CITE:  262 F.2d 91
CMON:  December 1958
PLAIN: Venner, William M.
DEFND: Bowser, Percy L.
COURT: United States Court of Customs and Patent Appeals
DATE:  December 19, 1958

Proceedings on application for patent. The Patent Office, Serial N.
309,966, rejected all of claims remaining, and the applicant appealed.
The Court of Customs and Patent Appeals, Martin, J ., held that claims
1, 2, 5, 8, 13 and 20, of an application for "Apparatus for Molding
Trunk Pistons", were unpatentable over prior art.


  A mental step can't be patented.  Automating a manual activity is not

Before O'CONNELL, Acting Chief Judge, and WORLEY, RICH, and MARTIN, Judges.


This is an appeal from the decision of the Board of Appeals of the Patent
Office affirming the final rejection by the examiner of claims 1, 2, 5, 8,
10, 13 and 20, all of the claims remaining, of application serial No.
309,966, for "Apparatus for Molding Trunk Pistons".  The subject matter of
the claims on appeal was disclosed in a parent application of the same
inventors, serial No. 789,124, filed December 1, 1947, and co-pending with  
the instant application.

The appealed claims relate to a permanent mold casting apparatus for molding  
trunk pistons of aluminum and magnesium alloys wherein the mold comprises  
two external horizontally movable outer mold sections, a pair of internal
horizontally displaceable side core sections which form the interior surfaces
of the piston, and a vertically acting middle core section withdrawable
from between the side core sections so as to permit the latter to collapse
towards one another, thereby releasing the molded solidified piston. The
outer mold sections in assembled position form a gate into which the molten
meta] may be fed by gravity to fill the mold cavity. The middle core section
is positioned by a piston type fluid motor which withdraws the said section
when actuated. The alleged invention resides in the provision of
"time-controlled means" to actuate the said fluid motor in order to
withdraw the middle core section at the proper time after pouring the
metal into the mold so as to prevent slumping of the metal or excessive
contraction thereof on the core members. The "time-controlled means" are
initiated by the molder by depressing a foot-operated switch immediately
after pouring the molten metal into the gate.

Claim 1, which is regarded as representative of the claims on appeal, reads  
as follows:

  "1. An apparatus for molding trunk pistons of a]uminum and magnesium
  alloys having relatively high crystallization shrinkages and
  coefficients of therma] expansion, such piston embodying a head having
  a relatively thick cross-section and a cylindrical skirt of relatively
  thin cross-section provided with inwardly extending wrist pin bosses
  of relatively thick cross-section, comprising, a pair of separable mold
  sections shaped to the outside of the piston and provided with a gate at  
  the top adapted to cast the piston with the head up, a sectional core  
  shaped to the inside of the piston and embodying a middle section  
  movable downwardly between and below side sections which are shaped
  to form the bosses and are freely movable laterally into the space
  when vacated by said middle section, power-operated means connected
  to move said middle section downwardly below said side sections,
  time-controlled means set to the period between the completion of the
  pouring of the metal in the mold and solidification of the metal of
  the piston therein, means controlled by said time-controlled means and
  controlling said power-operated means in order to move said middle
  section downwardly at the end of said period to release it from the
  casting and to permit the side sections to freely move laterally away
  from the casting, and means accessible to the molder when pouring for
  initiating the starting of said time-controlled means after the
  completion of such pouring.

The references relied on are:

        Nichols             1,925,496      Sept. 5, 1933
        Stern               2,145,956      Feb.  7, 1939
        Wagner              2,190,496      Feb. 13, 1940
        Flammang et at.     2,204,407      June 11, 1940
        Waldie              2,363,759      Nov. 28, 1944
        Venner et al.       2,588,898      Mar. 11, 1952

Venner et al., a patent issued to the same inventors as those herein, was
copending with appellants' parent application. The said patent discloses
a permanent molding apparatus for aluminum alloy trunk pistons comprising
exterior mold sections, side core parts, and a power operated central core
part, which parts are said to "be of any suitable construction as shown in
the various patents enumerated above." The admitted prior art disclosure
included the Flammang et al. patent, discussed, infra. The claims of the
Venner et al. patent set forth a multiple mold apparatus supported on a  
rotatable carrier, which is actuated by power operated means at the disposal
of the molder to position the carrier and the molds together with their
respective core sections for the alternate pouring and solidification steps.

The Flammang et al. reference relates to a trunk piston permanent molding  
machine of the same general class as applicants' including a pair of mold
sections, two side core sections, and a center core section capable of
being vertically withdrawn to permit inward movement of the side core
sections and removal of the formed casting. Flammang et at. teach freeing
the casting from the side core sections "as soon as the operator is  
satisfied that the casting has cooled to a sufficient state of hardness".

Stern discloses a die casting machine wherein molten metal is injected
into the die cavity and a timer controls the operation of an ejector pin
which pin ejects the casting from the die subsequent to the formation
thereof and in timed sequence therewith.

The Waldie patent discloses a die casting machine for aluminum and other  
metals in which a timer is actuated to open the die and discharge the
casting therefrom. No core is removed from the die; instead, the die
members are merely separated from one another.

The Nichols reference discloses a permanent molding apparatus for the
manufacture of castings from metal, such as cast iron. The core is
retracted automatically from the mold "after the castings have solidified
around the cores and before the castings begin to contract."  The said mold
is mounted on a rotatable carrier which moves intermittently to position
each mold successively for pouring of the molten metal, core withdrawal,  
and ejection of the finished casting. The said patent discloses that:

  " * * * the amount of time which should elapse between the filling
  of the mold and the withdrawing of the cores depends upon the time
  required for chilling that portion of the casting adjacent the core  
  sufficiently to solidify it. As this time is variable depending on
  the size of the casting and the material used it is necessary to
  vary the time required to pass between the stations. * * * "

The Wagner patent shows a permanent molding apparatus for manufacturing  
engine blocks in which a plura]ity of core members are withdrawn from the
mold automatically upon closing an electrical circuit.

The rejection of claims 1, 2, and 5 as "lacking invention over Venner
et al. in view of either Stern or Waldie, when viewed in the light of
the art as evidenced by Wagner and Nichols," was affirmed by the Board
of Appeals. The basic features of these claims are found in claim 1 and
the differences therefrom recited in the other enumerated claims do not
patently distinguish over the reference combination cited; according]y,
the patentability of these claims will be considered in connection with
that of claim 1.

Appellants object to the board's reliance on the Venner et al. patent,
No. 2,588,898, as a reference since the said patent was co-pending with
the parent application of that herein. The board, in its opinion on
reconsideration, indicated that the rejection of those claims was
predicated solely on the admitted state of the prior art as disclosed in
said Venner et al. patent. We find no reversible error in the use of
such admissions. In re Rishoi, 197 F.2d 342, 39 C.C.P.A., Patents, 1004.

It was conceded by counsel for appellants at the hearing that the molding  
apparatus without the timing device and associated means to initiate the
withdrawal of the middle core section after a predetermined period of time
is not patentable over the prior art. Counsel further agrees that the power
operated valve means for vertically withdrawing the middle core section
when manually initiated is shown by the patents of record; therefore, it
is unnecessary to further discuss the references in this respect.

However, appellants do contend that the basis for allowance of the appealed  
claims resides in the combination of the old permanent-mold structure
together with a timer and solenoid which automatically actuates the known
pressure valve system to release the inner core after a predetermined time
has elapsed.  

Appellants have submitted an affidavit showing commercial success of the
device set forth and indicating those factors which they deem illustrative
of the unobviousness of the recited combination. They argue that this new
combination has reduced the number of defective pistons formed by permanent
molding by 15% and has increased production 35%.  It is further claimed
that the reduction of defects is caused by the use of the timer in
withdrawing the inner core at the exact time required to avoid slumping
of the metal when the inner core is withdrawn too soon and cracking in the  
thin skirt portions thereof, when withdrawn too late. Appellants state that  
previous to their asserted invention, the molder by noting the color and
sinking of the gate, guessed when to withdraw the center core and that this
course of action caused the large-percentage of defective pistons.

Further, appellants stress the importance of the claimed combination in
particular relation to the a]uminum and magnesium alloy piston molding art  
which they argue has peculiar problems not found in the molding of pistons
with other metals. The affidavit states that "pistons when made of aluminum
and magnesium alloys have high crystallization shrinkages and coefficients
of thermal expansion.  *  *  *  The crystallization shrinkage must be
compensated for by the proper design and gating. If that is not done then
a serviceable piston casting will not be produced."

Unquestionab]y a new combination of old elements is patentable under
certain circumstances. However, we believe that this principle is subject
to the conditions stated in the case of In re Kaufmann, 193 F.2d 331, 334,
39 C.C.P.A., Patents, 769, at page 774, 1952 C.D. S5; 656 O.G. 279;
wherein the court stated:

  " * * * if a new combination of old elements is to be patentable,
  the elements must cooperate in such manner as to produce a new,
  unobvious, and unexpected result. It must amount to an invention.
  In re Smith, 161 F.2d 274, 34 C.C.P.A., Patents, 1007, cited supra.
  In the absence of invention, utility and novelty are not sufficient
  to support the allowance of claims for a patent. In re Levin, 178 F.2d
  945, 37 C.C.P.A., Patents, 791; In re Hass, 141 F.2d 122, 31 C.C.P.A.,
  Patents, 895. It is trite to say that invention is difficult to define
  positively. However, we believe it to be a settled rule that it is not
  invention to produce a device which is within the realm of performance
  of a skilled mechanic in the ordinary progress of producing a device
  required to effectuate a given result."  

Furthermore, it is well settled that it is not "invention" to broadly
provide a mechanical or automatic means to replace manual activity which
has accomplished the same result. In re Rundell, 48 F.2d 958, 18 C.C.P.A.,
Patents, 1290.

With respect to the paramount contention of appellants that the timing
device of their combination establishes patentability, we are of the
opinion that the prior art and the logical deductions of anyone skilled
in the art would preclude the determination that the recitation of  
"time-controlled means set to the period between the completion of the
pouring of the metal in the mo]d and solidification of the metal of the
piston therein" constitutes "invention".  The need for withdrawal of the
middle core section upon solidification is recognized by Flammang

Appellants claim that because of the peculiar characteristics of aluminum
and magnesium alloys it is imperative that the center core be withdrawn
at exactly the right moment. Assuming this to be so, this precise moment
must be determined by one who has the knowledge of the properties of the
metals involved and can calculate the required time to produce those
castings which will be devoid of defects. This determination involves  
the consideration of many variables including the composition of the raw
material and the alloy formed, the melting temperature, the temperature
of pouring the molten metals, the mechanical construction of the mold,
the temperature gradient and the absolute temperatures within the mold,
and the speed of pouring. {1}

The timer itse]f does not compute the molding period. A mental process
is invoked and the timer is set accordingly. Patentability cannot be
predicated upon a mental step. In re Shao Wen Yuan, 188 F.2d 377,
38 C.C.P.A., Patents, 967. It follows naturally that if the timers are
employed the instantaneous reaction which appellants deem so important,
would result. Furthermore, using a floor switch to activate the timer
detracts from appellants' contention that the automatic timer relieves  
the operation from the mistakes and inertia of the human mind.

We are further of the opinion that the instant element recited herein as
"means controlled by said time controlled means and controlling said power
operated means" does not add patentability to this combination. Venner
et al. together with the Nichols and Wagner patents show the automatic
means to initiate withdrawal of a core from a piston molding apparatus;
this would preclude applicants from predicating patentability on this
feature. The fact that these references pertain to iron castings or
engine b]ocks and other products does not prevent their use as references
to show mechanical means for initiating the withdrawal of core members.

Moreover, even though the use of the instant machine is asserted to have  
decreased the percentage of defective pistons cast and increased the rate
of production thereof, these features alone do not create patentability.
Commercial success is of no moment unless patentability is in doubt.
In re Jaeger, 241 F. 2d 723, 44 C.C.P.A., Patents, 767. In the instant
case, we find all the elements of appellants' combination in the prior art  
cited by Vennor et al. together with Waldie, Stern, Nichols and Wagner.

Appellants have asserted that their alleged invention was not obvious to
the many persons skilled in the instant art since for many years the
industry "has relied on the molder's guess as to solidification."  It is
sufficient to say in answer to this argument that appellants' combination
would not stop the guesswork.  What did, was the more accurate 
determination of the proper molding period and the application of the
prior art to utilize the knowledge thUs obtained.

There is nothing in appellants' affidavit which bolsters their contention
that this industry either recognized or was endeavoring to resolve the
problem set forth; the mere fact that the percentage of defective pistons
produced was decreased by the instant apparatus, after a long period of
use of other devices, does not necessarily show that the combination at bar
was unobvious. So far as it appears from this record, the number of defects
produced by the use of prior art molding apparatus may have been merely  
nominal, and therefore, the said decrease would not be significant, nor
would any need for change be apparent.

Therefore, we find no patentable distinctions recited over the prior art of  
record in claims 1, 2, or 5, and accordingly affirm the board's rejection
of those claims.

Claims 8, 10, 13 and 20 differ from claim 1 in reciting a multiple mold
apparatus and carrier therefor, the latter actuated by power-operated means
at the disposal of the molder to move so as to position the several molds
for the alternate pouring and solidification steps.  The board affirmed the
rejection of these claims as failing to patentably distinguish over the
claims of Venner et al., in view of the various secondary references cited
above. The Venner et al. patent claims a "plurality of piston molds * * *,
a carrier for said molds * * *, and power-operated mechanism under control
of the molder at the molder's station for rapidly shifting said carrier
and with it said molds * * * to positions: first contiguous the molder's  
station for pouring of the metal * * * second away from the station for
setting of the metal, and third back to the station for * * * removal of
the casting * * * and closing of the mold * * * for repouring." It would be  
considered obvious for any person in the piston molding art to equip the
multiple mold apparatus thus defined by the claims of Venner et al. with
time controlled means to withdraw the middle core section after a
predetermined period for solidification, in accordance with the disclosures
of the secondary references, as discussed hereinabove in connection with
claim 1. Therefore, the rejection of claims 8, 10, 13 and 20 is affirmed.

For the above reasons, we affirm the decision of the Board of Appeals.  



{1}. These factors are recognized in the excerpt from "The Metallurgy of
Aluminium and Aluminium Alloys", Robert I. Anderson, 1925, page 632,
cited as an authority in the record before us.