not tried using a positive pressure to load their mold cavity or had been unsuccessful in using such a means to load their cavity. In the next action by the Patent Office a division was required and, as previously mentioned, applicants elected to prosecute the serial No. 619,259 application upon the method claims. It was not until three and one-half years later, on April 19, 1962, that Harrison and Smucker filed a new application (serial No. 191662) containing, with modifications, the non-elected apparatus claims. Referring to the file wapper of said application (Pit. Ex. No. 43) it is seen from the two apparatus claims submitted therein that one of the claims (No. 3) did not include the element of means for conveying beads into the cavity, and the other claim (No. 4) included as an element “means for applying an air pressure differential through the cavity to load the cavity with foamable material, the air being exhausted through the pores of the stripper ring so that the foamable material flows from the small end of the cavity toward the stripper ring at the large end.” (Pit. Ex. No. 43, pp. 14-15.) The specification of the application mentioned vacuum as the only means of loading the beads into the mold cavity. However, before any action was taken by the Patent Office, applicants filed a preliminary amendment on January 14, 1963, inserting the identical language in the specification that they had deleted from the ’705 patent application on October 17, 1957, to wit: the application of a positive pressure to the inlet or gate opening and blowing the beads into the mold cavity. In addition, they submitted a new claim (No. 5) dependent on claim No. 3 and containing the additional element of “means for creating an air pressure differential through the cavity to convey the beads from the supply passage to the top edge of the cup as defined by the cavity, including means for applying a positive air pressure to the supply passage for blowing the prefoamed beads into the mold.” (Pit. Ex. No. 43, pp. 20-21.) Thus, for the first time applicants specifically claimed a positive air pressure means for loading the mold cavity and inserted in the specification the positive air pressure language that had been deleted from the parent application over five years prior thereto. In the Patent Office action that followed on May 10, 1963, claim No. 3 was rejected as “unpatentable over Kelly who shows the basic structure claimed. See Figure 1. Remaining differences, if any, would appear to be but mere matters of design.” (Pit. Ex. No. 43, p. 24.) Claims 4 and 5 were allowed. In addition, applicants were required to illustrate in their patent drawings every feature specified in their claims. Allowed claim 4 differed from rejected claim No. 3 in only one significant respect: it had the additional element of loading the mold cavity with beads by means of an air pressure differential applied through the pores of the stripper ring. Allowed claim 5 was dependent upon rejected claim 3 and contained the additional element, heretofore quoted, of means for creating an air pressure differential and specifically including therein positive air pressure means. Thus, the allowance of claims 4 and 5 over claim 3 indicates that the feature upon which patentability was found by the Examiner was the means of applying an air pressure differential to convey the beads from the source to the mold cavity. In this regard, however, the Examiner did not cite or make mention of the Jeffery patent, although that patent was cited in the ’705 and '260 prosecutions as teaching the use of a vacuum to fill a mold cavity. On June 10, 1963, applicants filed a response wherein they amended their drawings and specification to provide for the addition of an air pipe 94 and vacuum pump 88 connected to stripper ring 68 (Appendix IV). On October 1, 1963, the Patent Office mailed applicants a “Notice of Allowance” granting them a patent with the aforesaid two claims. On November 26, 1963, applicants filed a Rule 312 amendment requesting certain changes to the specifications and claims, and, in addition, submitting a new claim (No. 6), which changes and additions, applicants urged were merely “editorial” and did not require any additional search on the part of the Examiner. (Pit. Ex. No. 43, pp. 45-48.) The Patent Office by action dated December 16, 1963, refused to enter and allow these amendments. After a personal interview with the Examiner, applicants submitted another amendment consisting of two new claims (Nos. 6, 7). These two new claims were allowed by the Patent Office without comment and the ’708 patent thereafter issued with four claims. C. The Prior Art The Kelly U. S. Patent (No. 2,773,284) and the Koppers booklet “dylite-expandable-polystyrene” (Def. Ex. No. H-3, H-8), both cited by the Patent Office Examiner during the prosecution of the '780 patent and the Jeffery U. S. Patent Re. No. 20,460 (Def. Ex. No. G-1) are all that need he considered herein on the question of patent validity. As pointed out by the Examiner, Kelly “shows the basic structure claimed” in plaintiff’s rejected claim 3, to-wit: (1) a cup-shaped molding cavity 11 including a cavity element 12 and a core element 10, (2) a supply passage 16, 15, 18 and 19 between a source of supply (not shown in the drawings, but suggested in column 2, lines 46-48) and the cavity 11 communicating with the cavity generally in the center of the small end of the Kelly article as defined by the cavity 11, and (3) a valve for controlling the supply passage 19 including a movable plunger 24 generally aligned with the axis of the cavity and having a diameter less than the diameter of the small end of Kelly’s article, the plunger 24 being movable between a withdrawn position to allow the plastic material to flow through the supply passage into the cavity and an extended position in which the plunger 24 closes the supply passage and the face of the plunger completes the bottom or small end of Kelly’s article as defined by cavity 11. The only important element lacking from Kelly and claimed in rejected claim 3 is the means for heating the mold cavity. Kelly has no means of heating the mold cavity since the plastic material introduced into its mold cavity is in a hot molton state. The Koppers booklet suggests two means of heating the beads in a mold cavity: Direct introduction of steam into the mold cavity or indirect heating of the mold cavity. With respect to the former means of heating the mold cavity, the booklet suggests that “Drilled cavity molds permit the rapid molding of detailed parts using automatically controlled equipment.” (Def. Ex. No. H-18, p. 19.) The other reference, Jeffery, has been previously discussed in connection with the ’705 patent. D. Patent Validity The same reasons for holding the sole method claim of the ’705 patent invalid for lack of nonobviousness are applicable to claims 1 and 3 of the ’780 patent. The Kelly patent and the Koppers booklet teach all the elements of patent claim 1 except the application of an air pressure differential through the cavity to convey the beads from the supply passage to the mold cavity. Jeffery teaches the application of a vacuum (air pressure differential) to fill a cavity with a fine powder “quickly, uniformly and in a more dense condition.” This Court has previously determined in holding the ’705 method claim invalid for lack of nonobviousness that the step of applying an air pressure differential to load a mold cavity is obvious in view of Jeffery and, in addition, that the specific embodiments of using a positive pressure to blow the beads into the mold cavity, and using a vacuum either at the porous core element 40 or at the stripper ring 68 to suck the beads into the cavity are also obvious. That reasoning is fully applicable to claim 1 of the ’780 patent. In the prosecution of the ’780 patent application, the Examiner did not cite the Jeffery patent. In view of the fact that application claim 3, which the Examiner rejected, and application claims 4 and 5, which he allowed, differed in only the respect that the latter two claims c