author: BALDWIN, Judge.

text:
    Application of Edwin George Edward HAWKINS.
    Patent Appeal No. 9023.
    United States Court of Customs and Patent Appeals.
    Aug. 23, 1973.

      Jacobs & Jacobs, New York City, attorneys of record, for appellant. Albert L. Jacobs, Jr., New York City, of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.
   BALDWIN, Judge.

This appeal is from the decision of the board of appeals affirming the rejection of claims 2, 4-15, 17-25, 27, 29-31, 33-69 and 71-75, all of the claims remaining in appellant’s application.

The Invention

Appellant’s invention concerns peroxy-amine compounds containing the following heterocyclic structural unit:

Claims 2, 8, 15 and 17 are sufficient to give an idea as to the types of compounds involved:

2. A compound of the formula

wherein Ri and R3 are alkyl of 1 to 10 carbon atoms and R2 and R4 are hydrogen, alkyl of 1 to 10 carbon atoms or aryl.

8. • A compound of the formula

wherein R5 to RM are hydrogen or alkyl of 1 to 10 carbon atoms, R15 is alkyl of 1 to 10 carbon atoms and R16 is hydrogen, alkyl of 1 to 10 carbon atoms or aryl.

15. A compound of the formula

wherein X and X' are divalent aliphatic moieties of from 4 to 11 carbon atoms in the ring and carbon atoms are the only atoms in the ring.

17. A compound according to claim 15 of the formula;

wherein R17 to R76 are hydrogen or alkyl. A number of claims are directed to processes for making appellant’s compounds.

As the application was filed, the sole disclosure relating to the utility of the compounds and to how they are used reads as follows:

These novel compounds may for example be used in the production of valuable monomers for example by the processes described in copending British applications 36107/66, 42756/66, 46971/66, 49699/66, 50324/66, 10070/67, and 10071/67.

The Rejections

The examiner rejected all the claims “under 35 U.S.C. § 101 and 35 U.S.C. § 112 as being based on a specification that contains an inadequate disclosure of utility.” The examiner stated:

Incorporation of the seven copending British applications (which are unavailable to the public) does not constitute an adequate utility statement. The specification is deemed fatally defective. Specifications must be complete as of filing.

The examiner also rejected a number of the claims under 35 U.S.C. § 112 on various grounds, including their “being based on a specification that fails to effectively support the scope of said claims * *

Appellant responded to the first rejection by deleting the cross references to the British applications and replacing them with the actual textual material from those applications, in an amendment which takes up about 44 pages of the printed record. The amendment appears to consist of essentially all of the disclosure contained in the British applications, minus some cross-references and the claims. Of the seven British applications relied on by appellant for teaching methods of using the instantly claimed compounds, five deal with only a single peroxy-amine compound, namely, 1,1' peroxydicyclohexylamine:

The applications disclose that the above compound, when reacted in various ways, breaks down to give various yields of caprolactam, the formula for which is:

Four of these applications contain statements to the effect that “[cjaprolactam may be polymerized to give useful polymers for instance nylon-6.” The last two applications relied on deal with per-oxy-amine compounds in more general terms, disclosing that they can be broken down to form various corresponding lactams. One of the applications contains the statement “ [Ijactams may be polymerized to give useful products, e. g. caprolactam may be polymerized to give nylon-6.”

The amendment was stated to be made pursuant to MPEP § 608.01 (p), and was accompanied by copies of the British applications in question, and by an affidavit by appellant’s attorney, to the effect that the amendment corresponds to the subject matter of the British applications, with certain minor, noted exceptions.

The examiner responded with a final rejection in which it was stated that the “amendments to the specification have not been entered, as they represent new matter, 35 U.S.C. 132.” However, a supplement to the final rejection was made by. the examiner, in which it was indicated that the amendment to the specification had been entered but was objected to as representing new matter, and that all of the claims were “rejected under 35 U.S.C. § 112, 35 U.S.C. § 132 for being based on a specification that now contains new matter.” The board summarized the status of the case before it as follows:

All the claims have been rejected as being based on a specification that contains an inadequate disclosure of utility. This rejection is made under 35 U.S.C. 101 on the basis that the ^compounds have no utility, and under 35 U.S.C. 112 on the basis that there is no disclosure of how to use the invention.
All of the claims have also been rejected under 35 U.S.C. 112 and 35 U. S.C. 132 as being based upon a specification that contains new matter. The specification is similarly objected to under 35 U.S.C. 112 and 35 U.S.C. 132 as containing new matter.
Claims 2, 4, 8, 15, 17, 27, 29 to 31, and 33 to 65 have been further rejected under 35 U.S.C. 112 because (1) the specification does not effectively support the scope of the claims, and (2) certain of the starting materials have not been shown to be available.
The Examiner has also stated that the process claims 27, 29, 30, 31, and 33 to 63 are unduly multiplied.

The board reversed the multiplicity rejection, and also the rejection stated in the third quoted paragraph insofar as it applied to claims 27, 30, 34-37, 39 and 46-55. The board refused to consider an argument concerning obvious utility for the claimed compounds, and an affidavit in support of that argument, since neither was submitted by appellant until after the examiner’s answer. We also decline to rule on that issue, especially considering the fact that neither the examiner nor the board dealt with it.

In sustaining the first rejection, the board stated:

The Examiner did not dispute the fact that appellant had followed the procedure of Manual of Patent Examining Procedure 608.01 (p), but maintained that because applications must be complete as filed, it was improper to incorporate subject matter which was not available in the United States Patent Office at the time of filing.
We first note that the Manual of Patent Examining Procedure is merely a guide to the Examiner and is not controlling where it conflicts with the statutes and Rules of Practice. We are aware of no legal precedent in support of the section in issue, and we believe that 35 U.S.C. 111 requires that the disclosure be complete as of the time of filing, and that this requires any matter, which it is desired to incorporate by reference, must be clearly identified as being available in the United States Patent Office by way of a printed publication or a co-pending United States application. What is available to a foreign patent office is not necessarily available to the United States Patent Office. It may be that such material may never be made available to the United States Patent Office. That it has been made available in this particular case at a later date does not retroactively make the disclosure complete as of the date of filing.

In the board's view, the same reasoning supported the new matter rejection:

Because we believe the subject matter of the referenced British applications did not constitute part of the disclosure of the instant case as originally filed, for the reasons given above, we affirm the Examiner’s rejection of the claims for new matter.

Finally, with regard to the rejection for “lack of support,” the board stated:

We agree with the Examiner that the broad limitations to “aryl” in claims 2, 4, and 8, “alkyl” in claims 8, 17, 40, 41, 42, 44, 45, 56 to 61, and 65, and “aliphatic” in claims 15, 31, 33, 38, 40 to 43, 56, 57, and 64 are not supported in their scope by the specification. [] * * * The “aryl” groups could be multiple rings, counting as many as twenty or more. Clearly this breadth is not shown to be supported by the original disclosure. Compounds having such complex configurations would not be expected to have even the imprecisely disclosed utility of forming valuable monomers. The same is true of the claimed “alkyl” radicals which may have unlimited chain lengths. Likewise, the “aliphatic” moieties include undisclosed acetylenic unsaturations or diolefinie unsaturations which may have undesirable reactions with the peroxides and may even cause polymerization in an unfavorable manner.
We find that the specification does not suggest by way of examples or otherwise that appellant believed all “aryl,” “alkyl,” and “aliphatic” groups would be operable in face of the substantial indications to one of ordinary skill in the art to the contrary. * There can be no patentable invention without utility, and the intended scope of invention cannot be properly ascertained without first ascertaining the utility. We do not believe it to be proper, however, to allow an applicant to prevent a determination of the intended scope by merely omitting a statement of utility. Were appellant to have originally disclosed the utility which he now urges, it is clear to us that the mutiple rings, al-kyl groups of unlimited chain length, and the presence of diolefinie and acet-ylinic unsaturations would interfere with the attainment of the suggested utility and thus render the claims beyond the scope of the invention as disclosed in the specification.

Opinion

I. Utility, How to Use, and New Matter.

In General Electric Co. v. Brenner, 132 U.S.App.D.C. 323, 407 F.2d 1258 (1968), the court considered the difficulties presented when applicants incorporate by reference information contained in other sources, such as patents, publications, etc. After reviewing the cases on the subject and the practicalities of the situation, the court concluded that the practice did indeed have longstanding basis in the law, and that necessarily the Commissioner of Patents is vested with wide discretion to formulate rules and guidelines governing its use, thereby to prevent its abuse.

Following the General Electric case, the Commissioner published guidelines with respect to incorporation by reference. 859 O.G. 346 (February 11, 1969), as amended, 861 O.G. 680 (April 15, 1969). Those guidelines have since been incorporated into MPEP § 608.-01 (p), which reads in pertinent part as follows:

Incorporation By Reference

An application for a patent when filed may incorporate “essential material” by reference to (1) a United States patent, or (2) an allowed U.S. application, subject to the conditions set forth below. “Essential material” is defined as that which is necessary to (1) support the claims, or (2) for adequate disclosure of the invention (35 U.S.C. 112). “Essential material” may not be incorporated by reference to (1) patents issued by foreign countries, to (2) nonpatent publications, or to (3) a patent or application which itself incorporates “essential material” by reference. * * *
* * * * * *
The filing date of any application wherein essential material is incorporated by reference to a foreign patent or to a publication will not be affected because of the presence of such reference. In such a case, as well as any other case which is not entitled to incorporate essential material by reference, the applicant will be required to amend the disclosure to include the material incorporated by reference. The amendment must be accompanied by an affidavit or declaration executed by the applicant, or his attorney or agent of record, stating that the amendatory material consists of the same material incorporated by reference in the- referencing application. [First emphasis ours.]

Appellant contends that his deletion of the cross references and replacement with the material cross referenced was the proper procedure, especially under the emphasized language.

Throughout the prosecution of this case the examiner and the board have made it clear that- the reason the saving language in MPEP § 608.01 (p) could not help appellant was the overriding requirement that the disclosure in the specification must be complete, i.e., it must satisfy the first paragraph of section 112, as of the filing date of the application. As noted above, the board suggested that a statutory basis for a requirement that the disclosure be complete as of that time exists in 35 U.S.C. § 111.

We find that the board’s position in the present case is very similar to the position taken by the Patent Office in In re Argoudelis, 58 CCPA 769, 434 F. 2d 1390 (1970). In that case, as here, the disclosure in the specification as filed was not sufficient by itself to enable one skilled in the art to make and use the invention. There too, the thing needed to complete the disclosure was referred to in the specification as filed, but was not available either to the public or to the Patent Office at the time of filing. Also, in both cases it is clear that there had been sufficient technological development to show that the invention was complete at the time of filing.

In Argoudelis, we rejected the board’s proposition that section 111 of the statute requires that the specification must be enabling as filed. 58 CCPA at 773-774, 434 F.2d at 1392. We again reject it. As this writer pointed out in a specially concurring opinion in Argoudelis, the function of section 112 in ensuring complete public disclosure is only violated if the disclosure is not complete at the time it is made public, i.e., at the issue date. 58 CCPA at 776-777, 434 F.2d at 1394-1395. Of course the separate requirement in 35 U.S.C. § 132, prohibiting the introduction of new matter into the disclosure, strictly limits what can be added to the application after its filing date. Further, for the satisfaction of the second aspect of section 112—that of establishing the filing date as the prima facie date of invention--“it is essential that there be no question that, at the time an application for patent is filed, the invention claimed therein is fully capable of being reduced to practice (i. e., that no technological problems, the resolution of which would require more than ordinary skill and reasonable time, remain in order to obtain an operative, useful embodiment).” Concurring opinion in Ar-goudelis, 58 CCPA at 777, 434 F.2d at 1395; see also the majority opinion, 58 CCPA at 774, 434 F.2d at 1393; both were cited with approval in In re Fouche, 58 CCPA 1086, 1089, 439 F.2d 1237, 1240 (1971). This effectively prevents applicants from patenting pipe-dreams.

In the present case, we find that all of the above requirements have been met, at least with respect to those claims which the Patent Office found appellant’s specification adequate to support. The other claims are dealt with below.

We find first that at least so much of the British applications as dealt with the contemplated utility for the present products in making monomers is not new matter within the meaning of 35 U.S.C. § 132. It was identified and specifically referred to for that information in the U.S. application as filed. Its introduction into the specification was no more the introduction of new matter than the introduction of the application serial number and filing date was in In re Fouche, supra. It is apparent from a consideration of MPEP 608.01 (p), supra, that the Commission would not have considered the material to be new matter if it had been “incorporated by reference to a foreign patent or to a publication * * * We agree with that analysis, but we do not see any valid distinction between those cases and the present one. Whether or not the material was secret at any particular time is irrelevant. The question is whether the later added material was “new” to the disclosure. We hold that it was not.

Second, again as to those claims which the Patent Office found to be adequately supported by the disclosure, we find that the material incorporated by reference does fairly disclose methods of using appellant’s compounds. This does not appear to have been questioned by the Patent Office. Since that disclosure is now fully a part of the specification there can be no question that, as of the issue date, the specification will fully disclose to those skilled in the art how to make and use the invention.

Third, this record clearly establishes that, at the time the application was filed, the invention claimed in the above-discussed claims was fully capable of being reduced to practice. There is no question that the specification as filed disclosed how to make the compounds, and methods of use for the compounds were disclosed in the applications which were filed in the British patent office prior to the filing date of the present application.

We would agree with the General Electric case, supra, that the Commissioner is vested with broad discretion to determine in what instances mere incorporation by reference is proper and in what instances the material incorporated must be added to the disclosure. However, in the present case, we find that the addition to the disclosure of the textual material originally incorporated by reference cured any defects it might have originally had as filed, and that the application is in compliance with section 112 of the statute. Accordingly, the rejection of claims 5-7, 9-14, 18-25, 27, 29, 30, 34-37, 39, 46-55, 66-69 and 71-75 must be reversed.

II. The Rejection Based on Lack of Support.

In response to the rejection based on lack of support, the appellant states:

The claims herein on appeal are effectively supported by the disclosure because the claims find direct antecedent basis in the disclosure * * *. Thus under In re Robins, 57 CCPA 1321, 429 F.2d 452, In re Marzocchi and Horton, [58] CCPA [1069], 439 F.2d 220, In re Camal and Rogier, 55 CCPA 1409, 398 F.2d 867, and In re Di Leone and Lucas, [58] CCPA [925], [436 F.2d 1404,] the claims are not unduly broad. Since they find full support in the disclosure as a whole, they are not properly reject able as unduly broad.
Moreover, appellants have stated what they consider to be their invention and the Patent Office has failed to come forward with so much as a single piece of prior art * * * which would suggest that any of the substituents embraced by the claims herein on appeal would not be operable. All which the record contains is a bare assertion from the Examiner that he questions whether all the sub-stituents embraced by the claims would be operable “in the face of the substantial indications to one of ordinary skill in the art to the contrary” * * *. The Examiner has completely failed to meet his burden of showing what these “substantial indications” are. An unsupported statement of the Examiner clearly fails to carry the requisite weight to hold appellant’s claims prima facie unpatentable as embracing inoperable embodiments. In re Miller, [58] CCPA [1182], 441 F.2d 689.
In In re Marzocchi, supra, we stated: [A] specification disclosure which contains a teaching of the manner and process of making and using the invention in terms which correspond in scope to those used in describing and defining the subject matter sought to be patented must be taken as in compliance with the enabling requirement of the first paragraph of § 112 unless there is reason to doubt the objective truth of the statements contained therein which must be relied on for enabling support. Assuming that sufficient reason for such doubt does exist, a rejection for failure to teach how to make and/or use will be proper on that basis; such a rejection can be overcome by suitable proofs indicating that the teaching contained in the specification is truly enabling.

We went on to say that in some cases it may be that “the well-known unpredictability of chemical reactions will alone be enough to create a reasonable doubt * * *" as to enabling support for a claim. Clearly it is incumbent on an applicant to “use some technique of providing teaching of how to use which is commensurate with the breadth of protection sought by the claim, * * In re Fouche, supra, 58 CCPA at 1093, 439 F.2d at 1242, see also In re Cook, 58 CCPA 1049, 439 F.2d 730 (1971).

On the other hand, as we said in Marzocchi, “it is incumbent upon the Patent Office, whenever a rejection on this basis is made, to explain why it doubts the truth or accuracy of any statement in a supporting disclosure and to back up assertions of its own with acceptable evidence or reasoning which is inconsistent with the contested statement.” We think the explanations of their doubts tendered by the board and the examiner in the present case show those doubts to be reasonable ones in view of the disclosed nature and utility of the compounds.

The point made by the board was that many of the substituents encompassed by the language complained of would “interfere with the attainment of the suggested utility * * Appellant points to no error in the board’s reasoning, but merely contends that it is unsupported by any citations of prior art. We have examined the whole record, and we find the board’s position to be reasonable. Certainly there is nothing in the British applications which would indicate that it is erroneous. Nor does appellant’s specification contain any such indications, either in the form of statements which would point out errors in the board’s logic or in the form of representative examples. In this last regard, the examiner pointed out:

[I]t should be noted that applicant does not exemplify any alkyl group higher than propyl, and that, for aryl, only phenyl is exemplified.
Re “aliphatic” although applicant modifies this term with a carbon atom limitation, it is to be noted that the examples show only saturated hydro carbon radicals. Yet “aliphatic” reads on olefinic and acetylenic radicals, as well as radicals containing any possible substituents.

For the above reasons, the rejection of claims 2, 4, 8, 15, 17, 31, 33, 38, 40-4.5 and 56-65 is affirmed.

In summary, the rejection of claims 2, 4, 8, 15, 17, 31, 33, 38, 40-45 and 56-65 is affirmed. The rejection of claims 5-7, 9-14, 18-25, 27, 29, 30, 34-37, 39, 46-55, 66-69 and 71-75 is reversed.

Modified.

      . Serial No. 651,969, filed July 10, 1967.

      . The board also lumped claims 62 and 63 in with this rejection, saying that they were “clearly defective.” Claim 62 recites “[t]he process according to claim 2 wherein the temperature is from —10° C to +10° C.” Claim 2 recites neither a process nor a temperature, and it appears from the progression of the claims that claim 62 was meant to depend from one of the process claims 58-60 rather than from claim 2. Claim 63 depends from claim 62 and thus suffers the same infirmity. We agree that the claims are clearly defective and thus affirm this rejection.


source: Caselaw Access Project

license: Public Domain

text:
    Application of Edwin George Edward HAWKINS.
    Patent Appeal No. 9099.
    United States Court of Customs and Patent Appeals.
    Aug. 23, 1973.
    Jacobs & Jacobs, New York City, attorneys of record, for appellant. Albert L. Jacobs, Jr., New York City, of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D. C., of counsel.
    Before, MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.
   BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals, sustaining the examiner’s rejection of Claims 1, 4-10, 12, 14-19 and 25, all of the claims in appellant’s application.

This appeal is a companion to In re Hawkins, Oust. & Pat.App. 486 F.2d 569 (1973), decided concurrently herewith.

The Invention

All save one of the claims are directed to processes for the production of certain derivatives of alkane-a, w-dioic acids, made by the decomposition of pero-xy-amines, such as the peroxy-amines of In re Hawkins, supra. The remaining claim recites one of those derivatives. Claim 1 is sufficiently representative:

1. A process for the production of a derivative of an alkane-a, w-dioic acid having nitrogen bound to the w-carbon atom which comprises heating a compound of the formula

wherein R1 to R60 are lower alkyl of 1 to 10 carbon atoms or hydrogen in the vapor phase at a temperature of from about 300° C. to about 1000° C.

Opinion

The similarity between the present case and Hawkins, supra, will be apparent from a consideration of the board’s summary of the prosecution history of the present application:

The application as originally filed twice referred to five British applications for the starting materials. By preliminary amendment (Amendment A, Paper No. 5, filed March 4, 1968), appellant inserted at the two points where the five British applications were mentioned a cross-reference to U.S. application Serial No. 651,969, stated to correspond to said British applications. Thereafter all cross-references were cancelled and an insertion of approximately 37 pages was made in the specification (Amendment B, Paper No. 7, filed December 12, 1969). This last amendment was accompanied by an affidavit or counsel for appellant averring that the inserted material corresponds to the disclosure of the five British applications originally cross-referenced.

As in Hawkins, the rejection of the present claims is under 35 U.S.C. § 112 as based on an inadequate original disclosure, and under 35 U.S.C. § 132 is based on new matter. In the present case, the rejection is based on an alleged lack of sufficient disclosure of how to make the necessary starting materials.

This case thus presents no new issue as compared with Hawkins, supra. In that case we held that the Commissioner, in accordance with his duty to insure a complete public disclosure, may require that material which is incorporated by reference in an application, be inserted into the application. We also held, however, that assuming that the specification is sufficient after that cross-reference material has been inserted, the statute is satisfied. Here the board conceded that the disclosures in the British applications referred to are “technological teachings meeting the statutory requirement.” We agree, and therefore find that the specification as it now stands satisfies the requirements of 112, and that the insertion of the material cross-referenced is not new matter within the meaning of 35 U.S.C. § 132. Accordingly, the decision of the board must be reversed.

Reversed.

      . Serial No. 664,594, filed August 11, 1967.


author: BALDWIN, Judge. MARKEY, Chief Judge

text:
    Application of Edwin George Edward HAWKINS.
    Patent Appeal No. 8766.
    United States Court of Customs and Patent Appeals.
    Aug. 23, 1973.
    Jacobs & Jacobs, New York City, attorneys of record, for appellant. Albert L. Jacobs, Jr., New York City, of counsel.
    S. Wm. Cochran, Washington, D.C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D.C., of counsel.
    Before MAKKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.
   BALDWIN, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals sustaining the examiner’s rejection of claims 1, 3-25, and 27-31, all the claims remaining in appellant’s application. The subject matter of the present claims is closely related to the subject matter of the claims contained in In re Hawkins Cust. & Pat.App., 486 F.2d 569 (1973), decided concurrently herewith. Knowledge of the contents of the opinion in Hawkins is presumed

The Invention

The invention in Hawkins, supra, concerns certain peroxy-amines and methods for their preparation. The present invention relates to a process for the production of lactams which involves decomposition of peroxy-amines, such as those peroxy-amines disclosed in Hawkins. That process was generally described in the specification, as filed, as follows:

The present invention relates to a process for the production of lactams. Lactams may be polymerised to give useful polymers, e. g. caprolactam may be polymerised to give nylon-6.

According to the present invention the process for the production of lactams comprises heating in the liquid phase a compound of formula

where X, X' are divalent aliphatic radicals, which may be the same or different, to decompose it to lactam.

Compounds of formula (IV) are described in copending British Application 31380/66, 9963/67, 9973/67, 23546/67, 23547/67 cognate.

Claim 1 is representative:

1. The process for the production of lactams which comprises heating in the liquid phase a compound of formula

wherein X and X' are divalent aliphatic moieties of 4 to 11 carbon atoms which may be the same or different, to a temperature in the range of from 40° C to 200 °C to decompose it to a lactam.

With regard to the method by which the peroxy-amines used in the process are obtained, besides the specific references to the British applications, the following general statement was contained in the specification as filed:

Thus in the production of peroxy-amines by reaction of cyclic ketones, hydrogen peroxide and ammonia, the peroxyamine often separates as an oil layer, containing also unchanged ke-tone, from the aqueous reaction medium.

The preparation of four specific peroxy-amines was described in language of which the parenthesized language in the following quote is typical:

Thus, 3,3'-dimethyl-l,l'-peroxy-dicy~ clohexylamine
* * -X- -X- -X- *
(which may be produced, probably as a mixture of stereoisomers, by reaction of 3-methylcyclohexanone with hydrogen peroxide and ammonia) can be decomposed to give 3-methyl capro-lactam and 5-methyl caprolactam.

The other specific peroxy-amines for which methods of preparation were so described are 4,4'-dimethyl-1,1'-peroxy-dicyclohexylamine, 3,3,3',3',5,5'-hexamethyl-1.1'-peroxydicyclohexylamine, and 1.1'-peroxydicyclopentylamine.

The Rejection

The examiner rejected all of the claims under 35 U.S.C. § 112 for failure ' to disclose how to make the necessary peroxy-amines. The examiner considered such statements as quoted above to be insufficient to tell how the starting materials are prepared since no conditions, solvents, catalyst, etc. are included. The examiner further considered the reference to the British applications to be insufficient to complete the disclosure.

Appellant responded to the examiner’s rejection by amending his specification following the above-quoted reference to the British applications by inserting “corresponding to U.S. Serial No. 651,969 [hereinafter ’969].” Application ’969 is the application involved in the Hawkins case, supra. Additionally, appellant submitted certified copies of the five British applications referred to in the above quote.

The examiner objected to the insertion of the U.S. serial number as being new matter and rejected the claims additionally under 35 U.S.C. § 132.

The board agreed with the examiner that the present application did not contain a sufficient disclosure of how to make the necessary starting materials. The board held that the original cross-references to the British applications in conjunction with the later submission of the certified copies of those applications was not sufficient to supply the necessary disclosure. The board also considered the insertion of the cross-reference to the U.S. application to be new matter.

After the decision of the board, appellant submitted a request for reconsideration, together with an amendment which was similar to that submitted in In re Hawkins, supra, i. e., it contained the textual material from the British applications referred -to in the specification as filed. The amendment was accompanied by an affidavit of appellant’s attorney to the effect that the amendment corresponds to the text of the British applications, with some minor, noted exceptions. The application was remanded to the examiner for consideration of the proposed amendment. The examiner refused entry of the amendment. In spite of the refusal to enter the amendment, appellant requested the board to consider it in its reconsideration of the case. However, in the board’s view it was not within its jurisdiction to rule on the propriety of an examiner’s refusal to enter an amendment. The board added that “in any event, the entry or non-entry of the amendment would not effect our decision on sufficiency of disclosure * *- *” for reasons the board held such an amendihent not to be sufficient in the Hawkins case.

Opinion

Appellant’s first contention is that the original cross-reference in his specification to the British applications coupled with the submission of a certified copy of each application is sufficient assurance that the disclosure of the instant case would be sufficient and further insured that upon issuance of a patent all the necessary information relating to the production of the starting materials used in this process would be readily available to the public. Appellant contends that once the British applications were supplied the case stood in no different posture than a case con-taiia cross-reference to a United Stat application. We must disagree. As we held in Hawkins, supra, the specification must be fully enabling as of the issue date, and the Commissioner has a great deal of discretion to determine when the cross-referenced subject matter must be included in the case in order to comply with section 112. There can be no question that if the application as it now stands were passed to issue, the specification would not enable those skilled in the art to make the necessary starting materials. Nor does the specification indicate that a copy of the cross-referenced British applications can be found in the application file.

Appellant next takes a position that “the presence in the Specification as Filed of the British Application Numbers, uniquely identified one and only one United States case.” Appellant states:

Appellant respectfully submits therefore that the insertion of the serial number of his prior file and co-pending United States application does not constitute new matter by virtue of the presence in the application as filed of his British priority document numbers of said United States application.

The board responded to this argument as follows:

We do not agree that the British application numbers can be regarded merely as a means of identifying the U.S. application number and that no more than a clerical change is required to change the former to the latter. Most important to this conclusion is the fact that this application as originally filed contained no hint of cross-referencing to a previously filed U.S. application. This is not a case where the third paragraph on page 2 of the specification originally read:
“Compounds of formula (IV) are scribed in copending U. S. application Serial No. corresponding to British Application 31380/66, 9963/67, 9973/67, 23546/67, 23547/67 cognate.”

As the board noted, the present application as filed contained no cross-reference to any previously filed U.S. application. We agree with the board that the introduction of such a cross-reference was new matter within the meaning of 35 U.S.C. § 132.

Appellant also contends that no cross-references to any other applications were really necessary because the specification as filed contains sufficient disclosure of how to make the required starting materials. We find no need to belabor the points made by the board. Suffice it to say that the board, after reviewing the specification before us as well as that of application No. 651,969, quite correctly concluded that in order to make the peroxy-amines “much more disclosure is necessary than merely stating that the starting material is derived from the appropriate cyclic ketone, hydrogen peroxide and ammonia.”

Finally, appellant contends that we should consider the amendment which was refused entry by the examiner. Appellant does not take the position that it is within our jurisdiction to require entry of the amendment but states that “since the Board decided that even were the amendment to have been entered, its decision would not have been affected, it is clear that the Board must have considered the amendment.” It is not clear what appellant wishes us to do with the amendment. We have held in Hawkins, supra, that a similar amendment was sufficient in that case to place the specification in compliance with section 112. Presumably, appellant can refile the present case and resubmit the proposed amendment for the consideration of the examiner. We have found it unnecessary to our decision to consider the proposed amendment.

For the reasons stated above, the decision of the board is affirmed.

Affirmed.

MARKEY, Chief Judge

(dissenting).

With all respect, I must dissent from the holding of the principal opinion that an amendment to include a cross-reference to a previously filed copending U.S. application, which U.S. application corresponds to incorporated foreign applications, constitutes the introduction of new matter.

The disclosure of the foreign applications was specifically incorporated by reference at the time of filing the present application. The U.S. application corresponding to that disclosure was already pending in the Patent Office. Allowing appellant to amend his specification to introduce the disclosure per se but not the simpler cross-reference to the U.S. application appears inconsistent. In either case the amendment merely adds knowledge which the applicant obviously had in his possession at the time of filing, knowledge which had been presented both in the foreign and U.S. Patent Office, and knowledge which was referred to in the application at the date of filing.

Requiring a further and specific “hint” that a corresponding U.S. application was in existence, by the insertion of a blank for the same at the time of filing, appears to be an unnecessary additional criterion.

      . Serial No. 667,061, filed September 12, 1967.


text:
    Application of Hans HENECKA and Hans Werner Schubert.
    Patent Appeal No. 8771.
    United States Court of Customs and Patent Appeals.
    Aug. 23, 1973.

      Jacobs & Jacobs, New York City, attorneys of record, for appellants. Albert L. Jacobs, Jr., New York City, of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.
   BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals sustaining the examiner’s rejection of claims 1-10, all of the claims in appellants’ application. As will be seen the legal issues presented here are substantially identical, with the issues presented in In re Hawkins, Cust. & Pat.App., 486 F.2d 579 (1973) (hereinafter Hawkins II).

The invention relates to processes for production of certain benzomorphan derivatives. Claim 1 is representative:

1. A process for the production of benzomorphan derivatives of the formula:

which comprises cyclizing a compound of the formula:

wherein

R is alkyl, aryl or aralkyl,

R' is hydrogen, alkyl, aryl or aralkyl,

R" is alkyl, and R''' is hydrogen, hydroxyl, alkoxy, alkyl, halogen, amino or substituted amino,

and recovering the cyclized product.

As in Hawkins II, the rejection involves 35 U.S.C. § 112 and § 132, and is based on failure of the original specification to sufficiently disclose how to obtain the starting materials necessary to make the claimed compounds. The prosecution history of the present case was summarized by the board as follows:

As originally filed, the present application stated * * *:

“A wide variety of the derivatives of N-alkyl-2-benzly-4-hydroxypiperidines employed according to the invention as the preliminary stages for their eyclization to form 6, 7-benzomorphanes has become readily available in accordance with German Patent No......... (Application F 45 378 IV d/12p) starting from ß-γ-unsaturated nitriles.”

A certified copy and sworn translation of this German application was made of record on January 6, 1969 (Paper No. 7). According to appellants, the original cross-referencing plus the filing of the certified copy and sworn translation makes the necessary disclosure readily available to the public. * * •» * * ’ #

The point most vigorously argued by appellants is that it was proper for them to make the following insert by amendment in line 17 on page 2 of their specification:

"and U.S. application 529,642 filed February 24,1966.”

That application was filed about four months prior to the filing of the present application.

This amendment raises the issue of new matter.

As a further parallel to Hawkins II, appellant submitted a proposed amendment containing a certified translation of the text of the German application referred to above, together with an affidavit by appellants’ attorney to the effect that the proposed amendment corresponds to the text of the German application incorporated by reference, which amendment was not entered. It was submitted after the mailing of the examiner’s answer, but prior to the hearing at the board. The board remanded the case to the examiner who refused entry of the amendment. Appellant urged the board to reverse the examiner on that point but the board refused to, stating that it was not within the board’s jurisdiction to rule on the propriety of an examiner’s refusal to enter an amendment.

In accordance with our holdings in Hawkins II, we hold that the reference to the German application in conjunction with the placing of a certified copy of that application in the file is not sufficient to place the present application in compliance with the requirements of section 112. We also hold that the insertion of the reference to the U.S. application was new matter. Appellants argue that the disclosure in the specification as filed that the starting materials are “readily available * * * starting from P-Y-unsaturated nitriles,” would be sufficient to teach those skilled in the art how to make the necessary starting materials. The board considered that the meager disclosure was wholly insufficient to teach the preparation of the necessary starting materials, and appellant has not advanced any convincing arguments to the contrary.

The decision of the board is affirmed.

Affirmed.

MARKEY, Chief Judge

(dissenting).

I respectfully dissent for the reasons set forth in my dissent in In re Hawkins, Cust. & Pat.App., 486 F.2d 579.

      . Serial No. 559,079, filed June 21, 1966.


author: ALMOND, Senior Judge.

text:
    Application of Louis G. IMPERATO, Jr.
    Patent Appeal No. 9114.
    United States Court of Customs and Patent Appeals.
    Nov. 15, 1973.
    Eugene F. Buell, Buell, Blenko & Zie-senheim, Pittsburgh, Pa., atty. of record, for appellant.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Robert D. Edmonds, Washington, D. C., of counsel.
    Before RICH, BALDWIN, LANE and MILLER, Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Patent Office Board of Appeals affirming the examiner’s rejection, under 35 U.S.C. § 103, of claims 1-5 of appellant’s application entitled “Lump Ore Products and Methods of Making Same.” We reverse.

According to the record, low grade ores, from which refined metals are obtained, must be upgraded by a “benefi-ciation” process before they can be employed in metallurgical furnaces. The beneficiation process involves grinding the ore to a finely divided state in order to facilitate the removal of impurities. However, the fineness of the upgraded ore reduces its usefulness in the metallurgical process to which it is submitted in order to recover the refined metal. Therefore, the finely divided ore is formed into lumps of sufficient size to be efficiently employed in a metallurgical furnace, e. g., a blast furnace.

One process for making lump ore from a finely divided ore is known as the “carbonate bond process.” It involves combining the finely divided ore with an oxide or hydroxide of an alkaline earth metal, oxides and hydroxides of calcium and magnesium are commonly used, and up to 10% water. The mixture is formed into lumps by known procedures and then treated with carbon dioxide gas to convert the metal oxide or hydroxide to the corresponding carbonate. Appellant’s invention, an improvement of this basic process, involves adding free sulfur to the finely divided ore before the carbon dioxide treatment. Claims 1 and 4, the only independent claims in the case, are representative:

1. A low temperature method of making ore aggregates such as lumps and pellets having high strength at elevated temperatures comprising the steps of:
(a) admixing finely divided metal containing ore with one of the group consisting of oxides and hydroxides of an alkaline earth metal, a small amount of free sulfur and sufficient water to form the mass into aggregates ;
(b) forming the mixture into aggregates ;
(c) reducing the moisture level in the aggregates below 10%;
(d) subjecting the formed aggregates to an atmosphere of carbon dioxide until a substantial portion of the alkaline earth metal is converted to alkaline earth carbonate in situ; and
(e) -removing the formed aggregates to the atmosphere for storage and use.
(4) A lump ore product consisting essentially of a finely divided metal containing ore, a small amount of free sulfur, less than 10% water and a bond of alkaline earth carbonate formed in situ.

Claims 2 and 3, which depend from claim 1, and claim 5, which depends from claim 4, add limitations not pertinent to our resolution of this appeal.

According to appellant, the lump ore obtained by use of his invention has strength characteristics at low temperatures similar to that obtained by the basic carbonate bond process. However, at high temperatures his lump ore has up to 45% higher strength than an ore obtained by the prior art process.

Rejection

The board affirmed the examiner’s rejection under § 103 based on combinations of the following references:

Amberg 2,844,457 July 22,1958 Schaefer et al.

(Schaefer) 3,027,251 March 27,1962 Johnson et al.

(Johnson) 3,370,936 February 27,1968

Russo (Canadian patent) 730,091 March 15,1966

Bell 3,503,734 March 31,1970

Amberg and Johnson disclose the basic carbonate bond process described above. Schaefer discloses a process for pelletizing metal ore, particularly pyrites, which involves treating the ore with free sulfur (1-10% is said to be effective), heating the mixture to a temperature above the melting point of sulfur, and then cooling it.

Russo describes a process for fashioning articles from finely divided ferrous material. The usual process involves compacting the iron powder with a small amount of graphite and a lubricant at high pressures (50-60,000 psi) and high temperatures (about 2050° F.) for approximately thirty minutes. Russo found that by incorporating free sulfur in the mixture prior to the molding operation, a finished article having higher rupture strength could be obtained.

Bell describes a relatively complex process for treating iron containing ores of the type known as “lateritic” ores. These ores are complex mixtures of metal oxides which contain valuable amounts of the oxides of iron, nickel and/or cobalt. The other principal ingredients of these ores are the oxides of magnesium, aluminum and silicon.

The basic process involves grinding the ore and combining it with a reducing agent. This composition is pelle-tized and heated under conditions whereby all the nickel and cobalt oxides and up to 92% of the iron oxide are reduced to form the free metal. At the temperature selected for the reduction, the free metals coalesce within a pellet into particles of iron alloyed with the nickel and cobalt. The pellets are then ground and the iron particles magnetically separated from the nonreduced portions of the ore.

The process is not without a serious problem since at the operating temperature the pellets soften and adhere to each other and the walls of the vessel. To avoid this, Bell adds a refractory oxide to the ground ore before pelletization. When such a pellet is heated, the softened ore coacts with the refractory oxide to form a hard coating about the pellet. This coating does not soften thereby stabilizing the pellet at high temperatures and preventing it from adhering to other pellets and the vessel.

Bell also discloses that free sulfur may be added to the pellet as an optional ingredient. Its function is to improve the coalescence of the free metals into particles.

In view of this art, the board succinctly stated its conclusions regarding the propriety of the rejection in the following way:

Claims 1 through 5 were finally rejected under 35 U.S.C. § 103 as unpat-entable over either Johnson et al. or Amberg in view of either Russo and Schaefer et al. We agree with this rejection. Appellant is claiming £ process and product in which free sulfur and alkaline earth carbonates are used as bonding agents in metal containing ore aggregates. Both Johnson et al. and Amberg teach the carbonate bonding process for metal containing ore aggregates. Both Russo and Schaefer et al. teach the use of free sulfur as a bonding agent in metal containing ore aggregates. In the Russo and Schaefer et al. processes the aggregates are fired or sintered at elevated temperatures. It would be within the skill of a routineer in this art, in view of the references, to use both the free sulfur and the carbonate bonding agents in order to produce metal containing ore aggregates having high strength at elevated temperatures. There is nothing to show that appellant’s result of high strength at elevated temperatures is anything but the aggregate effect of the two bonding agents. In the absence of a showing of unexpected or synergistic result, we will sustain this rejection.

A separate rejection under § 103 of claims 4 and 5 over Bell in view of Johnson was also affirmed. The board said, “ * * * we consider these references as merely cumulative evidence as to the obviousness of appellant’s product.”

Opinion

We think the board’s decision must be reversed. Appellant alleges, and his specification supports the conclusion, that the addition of sulfur to the basic carbonate bond process results in an enhancement of the strength of the lump ore at high temperatures. The board does not dispute the allegation but dismisses it as being merely the aggregative effect of combining sulfur with the carbonate bond process. In our view, this conclusion is not supported by the record.

With regard to the principal rejection, we agree that combining the teaching of Schaefer with that of Johnson or Amberg would give the beneficial result observed by appellant. However, the mere fact that those disclosures can be combined does not make the combination obvious unless the art also contains something to suggest the desirability of the combination. In re Bergel, 48 C.C.P.A. 1102, 292 F.2d 955 (1961). We find no such suggestion in these references.

Schaefer does teach that sulfur can be used as a bonding agent for finely divided ore. However, his disclosure also reveals that at high temperatures the sulfur is burned away and the lump ore loses strength. To overcome this problem, he would incorporate into the pellet a known high temperature bonding agent such as bentonite. According to Schaefer, bentonite is a clay material and unsatisfactory as a low temperature bonding agent.

Contrast this teaching to what appellant has done. He combines two processes known to result in lump ore having high strength at low temperatures but not at high temperatures, yet obtains a lump ore having improved strength in both situations. We consider this to be unexpected and unobvious in view of the art despite the board’s contention to the contrary. In fact, we think that the art suggests that no de sirable effect would result from the combination as Schaefer teaches that the sulfur will be burned away as the temperature is raised and, therefore, would contribute nothing to the combination.

We do not think that one skilled in the art would be led by the teachings of Russo to employ sulfur in the carbonate bond process. In the first place, Russo uses sulfur in a high temperature molding process employed to make finished articles of high strength from iron powder. The reference does not suggest that this strength is improved at high temperatures such as are encountered in the metallurgical processes for which lump ore is useful.

Secondly, there is nothing in the record to suggest that the problems of powder metallurgy in any way resemble those of lump ore preparation. Therefore, if Russo would suggest that sulfur improves the strength at high temperatures of articles molded from iron powder, we think one skilled in the art would not view this to be significant in view of the contrary suggestion in Schaefer, a more pertinent reference, concerning the effect of adding sulfur to a metal ore.

In view of all the art of record, we also believe that the secondary rejection of claims 4 and 5 cannot be sustained. At the outset, we note that Bell’s basic goal was to improve the high temperature performance of the pellets and that free sulfur was merely an optional agent not essential to this purpose. However, in view of Schaefer’s disclosure that free sulfur is an adequate agent for imparting low temperature stability to ore pellets, the art does not appear to suggest that there would be any advantage to be obtained by using the carbonate bond process with Bell’s pellets if they also contain sulfur. In the absence of such a suggestion, we conclude that the combination would not have been obvious.

For the foregoing reasons, we hold that the claimed invention would not have been obvious to one skilled in the art at the time it was made. Accordingly, the board’s decision is reversed.

Reversed.

      . Serial No. 797,825 filed February 10, 1969.

      . Strength of lump ore is a measure of its resistance to disintegration back to a finely divided state.


author: MARKEY, Chief Judge. BALDWIN, Judge

text:
    Application of Gerhard WOLFRUM and Heinrich Gold.
    Patent Appeal No. 8882.
    United States Court of Customs and Patent Appeals.
    Nov. 1, 1973.

      Earl L. Tyner John J. F. Matthews, Plumley & Tyner, Arlington, Va., attorneys of record, for appellants.
    Michael G. Gilman, New York City, amicus curiae.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jack E. Armore, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.
   MARKEY, Chief Judge.

This appeal is from the decision of the Board of Appeals affirming the rejection under 35 U.S.C. § 112 (second paragraph) of claims 11 and 12 of appellants’ application, serial No. 591,141, filed November 1, 1966, for “Azo Dyestuffs.” We reverse.

The Invention

The invention relates to novel azo dyestuffs which may exist in both the tertiary amine form (water-insoluble) and the quaternary salt form (water-soluble). Conversion from one state to the other is said to be a well known basic reaction.

Claim 11 covers both forms:

11. An azo dyestuff selected from the group consisting of

wherein R stands for hydrogen or methyl; Ri is a member selected from the group consisting of chloro, bromo, lower alkyl, trifluoro lower alkyl, lower alkoxy, and aeetylamino; m is an integer from 0 to 2; R2 stands for hydrogen, lower alkyl, or substituted lower alkyl, wherein the substituents are selected from the group consisting of cyano and ethoxy carbonyl; R3 and R4 are independently selected from the group consisting of hydrogen, lower alkyl, lower alkoxy methyl, phenyl, chlorophenyl, bromophenyl, lower alkyl phenyl, carboxylic acid, carbolower al-koxy; Rn is selected from the group consisting of lower alkyl and benzyl; A is selected from the group consisting of phenyl, substituted phenyl, thi-azol (1, 3)-2-yl, 5-nitro thiazol (1, 3)-2-yl, benzothiazol (1, 3)-2-yl, 6-chloro benzothiazol (1, 3)-2-yl, 6-ethoxy

benzothiazol (1, 3)-2-yl, 3-phenyl-thiadiazol (1, 2, 4)-5-yl, and triazol (1, 2, 4)-3-yl, wherein the substituents on said phenyl radical are members of the group consisting of halogen, lower alkyl, lower alkoxy, nitro, cyano, car-boxy trifluoromethyl, carboxy lower alkyl, sulphoxy lower alkyl, carbona-mide, lower alkyl carbonamide, dilower alkyl carbonamide, sulfonamide, lower alkyl sulfonamide, and dilower alky sulfonamide; X stands for an anion; and wherein the alkyl groups contain from 1-4 carbon atoms; said dyestuff being free of sulphonic acid groups.

Claim 12 is restricted to the tertiary amine species.

The Rejection

Appellants originally submitted separate claims to the tertiary amine compounds and the quaternary ammonium salts. Restriction to one of these forms was required by the examiner on the basis of diverse utilities, the water-soluble quaternary salts being considered “distinct” from the insoluble dyestuffs of the intermediate tertiary amine form. An election was also required between the species “of patentably distinct in-

ventions” wherein the diazo component was phenyl-thiadiazol and substituted phenyl. The required elections of inventions and species were made with traverse and submission of additional claims, including claim 11 which presented the two forms as members of a Markush group. The examiner then rejected claims 11 and 12 under the second paragraph of 35 U.S.C. § 112 because of the combination of forms previously held subject to restriction (claim 11) and the combination of phenyl and thiazole diazo components (both claims).

Appellants then petitioned the Commissioner under Rule 144, seeking reversal of the underlying restriction requirement. The petition was denied and the matter of the allegedly improper Mar-kush groupings went to appeal. In the Examiner’s Answer the position was set forth that the two groupings lacked the “requirements of proper Markush formulation,” these “requirements” being that “the whole compounds [must] enjoy a recognized community of physical or chemical characteristics not repugnant to scientific classification coupled with utility.”

The board found it unnecessary to go into any discussion of prior decisions on Markush practice and instead stated the issue simply as “whether or not a plurality of inventions, which could not be separately claimed in a single ease, could be claimed together in one claim.” The question of whether the “inventions” were properly subject to restriction was said to have been “settled by the examiner’s ruling and the decision on petition * * * "

The board then went on to sustain the rejection, holding:

* * * We believe that under 35 U.S.C. 112 an appellant does not definitely and accurately point out his invention when he assembles a plurality of different inventions in a single claim. * * *

OPINION

Appellants’ basic contention is that the second paragraph of 35 U.S.C. § 112 merely states that the specification shall conclude with one or more claims “which clearly and distinctly describe the invention which the applicant believes he invented” and provides no authority for rejecting a claim on the basis of an “arbitrary” Patent Office determination that the. claim contains a plurality of inventions.

We agree. In recent years this court has fully set forth the statutory requirements of § 112. The first sentence of the second paragraph in particular has been construed as a requirement that applicant “particularly point out and distinctly claim the subject matter sough to be patented.” In re Borkowski, 422 F.2d 904, 909, 57 CCPA 946, 951, (1970). Under this provision of § 112, the scope of the subject matter is governed not by the examiner’s conception of the “invention” but by that “which the applicant regards as his invention.” When the boundaries of the patent protection sought are so limited, the only concern under the second paragraph of § 112 must be directed to the preciseness and definiteness of the claim language employed. In re Borkowski, supra; In re Wakefield, 422 F.2d 897, 57 CCPA 959 (1970); In re Swinehart, 439 F.2d 210, 58 CCPA 1027 (1970).

Thus a determination by the Patent Office that earlier, separate claims encompass a “plurality of different inventions” cannot serve, under § 112, as the basis for a rejection of a later combined claim. An applicant is free under that provision to set the metes and bounds of “his invention” as he sees them. Subsequent compliance with an Office restriction requirement with traverse cannot be considered a voluntary realignment of the claim boundaries or a concession that more than one invention was originally claimed. Whether a plurality of inventions had been claimed was not “settled” by the restriction requirement and the denial of the petition, the present appeal having in effect kept that issue alive. Appellant remained free to regard the claimed subject matter as his invention.

The solicitor argues that “[a]lthough the stated statutory basis for rejection cited by the examiner and the Board was 35 U.S.C. § 112 (second paragraph), the rationale of the rejection implicitly also encompasses the provisions and mandate of 35 U.S.C. §§ 101 and 121.” We do not agree. The rejection before the board was made under 35 U.S.C. 112, second paragraph. Our review is of the board’s decision on that rejection. The ramifications of the application of sections 121 and 101 to a single Markush type claim allegedly containing a plurality of inventions is not here before us. See In re Haas, P.A. 9136, decided of even date.

The decision of the board is reversed.

Reversed.

BALDWIN, Judge

(concurring).

The board stated that the issue raised was “whether or not a plurality of inventions, which could not be separately claimed in a single ease could be claimed together in one claim.” The board answered the question in the negative stating “[w]e believe that under 35 U.S.C. § 112 an appellant does not definitely and accurately point out his invention when he assembles a plurality of different inventions in a single claim.”

The phrase “could not be separately claimed in a single case” does not precisely describe the situation, and overly rigidifies the rule of law put forth by the board. Under the statute, specifically section 121, any number of inventions can be claimed in the same application even though they be wholly independent and unrelated to each other and patently, as well as patentably, distinct, if the Commissioner does not require restriction between them. The more precise question is whether independent and distinct inventions may be claimed in the same claim without violating section 112. The board’s position appears to be that if the two inventions are independent and distinct, ipso facto, claims covering both of them are indefinite and inaccurate. I cannot agree with that proposition. Assuming arguendo that the claims before us cover independent and distinct inventions, no reason has been put forth or is apparent why that fact renders them inaccurate or indistinct as to their meaning or as to what they cover. I therefore agree that the rejection before us should be reversed.

      . 35 U.S.C. § 112, second paragraph, reads: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. A claim may be written in independent or dependent form, and if in dependent form, it shall be construed to include all the limitations of the claim incorporated by reference into the dependent claim.

      . Throughout the prosecution of this case appellants have strenuously contended that the tertiary amines and the quaternary amines are not independent. While the issue of “patentable distinctness” was dealt with by the examiner, the only reasoning in the record before us as to why they might be independent, the other requirement of 85 U.S.C. § 121, is a statement that “[s]pecies are ordinarily considei'ed independent inventions * * * ” in the decision on appellants' petition to the Commissioner under Patent Office Hule 144. This opinion assumes that they are independent within the meaning of the statute purely for the sake of argument, and no decision on the merits of that issue is intended to be implied.


author: PER CURIAM.

text:
    HUGHES TOOL COMPANY, a Delaware corporation, Plaintiff-Appellee, v. John H. MEIER and John R. Suckling, Defendants-Appellants, Anthony Hatsis et al., Defendants.
    Nos. 73-1234, 73-1235.
    United States Court of Appeals, Tenth Circuit.
    Argued and Submitted Sept. 11, 1973.
    Decided Oct. 23, 1973.
    Edward W. Clyde, Salt Lake City, Utah, Howard M. Jaffe, New York City, James L. Wadsworth, Las Vegas, Nev., D. Martin Cook, Los Angeles, Cal., for plaintiff-appellee.
    Christensen, Gardiner, Jensen & Evans, Salt Lake City, Utah (L. R. Gardi-ner, Jr., Salt Lake City, Utah, on the brief), and Wyshak & Wyshak, Los Ange-les, Cal. (Robert H. Wyshak, Los Angeles, Cal., on the brief), for defendant-appellant John H. Meier.
    Decastro, West & Chodorow, Inc., Los Angeles, Cal. (Mark D. Pastor, Los An-geles, Cal., on the brief), Nielsen, Con-der, Hansen & Henriod, Salt Lake City, Utah (W. Eugene Hansen, Salt Lake City, Utah, on the brief), for defendant-appellant John R. Suckling.
    Before CLARK, Associate Justice, LEWIS, Chief Judge, and HILL, Circuit Judge.

       Associate Justice, United States Supreme Court, Retired, sitting by designation.

   PER CURIAM.

This interlocutory appeal, pursuant to Section 1292(b) of the Judicial Code [28 U.S.C. § 1292(b) (1971)], tests the availability to Hughes Tool Company, appellee, of Utah’s long arm statute, Utah Code Ann. § 78-27-22, et seq. (Supp.1973) to acquire in personam jurisdiction over appellants who are nonresidents of Utah. Appellee is a Delaware corporation with its principal place of business in Texas and with a valid permit to do business in Utah. Appellants contend that Utah’s long arm statute by its own terms is restricted to use by plaintiffs who are citizens of Utah. On motions to quash service and to dismiss, , the trial court decided that Utah’s long arm statute was available to appellee, but it allowed this interlocutory appeal since disposition here might be dispositive of the case. Thereafter this court i-estricted the appeal to the issue “Relating only to non-residency of the foreign corporation and not including, at this stage of the appeal, the question of sufficiency of contacts for jurisdiction over the appellants.”

1. Background of the Litigation:

The appeal comes here on the pleadings and the stipulation of the parties. Appellee claims that appellants Meier and Suckling conspired with Anthony Hatsis, Toledo Mining Company and Globe, Incorporated, all of whom are citizens of Utah and other named parties who are nonresidents of that state but are not parties to this appeal. The gist of the alleged conspiracy was to sell ap-pellee certain mining properties, located in Nevada, for amounts of money far in excess of their value by corrupting ap-pellee’s trusted agents to forsake their duties and to participate in the scheme to defraud appellee.

Appellee brought suit pursuant to 28 U.S.C. § 1332 (1971) seeking an accounting and restitution. Meier and Suckling moved separately to quash service and dismiss on various grounds, one of which was that Utah’s long arm statute could not be used by appellee because it was a nonresident corporation. However the trial court asserting jurisdiction under the long arm statute denied both motions.

2. Utah’s Long Arm Statute:

It is true that Utah’s Act differs in one respect from the uniform long arm statute: Section 78-27-22 is devoted to a statement of legislative intent declaring its purpose in enacting the Act to be to “provide its citizens with an effective means of redress against non resident persons, who incur obligations to citizens entitled to the state’s protection.” And it further declares that “to ensure maximum protection to citizens of this state, [the Act] should be applied so as to assert jurisdiction over non resident defendants . . .” (Emphasis in each instance has been supplied.) Other states have also inserted purpose sections or clauses using the word “resident” rather than “citizen” in their Acts (e. g. Texas, Mississippi). However, the operative or enacting section of Utah’s Act, Section 78-27-24, as well as those of Texas and Mississippi, are substantially identical to the Uniform Act. See, Uniform Interstate and International Procedure Act, 9B U.L.A. § 1.03 (1966). Section 78-27-24 grants state court jurisdiction, without any restriction whatever, providing in pertinent part that: “Any person .... whether or not a citizen or resident of this state, who . does any of the following enumerated acts, submits- himself . to the jurisdiction of the courts of this state as to any claim arising from: (1) The transaction of any business within this state;” (Emphasis supplied). This language neither expressly nor by implication precludes nonresidents who have a permit to do business in Utah from using the Act to protect themselves against nonresidents who have incurred obligations in Utah to such persons. Indeed, the Act in no instance says that it was adopted solely for the protection of Utah citizens, residents or domestic corporations. While it is true that the motivation of the Utah Legislature was to protect its electors, Utah citizens, it specifically authorized jurisdiction, in the operating or enacting section of the Act, of “any claim” arising from any of the enumerated acts set out in the statute that were performed by a nonresident. Moreover, other sections of the Act support this construction. For example, Section 78-27-23 setting forth “Definitions” used in the Act defines “any person” as being “any individual, firm, company, association or corporation” without specifying any limitation whatever ; and “transaction of business within the state” is declared to include activities of a nonresident “which affect persons or businesses within the state of Utah” without limitation to citizens. A foreign corporation lawfully authorized by the state to do business there is clearly a “business within the state of Utah.”

8. The Application of the Act:

In the light of these considerations we find that the Act is available to the ap-pellee. We are supported in this conclusion by other rationales:

(a) In both Mississippi and Texas the courts have held that their statutes are available to nonresidents despite the language of each limits service on nonresidents to those acts which cause injury to “residents.” In C. H. Leavell & Co. and Peter Kiewit Sons’ Co. v. J. V. Doster, 211 So.2d 813 (1968) the Supreme Court of Mississippi found the nonresident plaintiffs, who were qualified to do business in the state, to be residents within the meaning of the Act; and the Court of Civil Appeals of Texas likewise has construed its statute, which is similar to that of Mississippi. National Truckers Service, Inc. v. Aero Systems, Inc., 480 S.W.2d 455 (1972, wr. ref. n. r. e.).

(b) The uniform long' arm statute was patterned after that of Illinois. See 9B U.L.A. § 1.03 (1966), Commissioners’ Note, at 310-313. In a New Mexico case, Clews v. Stiles, 303 F.2d 290 (10 Cir. 1960), this court held that in adopting the language of the Illinois Act, the Legislature of New Mexico also adopted the construction of that Act as an; nounced by the Supreme Court of Illinois. The Illinois Act has been used again and again by foreign corporations. Continental Nut Co. v. Robert L. Berner Co., 345 F.2d 395 (7th Cir. 1965); National Gas Appliance Corporation v. A. B. Electrolux, 270 F.2d 472 (7th Cir. 1959) cert, denied, 361 U.S. 959, 80 S.Ct., 584, 4 L.Ed.2d 542 (1960). Since the' Utah Act, Section 78-27-24, is virtually identical to the language of the Uniform Act, it would appear that the same reasoning applies in the instant case.

(c) Furthermore every state adopting the Uniform Act and having decided cases available has permitted both domestic and foreign corporations to use it: B. K. Sweeney Co. v. Colorado Interstate Gas Co., Okl., 429 P.2d 759 (Colorado plaintiff using Oklahoma long arm statute); Oil and Gas Ventures, First 1958 Fund, Ltd. v. Kung, 250 F.Supp. 744 (D.C.1966) (Delaware corporation with principal place of business in New Jersey suing in New York); Wilshire Oil Company of Texas v. Riffe, 10 Cir., 409 F.2d 1277 (Delaware corporation using Kansas long arm statute). See also other cases cited in 3(a), supra.

(d) The Utah Supreme Court has decided cases in which it has allowed domestic corporations to sue nonresident corporations Foreign Study League v. Holland American Line, 27 Utah 2d 442, 497 P.2d 244 (1972), and Hydroswift Corporation v. Louie’s Boats and Motors, Inc., 27 Utah 2d 233, 494 P.2d 532 (1972). In another case, Rudd v. Crown International, 26 Utah 263, 488 P.2d 298 (1971), the plaintiff, an individual resident of Utah, was permitted to sue a nonresident corporation under the Act. These cases indicate two things: (1) domestic corporations are allowed to use the long arm statute; and (2) it is also available to a “resident” as distinguished from the limitation advanced by appellants, i. e., availability to “citizens” only.

(e) This leads us to Utah’s treatment of nonresident corporations with a permit to engage in business in the state. Section 16-10-103 of the Utah Code provides that such corporations shall “enjoy the same, but no greater, rights and privileges as a domestic corporation . . .” Utah Code Ann. § 16-10-103 (1973). This mandate would require Utah to afford appellee the same access to its courts as it allows domestic corporations. Utah’s long arm statute, as we have noted, is not to the contrary. Indeed a holding to the contrary might well run contra to the equal protection clause of the Fourteenth Amendment. See, Wheeling Steel Corporation v. Glander, 337 U.S. 562, 69 S.Ct. 1291, 93 L. Ed. 1544 (1949) where the Court held that where a state elects to admit foreign corporations to transact business “the adopted corporations are entitled to equal protection with the state’s own corporate progeny.” 337 U.S. 562, at 571, 69 S.Ct. 1291, at 1296. Much earlier the Court had specifically held “that they should have like access to the courts of the country for the protection of their persons and property . . .” Truax v. Corrigan, 257 U.S. 312, 334, 42 S.Ct. 124, 130, 66 L.Ed. 254 (1921).

(f) It is hornbook law that where possible a statute should be construed so that it will be constitutional and in harmony with other statutes. Here Utah has not expressly limited the availability of its long arm statute to citizens of that state; to accept the appellants’ contention would be tantamount to reading into the statute a provision that not only would offend the Fourteenth Amendment but also be out of step with Section 16-10-103, supra.

(g) We read Section 78-27-22, supra, as does the Supreme Court of Utah as “prefatory language” (See, Foreign Study League, supra, 27 Utah 2d 442, 497 P.2d at 245) — a preamble merely setting forth the purpose of the Legislature in enacting the statute. It is, therefore, neither essential nor controlling in the construction of the Act where the operative sections are clear and unambiguous. Carter v. Carter Coal Co., 298 U.S. 238, 56 S.Ct. 855, 80 L.Ed. 1160 (1936); Yazoo & Mississippi RR v. Thomas, 132 U.S. 174, 10 S.Ct. 68, 33 L.Ed. 302 (1889); Coosaw Mining Co. v. South Carolina, 144 U.S. 550, 12 S.Ct. 689, 36 L.Ed. 537 (1892). Also see 50 Am. Jur. Statutes, Sec. 152 (1944), 82 C.J.S. Statutes § 349 (1953); Huntworth v. Tanner, 87 Wash. 670, 152 P. 523 (1915) and Continental Oil Co. v. City of Santa Fe, 25 N.M. 94, 177 P. 742 (1918).

The order appealed from is, therefore, affirmed.

      . Laws of Utah, 1969, Chapter 246, § 1 to § 3, Utah Code Ann. § 78-27-22, et seq., (Supp.1973) provides in relevant part:
      “Section 1. Redress against non-residents — Legislative intent — Maximum protection for residents.
      “It is declared, as a matter of legislative determination, that the public interest demands the state provide its citizens with an effective means of redress against non resident persons, who through certain significant minimal contacts with this state, incur obligations to citizens entitled to the state’s protection ...”
      “The provisions of this act, to insure maximum protection to citizens of this state, should be applied so as to assert jurisdiction over non resident defendants to the fullest extent permitted by the due proeess clause of the fourteenth amendment to the United States Constitution.
      “Section 3: State Court jurisdiction— Acts which subject non-residents to jurisdiction.
      “Any person, notwithstanding section 16-10-102, whether or not a citizen or resident of this state, who in person or through an agent does any of the following enumerated acts, submits himself, and if an individual, his personal representative, to the jurisdiction of the courts of this state as to any claim arising from:
      (1) The transaction of any business in this state.
      (3) The causing of any injury within this state whether tortious or by breach of warranty.”


author: PER CURIAM:

text:
    Wilbur FRANCIS, Plaintiff-Appellant, v. ALLIED SERVICE COMPANY OF TEXAS, INC., Defendant-Appellee.
    No. 73-2213
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Oct. 17, 1973.
    Rehearing Denied Nov. 19, 1973.
    Clarke Gable Ward, Penny J. Brown, Houston, Tex., for plaintiff-appellant.
    Louis Paine, Houston, Tex., for defendant-appellee.
    Before WISDOM, AINSWORTH and CLARK, Circuit Judges.

       Rule 18, 5th Cir.; see Isbell Enterprises, Inc. v. Citizens Casualty Co. of N. Y., 431 F.2d 409, Part I (5th Cir. 1970).

   PER CURIAM:

Wilbur Francis was discharged by Allied Service Company of Texas, Inc. (Allied) after a one-month probationary employment period. Alleging racial discrimination in violation of 42 U.S.C. §§ 1981, 2000e et seq. (1970), he brought an action individually and on behalf of a class composed of Negro persons, who are or might be employed at Allied at its Houston facility, seeking reinstatement to his former position with back wages and declaratory and injunctive relief barring Allied’s alleged discriminatory employment practices. The district court entered judgment for Allied and dismissed the class action on the grounds that plaintiff had not been subjected to any unlawful employment practices or been deprived of his federally protected rights. As mandated by this court’s recent decision in Huff v. N. D. Cass Company, 485 F.2d 710 (5th Cir. 1973) (en banc), which had not been decided when the court below rendered its judgment, we must affirm in part, and vacate and remand in part.

Francis, a Negro, applied for and was hired as a bus driver at Allied’s Houston facility, which provided a variety of services at the Houston Intercontinental Airport. Upon receipt of reports that appellant was violating the company’s safety policy against conversing with passengers, Ray Poggi, Allied’s local manager, twice counseled Francis to refrain from such conduct. When the complaints continued, Poggi dispatched Luther Franklin, an Allied bus driver who served as a union steward, to accompany appellant on his bus route. Franklin, who also advised appellant to refrain from engaging his passengers in conversation, verified that Francis was continuing to disregard the management directives prohibiting such discourse. As a result, Poggi fired appellant at the end of his probationary term.

Francis urges on appeal that the district court erred in dismissing his class action claim under Fed.R.Civ.P. 23. At the .outset, we find the district court’s determination that appellant’s discharge was not racially motivated to be amply supported by the record. Of the 18 persons employed at Allied’s Houston facility, 14 were black. During the period of its Houston operations, Allied had discharged nine bus drivers at the end of their probationary periods, of whom 8 were white. In fact, Francis was the only black employee in any classification who had been discharged after the expiration of his probationary term. In view of the abundant forewarnings accorded appellant by management personnel and his fellow employees alike, and Allied’s past employment histories, we are unable to conclude that the district court’s findings are clearly erroneous. Consequently, we affirm the entry of judgment for Allied on appellant's individual claim.

Nevertheless, the import of Huff v. N. D. Cass Company, supra, mandates that we vacate that portion of the district court’s judgment dismissing the class action and remand for further proceedings consistent with that opinion. In Huff we held that “the standard for determining whether a plaintiff may maintain a class action is not whether he will ultimately prevail on his claim.” 485 F.2d at 712 (citations omitted). Cognizant of the conflict between two competing procedural policies, “one of which says find out about the plaintiff’s claim at an early stage and the other of which says just don’t find out too much,” we decided “that a class plaintiff who otherwise meets the demands of 23(a) and (b) should not be found to be disqualified solely by an advance determination that his claim is predictably not a winning claim and that, therefore, he cannot adequately represent the class as mandated by 23 (a)(4).” 485 F.2d at 714 (footnote omitted). In the cause sub judice, the district court’s pretrial order reserved the question whether plaintiff could maintain the class action. No ruling was made that plaintiff’s cause should proceed individually until the close of the trial on the merits and then no reasons were stated nor were any written findings filed on the Class action aspects of the case. In the absence of any findings on this issue, we are unable to determine whether the trial court properly complied with the standards subsequently announced in Huff. Without intimating in the slightest any view of the merits, we remand this cause for further proceedings consistent therewith, in order that the district court may “review the facts developed at the original [trial], supplemented to the extent, if any, that appears to the court to be appropriate, and, applying the correct legal standards, decide whether plaintiff has the nexus required by Rule 23 to permit him to maintain the class action (omitting, of -course, that plaintiff has a ‘losing’ claim).” 485 F.2d at 714. The judgment of the district court denying relief to plaintiff on his individual claim is affirmed. The order denying to plaintiff the right to maintain the class action and dismissing the class action is vacated and the cause is remanded to the district court for. consideration of that issue under correct legal standards, and for such other proceedings as may be appropriate.

Affirmed, in part and, in part, vacated and remanded.


author: AINSWORTH, Circuit Judge:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Rickey Leon JONES, Defendant-Appellant.
    No. 73-1721
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Nov. 7, 1973.

      Neal B. Littlejohn, Columbus, Ga. (Court-appointed), for defendant-appellant.
    William J. Schloth, U. S. Atty., O. Hale Almand, Jr., Asst. U. S. Atty., Macon, Ga., for plaintiff-appellee.
    Before WISDOM, AINSWORTH and CLARK, Circuit Judges.

       Rule 18, 5 Cir.; see Isbell Enterprises, Inc. v. Citizens Casualty Company of New York et al., 5 Cir., 1970, 431 F.2d 409, Part I.

   AINSWORTH, Circuit Judge:

Rickey Leon Jones appeals from his conviction, after a jury trial, on two counts of bank robbery for violation of 18 U.S.C. § 2113(a) and (b). We affirm.

The facts essential to this appeal are clear. Jones was arrested at his apartment in Columbus, Georgia, on a charge of bank robbery. He was advised of his constitutional rights, and he stated that he understood them. Shortly thereafter, Jones was transported to the local office of the Federal Bureau of Investigation, where he was again advised of his rights. He again stated that he understood them, and he signed the rights form. Upon initial questioning, Jones denied knowledge of the bank robbery.

In a subsequent interview, Jones stated again that he understood his rights and indicated that he was willing to discuss the matter of the robbery. During this interview, one Bobby Lee Seldon, who owned the automobile used in the robbery, was brought into the interrogating room. Seldon was not a suspect, but he had furnished the FBI with information that conflicted with Jones’s denials of guilt at the earlier interview. Seldon repeatedly urged Jones, “Tell the man the truth.” Jones subsequently confessed, and the district court, over Jones’s objection at trial, found the signed confession admissible.

The Government’s case at trial rested primarily on the signed confession, on the testimony of four persons who knew Jones, and on the fact that at the time of his arrest Jones possessed two $5 bills whose serial numbers had been recorded by the bank and which had been given to the robbers in the course of the robbery in - question. Jones claimed he had been given the money by one of the witnesses against him. The witnesses against Jones testified, variously,- that they heard Jones and others discussing a bank robbery, and that they saw Jones with a large amount of money, some of it red stained, just after the robbery. The red stain on the money is significant because in this robbery the victim bank used a “security pack,” which disperses red dye on stolen money in order to foil robbers’ use of the money.

On appeal, Jones raises four issues. He first argues that after his several denials of any knowledge of a crime, the FBI should have refrained from questioning him until it was determined whether the repeated denials were intended as assertions of the constitutional right to remain silent. We cannot agree. Although Jones denied his complicity in the crime, he apparently indicated no unwillingness to discuss the matter of the crime. Denials of a crime by one well aware of his right to remain silent cannot, without more, be taken as an unspoken election to exercise the right to remain silent.

Jones’s second contention is that a coercive atmosphere was created when the FBI brought Seldon into the interrogating room and Seldon urged Jones to tell the truth. Here, Jones relies on Spano v. New York, 360 U.S. 315, 79 S. Ct. 1202, 3 L.Ed.2d 1265 (1959), in which the Court held inadmissible under the fourteenth amendment a confession by a defendant against whom an indictment had been returned. We find that case readily distinguishable. In Spano, the Court relied on the totality of the circumstances surrounding the confession: the police were attempting not merely to solve a crime but to secure a statement that would convict the defendant; the defendant had been subjected to questioning by many police officials for eight consecutive hours; defendant’s requests to see his attorney had been denied; and the defendant’s sympathy for a policeman friend had been falsely aroused. None of these circumstances is present in the case before us. In this case, the FBI, in an attempt to solve a crime, placed together two individuals who had made contradictory statements about a robbery in which both were implicated. The admonitions by Seldon do not, themselves, constitute coercive pressure rendering Jones’s confession inadmissible. See Rivers v. United States, 5 Cir., 1968, 400 F.2d 935, 943.

Jones further argues that his confession was involuntary. We are not persuaded. The district judge, after a hearing held out of the presence of the jury, determined that the circumstances of the confession were free of coercion, threats, and promises, and, then, in his charge to the jury, submitted the issue for the jury’s consideration. We find no error in the district judge’s determination.

Jones’s final contention is that his rights were denied because he chose to deny knowledge of the crime in the belief that if he remained silent, his silence could be used against him. This contention must also be rejected. The record reveals no evidence that Jones was led to believe or that he did believe that if he remained silent, his silence could be used against him. Moreover, Miranda v. Arizona, 384 U.S. 436, 86 S. Ct. 1602, 16 L.Ed.2d 694 (1966), and its' progeny require no warning to the effect that an individual’s silence cannot be used against him when he is taken into custody.

Affirmed.


text:
    Steven D. CAUSEY, #031822, Petitioner-Appellant, v. Louie L. WAINWRIGHT, Director, Division of Corrections, State of Florida, etc., Respondent-Appellee.
    No. 73-2038
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Oct. 26, 1973.
    Timothy F. Prugh, Tampa, Fla. (Court appointed), for petitioner-appellant.
    David Luther Woodward, Richard C. Booth, Asst. Attys. Gen., Tampa, Fla., for respondent-appellee.
    Before BELL, GODBOLD and GEE, Circuit Judges.

      Rule 18, 5 Cir.; see Isbell Enterprises, Inc. v. Citizens Casualty Co. of New York et al., 5 Cir., 1970, 431 F.2d 409.

   PER CURIAM:

The District Court correctly denied appellant’s petition for a writ of habeas corpu.s from a state conviction on the ground that the petition only raised questions of the sufficiency and competency of evidence which are not of constitutional dimension.

Affirmed.