Hartford-Empire Co. v. Obear-Nester Glass Co. (71 F.2d 539, 1934)

STONE, Circuit Judge.

This is an action for infringement of certain claims of four patents having to do with the feeding of molten glass to molds in which hollow ware, such as bottles and jars, is blown. The patents and claims involved are as follows: Claims 1, 2, 3, and 4 of Peiler, No. 1,405,936, issued February 7, 3922; claims 2, 4, 14, 21, 24, 25, 26, 27, 31, 33, and 36 of Peiler, No. 1,662,436, issued March 13, 1928; claims 24, 26, and 31 of Peiler, No. I, 662,437, issued March 13, 1928; and claim 22 of Ferngren, No. 1,677,436, issued July 17, 1928. From dismissal of its hill on the merits, plaintiff brings this appeal. The appeal does not include the determination of the trial court that the claims of Peiler, No. 1,662,437, were not infringed, so that patent is not before us.

Of the claims involved, all are for appatus (combinations) except claims 24, 25, 26, 27, and 36 of Peiler, No. 1,862,436, which are method claims. The trial court found all of the method claims and claims 31 and 33 of Peiler, No. 1,662,436 and claim 22 of Ferngren invalid. The reason for invalidity of the Peiler method claims was that they were merely for functions of the apparatus disclosed by the patent. The reasons for invalidity of the Peiler apparatus claims 31 and 33 were: (1) That the claims were broader than the disclosure and (2) that they were anticipated by McCauley, No. 1,281,083 and McCauley (Brit.), No. 114,583. The reasons for invalidity of Ferngren claim 22 were that it was an amendment filed long after the original application which (1) was not merely an amplification or clearer statement of anything in the original application, (2) was not supported by the original disclosure, and (3) was not supported by the statutory oath. The court expressly abstained from ruling on tbe validity of all claims except as above set out.

Noninfringement was found as to ail apparatus claims in suit, whether valid or not This resulted from the limitation of such claims to the particular devices disclosed— particularly those features having to do with the organization and operation of the valves controlling the three air pressures used in the feeding operation. The reasons for thus limiting the apparatus claims were: (1) They were for improvements in a crowded art which had been gradually developed over a long period of time; (2) they were limited by proceedings in the Patent Office; (3) they were limited as “paper patents, because never commercially used and too complicated for commercial use”; (4) a broad construction would result in “double patenting” as to the Peiler patents.

We will take up the issues presented by this appeal under certain general headings (with necessary subheadings) as follows: (I) The Femgren Patent; (II) Validity am! Limitation of the two Peiler Patents; (III) Infringement.

I. The Femgren Patent.

Only claim 22 of the patent is involved in this litigation. This claim first came into the patent during its progress through the Patent Office. It came as an amendment under the original oath to the application. The trial court determined that the claim was void because it was supported neither by the disclosure of the original application nor by a new oath. In addition to the need of a supplementary oath, appellees urged below, and contend here, that the claim is void for three other reasons: Inoperativeness and complete lack of utility; lack of adequate disclosure; and lack of novelty.

(A) Supplemental Oath.

The pertinent rules of law are settled. Patents are purely statutory. They are limited to discovery of things which are “new and useful” and have not been “in public use or on sale” for more than two years prior to application. USCA title 35; § 31. The statute (Id. §§ 33, 34) requires a formal application for a patent wherein the applicant shall set forth such discovery and clearly describe the novelty thereof. It requires (Id. § 35) also that the applicant shall support the declared discovery and novelty by an oath. As well said in Westinghouse Elec. & Mfg. Co. v. Metropolitan Elec. Mtfig. Co., 290 P. 661, 664 (C. C. A. 2), this last section requires that the applicant “shall swear to his invention, and all of it.” Therefore it is clear that any amendment made after filing the application cannot go further than the discovery disclosed in the original application unless it be supported by a supplementary oath covering the extended matter. “A claim is not a disclosure; but every elaim must be justified by the disclosure. If, therefore, a new elaim needs for its justification or validity an additional or new disclosure, such additional allegations of fact assuredly need a supplemental oath, not because they are to be used for an amended or new elaim, but because they tell some fact of invention not told before” (Westinghouse Case, supra, page 664 of 290 F.), and “whether any given new or amendatory matter does or does not enlarge or add to the disclosure as it stood before amendment is a question of fact” (Westinghouse Case, supra, page 665 of 290 F.). Also see Cleveland Gas Burner & Appliance Co. v. American Heater Corp., 38 F.(2d) 760, 763 (0. C. A. 8).

It is this character of fact question which is the issue here. Is elaim 22 for an invention broader than, or different from, what is disclosed by the specifications and drawings of this application? Although the specifications find drawings have been amended, those upon which the patent was granted do not essentially differ from those of the original application in so far as disclosure of the invention. Therefore we may examine the present question on the basis of the disclosure in the patent as granted. Claim 22 is: “In an apparatus for separating molten glass into mold charges, the combination of a receptacle for the glass having a submerged outlet, a member within the receptacle having a chamber opening toward the outlet, and having its lower edge submerged in the glass, and automatic means operating in a predetermined order and time, for periodically creating a vacuum within the chamber to prevent the discharge of glass from the outlet, and for supplying compressed air to the chamber to discharge the glass from the outlet.”

The view of the trial court is: “The drawings and specifications originally filed disclosed a glass-feeding structure where the application of vacuum in the cup to draw or suck the charge from the opening of the forehearth was essential. It could not be worked any other way as the patentee expressly stated. No disclosure was made of a structure ‘for supplying compressed air to the chamber to discharge glass from' the outlet’. Since the patentee by his device could not carry out that process it cannot be said that elaim 22 is merely an amplification or clearer statement of something in the original application. ít speaks in a language of a different period of the glass-feeding art.”

The Ferngren conception, as revealed by his disclosure, was not a suspended gob feed, and was not a feed directly into a parison mold. In a suspended gob feed, the amount in the charge and the shape of the charge are incorporated in the suspended gob, which then drops into the parison mold. Ferngren came into the art in 1913, before much development of the principle of suspended gob feeding, and, so far as-this record shows, before an appreciation of the problems of such gob feeding. He had no such principle in mind. His conception was to segregate the amount of glass required for a charge before the charge left the orifice and then to eject the segregated charge into a cup wherein it was carried to be dumped into a parison mold. His active agency in such segregation and ejection was air force. He uses suction within a lowered air bell (located in the forehearth) to segregate the desired charge amount in the orifice tube. He uses simultaneously coacting compression in the bell to push down and pull down suction in the cup to eject the charge into the cup.

The trial court thought this claim broader than the disclosure because it included something not in the disclosure (compression in the bell), and did not include an essential feature of the disclosure (suction in the cup). We think the disclosure included compression in the bell (patent, pages 1, •lines 18-20; 2, lines 8-13; and 3, lines 18-22), and therefore the court was mistaken in this respect. As to the other matter (suction in the cup), the disclosure is that such suction was to be applied, and no alternative where no such suction was to be used is anywhere suggested. This, however, is not determinative of the matter we are now considering. It is a common and permissible praetice to file claims for individual features of a device, and under some circumstances such may pass to patent. Whether they should so pass may involve other questions than the necessity for an oath to an amendment, which we are now examining. As to the oath, the question is solely whether the disclosure is as broad as the claim. This disclosure reveals every element of this claim, as follows: A receptacle for glass having a submerged outlet; a member therein (the bell) having a chamber opening toward the outlet with its lower edge submerged in the glass; automatic (air force) means operating in a predetermined order and time (snetion to retard or prevent and compression to increase discharge) for periodically creating a vacuum to prevent and compression to discharge glass from the outlet. It is true that the matters covered by this claim were but a part of the entire operation of the apparatus, but they were revealed hv the disclosure of the application. Therefore the claim did not exceed the disclosure, and, not seeking more than had been revealed in the alleged discovery, did not require a supplemental oath.

(B) Operativeness and Utility.

The disclosed purpose of this part of Femgrcn’s apparatus is to segregate in the orifice tube (or lube and bell) and from the glass in the forehearth a quantity sufficient for a charge (pages 1, lines 105-108, and 2, lines 1-6). The apparatus for doing this is revealed best in Fig. 7 and is as follows: (1) A submerged elongated orifice tube of particular shape and location (the shape is like a funnel with a short flare at tlxe bottom, the location brings the top of the tube above the floor of the forehearth); and (2) a vertically operating air bell with an interior diameter equaling that of the tube top. The operation of the device is as follows: The bell being raised from the tube top, glass flows naturally (or may be accelerated by snetion in the bell) from the forehearth into the tube, where its passage is somewhat retarded by the funnel shape of the tube;- when sufficient glass for a charge has entered the tube, the bell descends to its seat on the'projecting top of the tube, thus preventing further flow from the forehearth and segregating the glass in the tube as a eharge ready for delivery; the funnel shape of the tube is designed to prevent flow out of the orifice while the charge is thus being accumulated and segregated, but, if the glass be very fluid, this prevention is assisted by upward supporting suction in the bell; compression is then applied in the bell to rapidly force the charge downwardly out of the tube.

Appellees contend that the length of the tube (they estimate as 16 inches) would make suction ineffective as a supporting force of the glass therein unless a pronounced degree of snetion were applied, and, if that were done, the glass would be sucked up into the air passage of the bell, Urns putting the apparatus quickly out of commission. Obviously, the suction might be so great as to produce this unfortunate result, but that such degree of suction is necessary to retail the charge flow from the tube during the very short period of time it must be restrained is not demonstrated in this record but rests purely upon argumentative theory. All that can be said is that the matter depends upon variable factors (sueh as fluidity of glass and rapidity of charge), and that it might or might not be so. Facing the presumption arising from the grant of the patent, it is the duty of appellees to establish their contention by proof, and this they have not done in this respect. However, there is a feature, revealed in the disclosure, which we think does establish the impracticability of this part of the apparatus. That feature is the seating of the bell upon the upwardly projecting rim of the tube. Such seating is clearly contemplated by the disclosure (see Figs. 7 and 14) and is necessary for the segregation of charge contemplated. This seating is by descent of the hell on the raised upper rim of the tube. In practical operation, this seating must be repeated rapidly as eharg-es follow each other in a matter of seconds of time. Both the hell and the tube must be, and are illustrated in the drawings as being, of refractory material to resist the intense heat of the constantly contacting molten glass. Such material necessarily must be some form of heat-resisting clay composition, and therefore rather frangible. It is inevitable that the frequent rapid descent of the bell upon the tube rim would readily cause chipping and breaking of either or both to the point where frequent replacements would be necessary. Replacement of either is no slight matter and would entail stoppage of the machine and drainage of the forehearth. Such a situation is not tolerable in commercial production, and the evidence is clear that no such apparatus has ever passed into construction and use. The claim, as explained by the disclosure upon which it is based, reveals an apparatus which is operable in the sense that it will actually function hut which is not useful because of the above vital practical defeet. As said by this court in a very similar situation: “In other words, plaintiff’s invention is ‘new,’ but it is not ‘useful.’ The term ‘useful,’ as contained in the patent law, when applied to a machine, means that the machine will accomplish the purpose practically when applied in industry. It is to be given a practical and not a speculative meaning. It means that the machine will work and accomplish the purposes set forth in the specifications. Even if the machine can be made to accomplish the purposes specified, it is not useful, within the meaning of the patent law, if from its inherent nature it will accomplish the purpose only to such a restricted extent as to make its use in industry prohibitive.” (Besser v. Merrilat Culvert Core Co. (C. C. A.) 243 P. 611, 612. Also see In re Perrigo, 48 F.(2d) 965, 966 (Cust. & Pat. App.), and Houston v. Brown Mfg. Co., 270 P. 445, 448 (C. C. A. 6). Lacking that usefulnéss required by the statute (USCA title 35, § 31), we think this claim invalid. Because of this conclusion, we find it unnecessary to examine the further contentions of appellees relating to adequacy of disclosure and novelty.

II. Validity and Limitation of Peiler Patents.

The matters requiring examination in connection with validity of the Peiler claims are so similar to those affecting limitation that convenience and avoidance of repetition suggest they be treated together in so far as is possible. Our plan will be: (a) A definition of the art necessary to be understood in order to comprehend and determine the issues as to these matters; (b) examination and determination of the method claims; (e) examination and determination of the apparatus claims.

A. The Art.

It has been well said that: “It is necessary for one who wishes to grasp successfully the principles underlying the process for the production of glass on a commercial scale to possess some knowledge of the sciences upon which glass technology is founded. The three most important are chemistry, physics, and engineering.” A Text-Book of Glass Technology by Hodkin and Cousen, Constable & Co., London, 1925. Our present purposes do not require an extended incursion hito the very large field of the commercial production of all kinds of glass, but it is necessary briefly to scan this field in order properly to under stand the art.of our immediate concern and to appreciate the contributions of various cited devices to that art.

Two matters should be noted at the beginning. The first is that the problems of chemistry, physics, and engineering — all of which are involved in any process of glass making — arise partly from the character (size, shape, and uses) of the article to be produced and from the conditions governing such production. The second is that there is a like sequence of general operations or steps in all processes. The first of these implies dissimilarity while the latter implies similarity. The natural result of the combined influences is that there are differences within the elements or steps of the sequence without disturbing the sequence. Broadly speaking, this sequence in mechanical (also called automatic) processes consists of four general operations: (1) Selection of the proper chemical substances, mixing thereof in correct proportions, and putting the mixture in a fusing receptacle; (2) fusing of the mixture into an harmonious fluid mass and conditioning (mainly “fining”) for working; (3) transfer (called “feeding”) from the fused mass to the forming apparatus, of a portion suitable for the particular working; and (4) “working” into the desired article. In each of these steps an “art” exists. It is within each of these steps that there occur those divergences or differences caused by the character (size, shape, and use) of the article to be produced, or worked, and by the conditions governing such production, or working.

Our interest is in the third step in the sequence — that of “feeding.” But our particular concern is more concentrated than upon the art of feeding glass for making glass articles generally. The patents here in suit have to do with feeding glass to be blown in molds to make glass articles — mainly bottles and narrow mouthed ware. The size and shape of such articles and the peculiar conditions (blowing in molds) governing their manufacture cause a divergence or difference from feeding methods for many other glass articles. Por example, a considerable quantity of glass may be taken from a fusing furnace by ladle, pot, or pouring and placed on a large forming table when plate glass is to be rolled; a window glass cylinder may be blown from a fair-sized open pot into which the molten glass has been ladled or has flowed from the melting furnace; for large ware (formed by pressing in molds) the desired quantity of glass for a piece of ware may be taken in various ways from the furnace and placed in the wide open mold; while for bottles or similar ware blown in small-mouthed molds a particularity of quantity and shape of feed charge is required which is not of interest in the making of many other articles. These differences in requirements in the feed produce differences in problems of feeding which have led to distinct branches of art within tho general art of feeding glass. Not only this, but wide differences in principle of methods for feeding to molds for this kind of blown glass articles have revealed very different problems and required thought for solution along such different lines that there has arisen a further branching of art within the art of feeding to such molds. In the last analysis our special concern is with a particular principle or kind of feeding to molds for blowing glass bottles and similar ware; that is, the art of “suspended gob” feeding.

Having indicated the related arts and the particular art with which we have to do, it is necessary now to state certain matters which influence, with somewhat varying force, all glass feeding and those peculiar to or more potent in feeding to molds for blowing bottles.

Glass is an amorphous chemical compound created by fusing in a furnace. The chemical constituents and problems of glass, while always very important, are outside our concern, hut the compound has certain physical characteristics important here. With some few exceptions (mainly optical lenses) not of consequence here) glass is “worked” into the finished article while in a molten state. Its physical characteristics while in that state naturally influence or control the methods in which it can be worked and fed. The extent of such influence or control varies with the kind of article to be made. Por the kind of articles which here concern us, tho characteristics we need specially to notice are two. The first is extreme viscosity (increasing rapidly with loss of temperature) with a pronounced tendency to adhere to anything it touches— particularly if the thing he hot. Tho second is the rapid formation of an enveloping “skin” when exposed to temperatures cooler than itself. "While it is probable that all liquids (due to internal molecular attraction) form this surface tension or skin, yet the decided viscosity and the extreme susceptibility of molten glass to temperatures cooler than itself cause the rapid formation of a relatively tough skin of a nature to affect the working and feeding of it at atmospheric or near atmospheric temperatures. These characteristics deeply affect most methods of feeding and working glass into comparatively small mold-blown articles, such as bottles.

Another matter is that “'feeding” is an intermediate step in a continuous and fairly rapid sequence beginning with melting of the compound and ending with working into the prodnet. Being the connecting link (in a continuous process) between the molten mass in the furnace and the subsequent working, the engineering problems of methods and means of feeding have inevitably been strongly influenced by the kind of furnace at one end and by the kind of working at the other. Por example, it would he impractical, if not impossible, to have any kind of feed from .a pot furnace except some form of dipping therefrom — such as by punty, ladle, or suction. Again, working methods are controlled by the character of article made — thus plate glass is rolled, window glass is blown or drawn, flat ware is pressed in molds, bottles and hollow ware are blown in molds. Necessarily, each of these methods of working has vitally conditioned the methods and means of feeding for its particular purpose. While the influence of the furnace has been nowhere near as great as the working methods (as will hereinafter appear), yet both are to be kept in mind, for furnaces and working methods had mechanically been improved and were highly developed before mechanical feeding attracted much serious attention; therefore it was into such a situation that most mechanical feeders were designed to fit. In fact, the purpose of the patents now in suit is to supply, mechanically, the link he tween developed furnaces and developed working mechanisms.

In connection with what has just been said, it will be helpful, briefly, to state the development of this situation in so far as bottle forming processes are concerned. Such history will throw light on the feeding needs and requirements to meet which most mechanical feeders were devised and upon some of the conceptions and devices (cited in this record) which arose to supply these needs and requirements. Making bottles and similar hollow glass containers by blowing is a very old process. Before mechanical means for so doing appeared, this was done by men with few and crude tools. This process required the closely consecutive action of several skilled workmen. It was slow, expensive, and produced bottles lacking in uniformity of size, shape, and workmanship. In this hand process, the glass was taken from the furnace (through a furnace hole above the glass level) on a slightly knobbed and hot end of a small metal pipe which was twirled to accumulate and to separate from the furnace mass a portion of glass, called a “gather.” When the amount of glass estimated by the workman as proper to make the bottle had been thus gathered and removed from the furnace, other workmen took the pipe and shaped the bottle by blowing and manipulating the gather. Other workmen broke the bottle from the blowpipe and shaped and strengthened the bottle mouth. The first development in this age-old process was along the line of tools to lighten the physical strain on the workers or to produce better and more uniform bottles. One of the latter sort was the introduction of molds in which the workman blew the finished bottle to better and more uniform shape and size. A step in this use of molds was for the workman roughly to shape the gather before it was placed in the mold for blowing. This shaping was done by manipulation of the gather on a slanting stone or metal slab called a “marver.” When the gather had thus been shaped for the blowing mold, it was called 'a “parison.” The next progressive step was to do away with this initial shaping on the marver by introducing a separate initial mold wherein the gather could be directly placed and would quickly form the “parison” deemed desirable for use in the blowing mold and from which the parison was transferred on the pipe by the workman to the blowing mold. This initial mold was called the “parison mold.” This term should be borne in mind for subsequent mechanical development preserved these two molds — parison and finishing (or blowing) — ■ and mechanically placing a charge by a feeding device into a mold means always into a parison mold. Shortly afterwards, came the first mechanical improvement through a machine to blow the bottle (in the finishing mold) by compressed air. At this stage, it was possible to dispense with the skilled human ■blower, and the blowpipe gave place to the “p'unty,” which was a rod’ with a particularly shaped knob at the gathering end. But the gather from the furnace, the placing thereof into the parison mold, and the transfer of the parison therefrom to the finishing mold still required manual labor. Following developments resulted in multiplication of pairs of parison and finishing molds into mechanical units with synchronized mechanical transfer of the parison from its mold to the finishing mold. Such machines were called “semi-automatic,” since they still required human agency in the process, but this agency was now reduced to gathering the charge from the furnace and placing it in the parison mold. As these machines were perfected and became more rapid in operation, the defects in this manual feed (waste through inaccuracy in the quantity of the charge, slowness of operation, and expense) were more and more acutely felt. This was the developed situation which called for relief from this manual feed and resulted in much effort to devise mechanical substitutes therefor. Some devices (illustrated by citations in this record) were not confined to feeding apparatus, but covered molding machinery and some even annealing, but the majority of the citations here are for feeding devices intended to meet the above situation and need.

Another matter (mentioned above in outlining our particular art and also set out in the concluding sentence of footnote) is an important and a somewhat surprising thing which occurred in the efforts to devise mechanical feeding machines for bottle making molds. This is the difference not only in devices but in' “principles” of action thereof. Of course, all principles had in view to remedy, mechanically, those defects in the hand gather whieh made that method ineffective in the economical and rapid commercial production of bottles by machinery. However, the conceptions of the method of doing this difCored widely. In part this may be explained by lack of knowledge of some of the problems engendered by substituting machinery for the intelligently directed action of a skilled workman and in part by lack of knowledge of the reaction of molten glass to mechanical control. There are numerous examples of the former and some of the latter. As to the first, the necessities of an accurately measured or quantity of charge and rapid delivery of charges were generally appreciated, but the necessity of shaping the charge so that it would cleanly enter and accommodate itself to the parison mold was entirely outside the knowledge or endeavor of quite a few of the inventions cited herein. A failure early to recognize.this necessity of shaping was not unnatural because shaping was a problem first brought to light in mechanical feeds. In the hand gather, the skilled attention, judgment, and action of the workman had taken care of the proper introduction of the charge into the mold. In quite a few of the patents cited here, the sole design was to deliver accurate quantities of glass to the molds rapidly, and this is true even where the devices of some such ha.d, within narrow limits, an entirely-unintended shaping effect; that is, the action of the apparatus changed the natural form of the charge to some other which was fairly cons! ant. Naturally, this accidental shaping might or might not be an advantage according to the circumstances — such as mold mouth, bottle size, etc. Another matter not always appreciated was the necessity of timing or synchronizing the delivery of the charge with the movements of the molds into feeding position. An example of ignorance of molten glass reaction under control is shown by Cleveland, No. 601,881, which is a stream feed where the charges are separated by stopping the outflow orifleo with the shears between the end of one charge and the beginning of another. Such action would inevitably and speedily result in stopping operations through smearing of the shears and orifice. But, whatever the causes therefor, the important things are the facts that such feeders were devised along different principles, and that such principles, in some instances, developed basic problems of control peculiar to themselves. Therefore, some of these principles developed subsidiary arts of their own because of these differences.

Recognition of and acquaintance with the differences in these various principles are quite important in estimating the contribution of a given device to the art of bottle machine feeding. This is true because each principle gave birth to problems often peculiar to it; invention was inevitably controlled by these problems; and apparatus must be adapted to solution thereof. Therefore, while a device may he a decided contribution to discovery along its given principle, it may mean little or nothing to an investigator along some other. Although this may be self-evident it may be useful to emphasize and illustrate this now by several examples, as follows: Some form of shearing or definite separation of a charge from the furnace mass would seem a necessity, hut Severin provides none, and the cup-shear of Brooke could suggest nothing useful to an inventor working along any principle other than the “stream” feed. Again, a forehearth, or furnace extension, is a necessity to most principles, but Severin uses none, and neither Owens’ revolving pot nor Hitchcock’s extended passage carry help as to forehearths to any other inventors in this record. Again, the main problems in most principles — -to secure a measured or a measured and shaped charge to be transferred into the parison mold — a.re not encountered by Owens and Severin, who introduce a furnace mass portion directly into the parison mold.

This difference in principles and resulting methods has, naturally, led to endeavors to classify feeders to bottle blowing molds. This classification has been attempted both outside this record (see “A Text-Book of Ghiss Technology,” supra, p. 428) and within it. Such classifications are useful, but must be used with caution because they differ as to bases, because some devices do not readily fit into any one of such classes, and because considerable significant subclassification is demanded if any one of them be adhered to. We will use such only in so- far as seems advisable to make onr meaning clear.

From what has been said it is evident that, broadly speaking, the practical engineering problem involved in all mechanical glass feeding is that of control of the glass for the purposes of the feed; that the control requirements differ according to the article to be made and the methods of making such article. Also it is clear that these requirements as to bottles (which are made by blowing in molds) are accuracy of quantity of ebarge, shaping of the charge to enter and fit the mold, rapid succession of charges, and synchronizing the time of charging to the movement of the parison molds into charging position. Also that attempts to devise feeds for bottle machines have been along different lines presenting different problems meaning different solutions and solutions meaning methods (or conceptions) as to the way of solution and also apparatus to carry such, methods into effect. We are now to state (in so far as here helpful) the general considerations and means of control. It is with such that this ease is vitally concerned.

Broadly, control has to do with movement of the glass from the furnace mass into the parison mold. It is obvious that the fluid or semifluid condition of molten glass in the furnace is always affected by gravity, and, therefore automatic transfer (movement) of a charge from the furnace to the parison must reckon with this omnipresent natural force. Thus automatic control must involve forces which will result in some one or more of several effects: Overcoming, using, accelerating, or retarding gravity. In respect to such . effects, the requirements in this movement from furnace to mold may differ or may differ at various stages in the progress of such movement — depending upon the principle of feeding. Thus, the Owens device is concerned only with overcoming gravity; Bridges, No. 11,121,608, utilizes gravity (twice) and overcomes gravity; Wilzin (Fig. 20) accelerates gravity; McCauley, No. 1,281,083, overcomes and accelerates gravity; McCauley, No. 1,-322,318,- overcomes, retards, and accelerates gravity; Lott (Fig. 29) utilizes gravity and (Fig. 30) overcomes and utilizes gravity; Miller utilizes and accelerates gravity. The differences in the above examples (there are many others) suggest the wide possibilities of divergence in the use of these four effects and in the sequence of use where more than one is employed.

The automatic means for exercising force to affect gravity in the glass movement are of two kinds: Mechanical and pneumatic. The character of each of these has affected the methods and apparatus for control. For example, Owens and Severin principles are based upon pneumatic force, and would be impossible mechanically, while Peileris paddle-dam feed method is just as strongly based upon mechanical means with impossibility of pneumatic accomplishment. On the other hand, certain feeding principles are susceptible either to mechanical or to pneumatie control, and some principles (such as the suspended gob feed) may employ either at the same stages and for the same purposes.

Having put in the above general background, which we think will be helpful' in understanding the Peiler patents in suit and the effect of the citations against them, we turn to these Peiler patents. After stating the broad scope thereof, we will examine the citations and their effects — first upon the method claims and then upon the apparatus claims.

Peiler Patents.

The applications for these patents were filed on the same date and took serial Nos. 396,934 and 396,935. The first of these (as granted) covered both method and -apparatus. The second purely apparatus. The later numbered application first received patent, being No. 1,465,936, issued February 7, 1922. Patent on the other was issued March 13, 1928, being No. 1,662,436.

These patents are upon the principle of a "suspended gob.” This principle rests upon the conceptions that the viscous and skin forming characteristics of molten glass at proper working temperatures cause it to flow from a limited submerged orifice in connected drops or “gobs” instead of in a consistent stream; that, under normal gravity flow, these gobs assume a characteristic shape which is that of filling out at the bottom and continuously tapering toward the top- (called “tad-poler” shape); that the size (quantity) and (within useful limits) the shape of such gobs can be controlled through the eoacting influences of the diameter of the orifice and the exertion of force (expulsive and retractive) above and at the orifice upon the glass issuing therefrom and in suspension. Generally speaking, the broad problems of suspended gob feeding are to measure and to shape the gob while it is in suspension. The particular concern of these patents is with the shaping, although, of course, they also cover measurement. Therefore we are concerned with the principle of “suspended gob” feeding and particularly with the shaping of the mold charges.

The theory of shaping a suspended gob charge for a mold is as follows: As fast as the surface of the issuing gob is exposed to the much cooler temperature, a tenacious and somewhat elastic skin forms. If compression is applied to the unissued glass above and within the influence of the orifice, it can be made to flow into the gob inside this skin, with the result that it “stuffs” the skin and changes the natural form of the gob. A reversal of this force tends to restrict and may even, temporarily, prevent flow from the orifice.

The benefits of proper shaping are important in their effect upon the finished ware. These benefits are clean entrance of the charge into the mold and its accommodation to the mold. Difficulty of entrance results in trouble and loss which is obvious. By aeeommodatiom to the mold is meant the lack of overlapping’ because any overlapping skin on the charge must be absorbed therein to prevent defects in the finished article, and such complete absorption is difficult under the temperature conditions existing in the mold and produced by the contact of the mold with the charge.

Another matter in connection with shaping is brought about by the necessity for definitely separating the charge. The tenacity of glass causes it to adhere strongly to itself or to objects it contacts (increasing with the temperature [hea,t| of the object). Cleanly to separate a charge it is necessary to use some form of shearing. To aid in ready shearing 'and to- avoid harmfully smearing the shears or orifice or both, it is desirable that the charge, at the shearing line, be small. A related matter is occasioned by the situation that time must bo given for a shift of molds after each charge, and, if the stub on the following charge made by the shearing is exposed to cooling during that time, it will not i’oadily be absorbed therein, and will cause a defective article. Hence the desirability of reheating this stub.

From the above considerations it is clear that, usually, the desirable situation is that of maintaining a uniform shape of a size readily to enter the mold and eonform thereto with contraction for shearing and retraction of the upper stub for reheating.

In these two patents, Peiler expressly recognized that he eame into suspending gob feeding at a time when the art revealed the major problems of such feeding and when devices had appeared to solve such. He says: “Various machines have been provided for this purpose [to separate and deliver a series of masses of glass of suitable size and shape to serve as mold charges] in which the container for the molten glass is provided with a submerged outlet, and the flow and cessation of flow is caused by extruding and intruding impulses imparted to the glass in or near the outlet. In some of these machines, the impulses are produced by changes in the air pressure on the surface of the glass near the outlet; that is, the air above the outlet may be compressed above atmospheric pressure to cause extrusion of the glass, and reduced to a partial vacuum to cause a cessation of the extrusion, or in some cases, an intrusion of the extruded mass, or of the stub left after severance. The gather is suspended beneath ’ e outlet, and shears are usually provided to +he mold charge from the gather. Tn this a series, of charges is formed of a. size tiopoodent in part on the pressures and their duration, of the application of the abnormal air pressures, and these charges are of uniform size and shape so long as all conditions remain constant” (No. 1,405,936, page 1, lines 17-40; and also same matter No. 1,-662,436, page 1, lines 10-31). Thus he knew that the art taught shaping of suspended gobs by variations in air pressures near the outlet.

His effort was directed to three of the problems which concerned such shaping through variation in such pressures. He recognized that it was advantageous to have the charge shape conform to some extent to the shape of the mold and that molds differed in shape; also that it was advantageous to maintain this charge shape uniformly during the feed to particular molds and that unpreventable changes (such as variations in viscosity of the glass) in the working conditions might arise during the feed which would affect maintenance of this uniformity of charge shape. Therefore his efforts were directed toward (1) shaping a charge to conform to the mold shape; (2) varying the charge shape to eon-form to different shaped molds; and (3) varying the effect of the charge forming force during a feed to overcome changes in working conditions and thus keep the shape of the charge uniform. The first of these purposes he sought to accomplish through a sequence of air pressures active at the orifico and a machine to create and control such; the.second and third by providing adjustments of the mechanism creating and controlling the air pressures. His method claims in No. 1,662,-436 cover the sequence and duration of pressures. His apparatus claims in both patents cover the machines and their adjustments.

While the quantity of a charge is a prime essential in any mold feeding and while Peiler makes reference thereto in his vertical positioning of the air bell (No. 1,465,936, page 2, lines 84-87; 1,662,436, page 2, lines 38 — 43) and in stating the importance of periodically stabilizing abnormal pressures (No. 1,682,-436, page 5, lines 68-93), yet Ms real concern in both patents is with tlie shaping of the charge. He knows and states (No. 1,662,-436) the general effects of pressures over an orifice in a suspended gob feed to be that the diameter “of that portion of the gather then being extruded” (page 2, lines 88-83) may be increased by pressure causing “a more rapid extrusion” (page 2, line 65) of glass from the orifice; that reduction of pressure “decrease the diameter of a corresponding portion of the gather” (page 2, lines 68-76); that, if such reduction be to normal, “gravity will produce a thinner or neck portion” (page 2, lines 91, 92); that, if such reduction be to below normal, tlie flow will “decrease and finally stop1, and may become an intrusion” (page 2, lines 94, 95) — each of these affecting the shape of the gob. He recognizes that the shape may be further and more particularly controlled through the manner, time, and duration of these various' pressures. Thus he states that shape may be “still further varied by the rapidity with which the air pressure is i , . , .o,- -i , ehanged, and an important factor m determining the shape of the gather is the relative time of application and duration of the various pressures” (page 2, lines 96-101). Recognizing and intending to utilize all of these elements in the control of shape, and having in mind the advantages of variation in shapes for different shaped molds and of overcoming working condition changes in order to maintain uniformity in the charges of a given feed, he presents, in these patents, his method and two forms of devices of considerable adaptability and mobility of operation. Anticipation is directed both at the method claims and at the apparatus claims.

(B) Method Claims,

„ . . . ... Obviously the question of anticipation of ^e method claims of No. 1,662,436 differs in character from that of anticipation of the apparatus claims of the two patents. We examine first the method claims (set forth in tho footnote).

Of these, claim 27 is clearly for a fune,L. J .... „ J ,, . . *10n' differentiation from the other claims PurPose ?le ™Amgo£ the particular apparatus. It aims at stabilizmS the abnormal pressures (under operation) an