author: PER CURIAM:

text:
    Bradley B. DAVIS, Administrator of the Estate of Maria de Kosenko, Deceased, Individually as well as on behalf of others similarly situated, Plaintiff-Appellant, v. AMERICAN TELEPHONE AND TELEGRAPH COMPANY, Defendant-Appellee.
    No. 480, Docket 72-2045.
    United States Court of Appeals, Second Circuit.
    Argued April 16, 1973.
    Decided May 1, 1973.
    Bradley B. Davis, New York City, for plaintiff-appellant.
    Guy Miller Struve, New York City (Davis, Polk & Wardwell, Philip C. Potter, Jr., New York City, on the brief), for defendant-appellee.
    Daniel M. Cohen, Asst. Atty. Gen. (Louis J. Lefkowitz, Atty. Gen., of New York; Samuel A. Hirshowitz, First Asst. Atty. Gen., on the brief), for Attorney General.
    Before CLARK, Associate Justice, and FEINBERG and MANSFIELD, Circuit Judges.

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

   PER CURIAM:

Appellant Davis, as administrator of an estate owning 50 shares of common stock in appellee American Telephone and Telegraph Company, urges that we extend the one man-one vote rule of Reynolds v. Sims, 377 U.S. 533, 84 S.Ct. 1362, 12 L.Ed.2d 506 (1964) and Kramer v. Union School District, 395 U.S. 621, 89 S.Ct. 1886, 23 L.Ed.2d 583 (1969), to shareholder voting in large, government-regulated corporations. We decline this invitation. Even assuming that appellee’s public character- is sufficient to subject it to Fourteenth Amendment requirements, certainly it does not exercise “normal governmental” authority, and its actions, to the extent they affect stockholders qua stockholders, affect each stockholder in proportion to the number of shares he owns. See Salyer Land Co. v. Tulare Lake Basin Water Storage District, 410 U.S. 719, 93 S.Ct. 1224, 35 L.Ed.2d 659 (1973). Therefore, the strict equal protection standard implicit in the phrase “one man, one vote” does not apply. Since the shareholder voting scheme utilized by appellee has a rational basis, see Salyer Land Co., supra, the judgment must be affirmed.


source: Caselaw Access Project

author: EAST, District Judge:

license: Public Domain

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Frank FALCO, Defendant-Appellant.
    No. 72-2429.
    United States Court of Appeals, Ninth Circuit.
    May 23, 1973.
    David M. Rothman (argued), Beverly Hills, Cal., for defendant-appellant.
    John K. Cameron, Jr., Asst. U. S. Atty. (argued), William D. Keller, U. S. Atty., Eric A. Nobles, Asst. U. S. Atty., Los Angeles, Cal., for plaintiff-appellee.
   OPINION

Before ELY and TRASK, Circuit Judges, and EAST, District Judge.

EAST, District Judge:

STATEMENT OF THE CASE

A three count indictment was returned against the defendant-appellant Frank Falco (Falco) charging violation of 18 U.S.C. Section 371, Conspiracy to Embezzle and Steal Government Property; 18 U.S.C. Section 641, Theft of Government Property; and 18 U.S.C. Section 111, Assaulting a Federal Officer.

The government dismissed Count 3 prior to trial and the jury found Falco guilty on Counts 1 and 2. He was sentenced concurrently on each count to the custody of the Attorney General for two years, with a suspension of sentence and probation arrangement conditioned upon confinement in a jail-type institution for a period of sixty days. Falco served the jail-type sentence and appeals. We note jurisdiction under 28 U.S.C. Sections 1291 and 1294 and affirm.

FACTS

We narrate the evidence as follows:

Steve Freeman (Freeman) had occasionally acted as a Treasury Department and stolen credit card informant. He would be paid for any fruitful leads.

On April 3, 1972, Freeman picked up as hitchhikers Falco and his wife, both indigent persons who had been seeking welfare benefits.

Conversation developed about traffic and dealing in “hot” credit cards and counterfeit coins and currency. The testimony is in conflict as to which of the men made first overture of buying and selling. In any event Falco indicated he could get counterfeit currency if Freeman could use it. A stop was made and Falco faked a telephone call to his “source” and a transaction meeting was arranged for 3 o’clock that afternoon at Norm’s Restaurant.

Falco contacted an acquaintance, David Brown, and told him in the presence of their respective wives of the encounter with Freeman and his plan to “rip him (Freeman) off.” Falco borrowed $20.00 from Brown, picked up a new crisp $20.-00 bill and the foursome, in concert, went to the rendezvous at Norm’s.

Freeman had contacted Treasury Agent Carlon and together met with the Falco party.

Falco without knowledge of Carlon’s and Freeman’s undercover roles showed them the represented counterfeit, but genuine, $20.00 bill and demanded $300.-00 before turning over the agreed amount of counterfeit money currency and took back the $20.00 bill.

, Carlon responded to the ruse and handed over $300.00 in government funds to Falco who- in turn handed the funds to the wives who departed on the purported errand to obtain and bring back the counterfeit currency for delivery to Carlon.

After some twenty minutes Falco announced, “There isn’t any counterfeit. We’re leaving now. Don’t move. He’s got a gun,” pointing to David Brown. “If you move, he’ll kill you.” Falco then stood up and said, “There’s an individual outside will blow your head off. Don't try to follow us.” Falco was arrested by surveillant agents but not without some physical efforts. The wives were found and the funds were recovered.

ASSIGNMENTS OF ERROR

Falco asserts four assignments of reversible error by the trial court presenting the four issues delineated in the following:

DISCUSSION

Issue 1: Was evidence of physical efforts during the course of Falco’s arrest by government agents improperly excluded?

Count 3 alleging an assault on a federal officer arose from the incidents surrounding. Falco’s arrest after the alleged commission of the crimes designated in Counts 1 and 2 and was dismissed before trial. We conclude this assignment is without merit.

Issue 2: Was it improper to allOio impeachment of Falco with a prior California conviction of crime?

Early in 1970 Falco was convicted of the crime of second degree burglary within the State of California, where that crime is treated as a felony (if sentenced to imprisonment in a state penitentiary) or as a misdemeanor (if sentenced to a jail) depending on the sentence entered.

Upon that conviction Falco was granted four years probation. One of the conditions of the probation was that Falco serve 180 days-in the county jail which he served less credit for time served.

Falco contended at his trial (June, 1972) that he had served the jail sentence and accordingly had not, as yet at least, been sentenced upon the conviction to imprisonment in a state penitentiary so as to classify his California crime as a felony. He urges that he was improperly impeached as a witness on his own behalf by use of a misdemeanor conviction.

The rule generally recognized in California is:

“. . . the (crime) stands as a felony for every purpose up to judgment, . . . but if the judgment is for a misdemeanor it is deemed a misdemeanor for all purposes thereafter (sic) — the judgment not to have a retroactive effect . . . ” People v. Banks, 53 Cal.2d 370, 381-382, 1 Cal.Rptr. 669, 677, 348 P.2d 102, 110 (1959).

When Falco was granted probation the state proceedings were suspended without an entry of judgment (sentence of imprisonment to neither a state prison nor jail). “He (did), however, for some specific purposes — for administration of the probation law and other laws expressly made applicable to persons so situated — stand convicted of a felony.” Id. Banks, 387, 1 Cal.Rptr. 680, 348 P.2d 113. The serving of jail time was “a condition of probation (and not) imposition of sentence to a county jail.” Id. Banks, 385, n. 8, 1 Cal.Rptr. 679, 348 P. 2d 112.

Falco’s testimony conflicted with that of Freeman concerning the negotiations for counterfeit currency (entrapment of Falco, or setup of Freeman?). The California crime was recent and of similar nature to the alleged crimes. Accordingly, the trial court did not abuse its discretion in allowing the impeachment nor was the evidence of a prior felony conviction otherwise prejudicial to a fair trial for Falco. Burg v. United States, 406 F.2d 235 (9th Cir. 1969); Shorter v. United States, 412 F.2d 428 (9th Cir. 1969); see cases collected in Modern Federal Practice Digest, Witnesses Key No. 337(5) and (6).

Issue 3: Must the government prove that Falco knew the stolen property belonged to the government?

The answer is no for the reason that knowledge of the government’s ownership of the property stolen is not a material or necessary element of 18 U.S. C. Section 641. United States v. Howey, 427 F.2d 1017 (9th Cir. 1970), and Baker v. United States, 429 F.2d 1278 (9th Cir. 1970).

Morrissette v. United States, 342 U.S. 246, 72 S.Ct. 240, 96 L.Ed. 288 (1951), is no solace to Falco as the holding there simply reiterates the proposition that a felonious intent to steal property is an essential element of the offense under 18 U.S.C. Section 641. The jury so found here.

Issue 4: Was a defense of unlawful entrapment presented under the evidence?

Had Falco delivered counterfeit currency in exchange for the $300.00 tendered him, it might well be that his testimony would have presented a valid unlawful entrapment question for the jury, thus requiring the trial court’s proper instruction as to the law on unlawful entrapment under the rationale of Notaro v. United States, 363 F.2d 169 (9th Cir. 1966) and 388 F.2d 680 (9th Cir. 1967), and United States v. Walton, 411 F.2d 283 (9th Cir. 1969).

However, as Falco’s brief, at page 21, candidly states

“. . . the evidence did not involve the usual entrapment defense: here (Falco) did not commit the crime of selling counterfeits (the crime in the mind of the informer and agent). (He) allegedly committed a different crime, theft.”

“There is no case directly on this point.”

Falco argues that the creative force bringing about his crime was the wrongful conduct of Freeman and Carlon and relies upon the rationale for the unlawful entrapment rules enunciated in United States v. Chisum, 312 F.Supp. 1307 (C.D.Cal.1970).

Falco’s reliance on Chisum, supra, is ill-founded. The sole holding of the case is that the sale of counterfeit currency by a government agent to the defendant, who was ready and willing to buy and resell, is unlawful entrapment as a matter of law and a complete defense to the prosecution of the crime of knowingly receiving such counterfeit currency with intent to pass them as genuine.

“When the government supplies the contraband, the receipt of which is illegal, the government cannot be permitted to punish the one receiving it. To permit the government to do so would be to countenance violations of justice. As Justice Roberts stated in Sorrells, ‘It is the province of the court and of the court alone to protect itself and the government from such prostitution of the criminal law.’ [Sorrells v. United States], 287 U.S. 435 at 457, 53 S.Ct. 210, 77 L.Ed. 413 (separate opinion).”

The conduct of the agents in Chisum’s case is wholly distinguishable from this case.

True, Freeman and Carlon did offer Falco an opportunity to illegally traffic in counterfeit currency had he had the ability and inclination to do so. The conduct was that of “stealth and strategy” and, generally, dirty business; albeit, lawful and a far cry from that type of governmental durational and pervasive activity condemned as “creative activity’’ in Sherman v. United States, 356 U.S. 369 at 372, 78 S.Ct. 819 at 820, 2 L.Ed.2d 848; Greene v. United States, 454 F.2d 783 at 786 (9th Cir. 1971); and Chisum, supra.

■ Falco was not supplied with contraband, nor ingredients thereof, to his prejudice or charge, nor was he induced by forceful persuasion or pressure at the har.ds of Freeman and Carlon to engage in illegal activity leading to a charge against him. It was Falco alone who brought the charges under Counts 1 and 2 down on his head. For it is manifest here that Falco never had any ability nor intention or inclination, either by his own predisposition or inducement on the part of the agents, to deliver counterfeit currency to the agents. Quite to the contrary he alone conjured the plan to “rip off the crooks” (Freeman and Car-lon), by faking his source and ability to deliver counterfeit currency and with his confederates attended the meeting for the sole purpose of receiving and then stealing the exchange money — and did just that.

The judgment of conviction and sentence is affirmed.

       Honorable William G. East, Senior United States District Judge for the District of Oregon, sitting by designation.

      . The trial court sagely commented: . . (if the evidence was admitted it would put the court) in a position of having to entertain from the government some kind of instruction that the defendant attempted to flee the scene and that consciousness of guilt is involved, . . . It might very well color the minds of the jurors if they hear two different versions about it and it might be very detrimental to the defendant. It just seems to me to be totally irrelevant and a dangerous area to intrude into in view- of the dismissal of the Third Count.”


text:
    UNITED STATES of America, Plaintiff-Appellee, v. Virgil Ross MANNING, Defendant-Appellant.
    No. 73-1272
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    May 30, 1973.
    Rehearing Denied June 22, 1973.
    Gardner Beckett, Jr., St. Petersburg, Fla., for defendant-appellant.
    John L. Briggs, U. S. Atty., Jacksonville, Fla., Ronald H. Watson, Asst. U. S. Atty., Tampa, Fla., for plaintiff-appellee.
    Before BELL, GODBOLD and INGRA-HAM, 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:

Virgil Ross Manning, a member of the Jehovah’s Witness religion and a conscientious objector, was indicted and convicted for failing to perform civilian work as ordered by his local draft board. On appeal he asserts that § 456(j) of the Military Selective Service Act of 1967, 50 U.S.C.App. is unconstitutional in that Congress is exercising a power to conscript a civilian rather than a military work force when it orders a conscientious objector to perform compulsory civilian employment in lieu of being inducted into the Armed Forces.

There is no absolute right to an exemption from military service. The right exists only because Congress has seen fit to create it and Congress has the right to condition its exemption by requiring alternative service. United States v. Crouch, 415 F.2d 425 (5th Cir., 1969); O’Connor v. United States, 415 F.2d 1110 (9th Cir. 1969), and cases cited therein.

Finding appellant’s remaining contentions without merit, we affirm the judgment of the district court.

Affirmed.


author: PER CURIAM: DAVIS, Commissioner:

text:
    Wendell Starnes FLETCHER v. The UNITED STATES.
    No. 233-68.
    United States Court of Claims.
    May 11, 1973.

      John D. Nies, Arlington, Va., for plaintiff. Philip E. Kurz, Arlington, Va., atty. of record. Strauch, Nolan, Neale, Nies & Kurz, Arlington, Va., of counsel.
    A. David Spevack, Washington, D. C., with whom was Asst. Atty. Gen., Har-lington Wood, Jr., for defendant.
    Before COWEN, Chief Judge, and DAVIS, SKELTON, NICHOLS, KA-SHIWA, KUNZIG and BENNETT, Judges.
   OPINION

PER CURIAM:

This case comes before the court on plaintiff’s exceptions to a recommended decision filed August 30, 1972, by former Trial Commissioner James F. Davis pursuant to Rule 134(h). The court has considered the case on the briefs and oral argument of counsel. Since the court agrees with the decision as hereinafter set forth, it hereby affirms and adopts the same as the basis for its judgment in this case. Therefore, it is concluded that claim 1 of U. S. Patent 2,596,139 is not infringed and the petition is dismissed.

OPINION OF COMMISSIONER

DAVIS, Commissioner:

This is a suit for patent infringement pursuant to 28 U.S.C. § 1498. Plaintiff contends that claim 1 of his patent, U. S. 2,596,139 (issued in 1952), entitled “Streamlined Auxiliary Fuel Tank,” is infringed by five different auxiliary fuel tanks procured and used by the Government during the pertinent accounting period. Defendant denies infringement and also says that the patent claim is invalid, among other reasons as defining an invention which is “obvious” within the meaning of 35 U.S.C. § 103. The case raises no novel issues o.f law and its resolution involves, typically, a construction of the scope and meaning of the patent claim and the readability of the claim, so construed, on the accused devices. Autogiro Co. of America v. United States, 181 Ct.Cl. 55, 384 F.2d 391 (1967) , rehearing denied, 184 Ct.Cl. 801 (1968) . For reasons set out in the accompanying findings of fact and ultimate findings and conclusions, I hold (a) that the patent claim must be narrowly construed in view of very close prior art, and (b) when so construed, the claim is not infringed. If construed so as to be infringed, the claim would be invalid. International Glass Co. v. United States, 187 Ct.Cl. 376, 408 F.2d 395 (1969). Accordingly, the petition must be dismissed.

FINDINGS OF FACT

1. This is a patent suit under 28 U.S.C. § 1498. Plaintiff seeks reasonable and entire compensation for alleged unauthorized use by defendant, the United States, of the invention defined by claim 1 of U.S. Patent 2,596,139 (the '139 ■patent or • patent in suit), entitled “Streamlined Auxiliary Fuel Tank,” issued May 13, 1952, on an application filed April 1, 1949, by plaintiff, Wendell S. Fletcher. Plaintiff’s petition was filed in this court on August 14, 1968. Plaintiff is the sole owner of the patent in suit.

2. The issues before the court are patent validity and patent infringement. Accounting, if any, is deferred to later proceedings.

3. The patent in suit relates to auxiliary fuel tanks for mounting on the wing tips of airplanes. The tanks are streamlined so as to be as “free from parasitic drag as possible.” The tanks comprise three sections: a “conoidal nose section which is semi-elliptical in longitudinal section, a tail section which is conical, and a cylindrical intermediate section.” The sections may be “formed integrally” or “made as separate components which may be secured in end-to-end relation” so as to be separable.

4. The patent specification sets forth data by which tanks of varying capacity can be constructed. The specification says, “ * * * regardless of the capacity of the tank, there exist definite and fixed relations between the dimensions of the components. I have found that by using the total length of the tank as a basis, the proportions of the components can be readily calculated as percentages of their length to obtain a tank having the desired contour and possessing the optimum Mach coefficient.” The specification then sets out the mathematical relationship of the component parts which is best summarized by reference to Fig. 1 of the patent, reproduced herein. Reference numeral 6 is the conoidal nose section; 7 is the cylindrical intermediate section; and 8 is the conical tail section. The dimensions of the various sections vary in accordance with the parameters set out in Fig. 1.

5. The patent specification sets out Tables A and B (reproduced herein) which teach how to construct the contours of the tank illustrated in Fig. 1, having a given volume and a maximum diameter of 25.41 inches. Table A shows the length of center sections required for tanks of varying capacity (122 gals, to 300 gals.), the center section being 25.41 inches in diameter. The center section length varies from 3 inches (for a 122-gal. tank) to 86 inches (for a 300-gal. tank). Table B shows the coordinates by which the contour of the nose and tail sections can be determined for a 25.41-inch-diameter tank. The specification notes that in calculating the contours, the length of the center section is “neglected,” so that the nose and tail section contours of any tank having a center section diameter of 25.41 inches are the same. Thus, the patent teaches how to construct a family of auxiliary tanks, varying in total capacity and length but having the same maximum diameter (25.41 inches).

TABLE A

[For cylinder 25.41" diameter]

Tank capacity with 3 percent Length of cyl-air space allow- indrical portion anee (gallons) 7 (inches)

122 13

150 16

165 23

185 33

200 40

250 63

300 86

I. Minimum.

TABLE B — Ordinates

Station, Diameter, percent1 percent1

O. O. '

1.92 7.12

3.80 9.96

5.75 12.04

7.70 13.74

9.61 15.20

13.46 17.54

17.30 19.36

21.15 20.82

25.00 21.98

28.84 22.88

32.69 23.56

36.53 24.04

40.38 24.32 _

44.23 24.42

47.11 24.42

50.00 24.28:

52.88 23.92

55.76 23.28

58.65 22.42 -

61.53 21.24

64.42 19.80

100.00 O.

I. Indicates percent of total length of tank.

Nose section 6.

Intermediate section 7.

Tail section 8.

It is not clear from the patent specification how one would, in accordance with the teachings of the patent, determine the precise contours of tanks having a center section diameter different from 25.41 inches. Presumably, tanks having a center section diameter different from 25.41 inches would have nose and tail sections of contour similar to that shown in Fig. 1, but varied in diameter proportionately to the change in center section diameter. Thus, a tank of, e. g., 24 inches in center section diameter would have nose and tail sections of maximum diameter of 24 inches and intermediate diameters correspondingly smaller in accordance with the ordinates set out in Table .B. 6.

7. The patent specification does not define the term “semi-elliptical” with respect to the contour of the nose section. That term is used in the patent claims, so that its meaning is important to understanding the scope of the claims. There was conflicting and unclear testimony at trial from the inventor and others skilled in the art as to whether the term means “half” of a true mathematical ellipse or simply “generally elliptical” in shape. Nor is it clear whether the contour shown in Fig. 1 is a segment of a true mathematical ellipse or is just “generally” elliptical in the sense that it approximates a true ellipse. Accordingly, for purposes of interpreting the patent specification and claims, and in the absence of a precise definition, the term “semi-elliptical” must be construed to embrace (a) the contour shown in Fig. 1, (b) contours derivable from Table B, and (c) contours substantially identical thereto.

8. The patent application was filed on April I, 1949, and it incorporated by reference a copending application earlier filed by plaintiff which taught in detail how to join together the separate tank sections. By amendment dated February 12, 1951, and after all the claims had been finally rejected by the Patent Office, the application was amended to include a new drawing (Fig. 4) and additional textual matter. The new drawing was taken from plaintiffs earlier-filed co-pending application and disclosed details of construction of the separable tank which was similar in contour to the tank disclosed in the patent in suit. The textual matter describes the means by which separate sections of the tank are connected and adds the following:

* * * by unscrewing the tie rod [joining the three sections] the three sections * * * may be taken apart, and another center section of different length may be substituted for the [original] center section * * *.

The above-quoted textual matter finds support in the earlier-filed application which notes that intermediate sections can be added or subtracted to change the capacity of the tank. Accordingly, such textual matter is not “new matter” within the meaning of 35 U.S.C. § 132, since it simply makes explicit in the patent in suit what was explicit in the cross-referenced copending application.

9. (a) The patent in suit has four claims, set out below. Only claim 1 is here in issue:

1. An auxiliary tank adapted for mounting adjacent a wing surface of a high-speed airplane, comprising: a conoidal nose section of semi-elliptical longitudinal sectional contour with the major axis thereof extending longitudinally of said tank; a cylindrical intermediate section; and
a tail section having a right circular conical end portion, all said sections being circular in transverse section and of the same maximum diameter and being re-leasably joined together at a circumferential joint defining a continuous and smooth longitudinal transition between the surfaces of said sections whereby other cylindrical intermediate sections may be added or substituted to change the capacity of said tank or to shift the center of gravity thereof.
2. An auxiliary tank as defined in claim 1 wherein said tail section includes a longitudinally circularly arcuate curved surface portion of substantial length of nearly cylindrical shape adjacent said intermediate cylindrical section and tangent to said conical end portion whereby to merge smoothly and tangentially therewith.
3. An auxiliary tank as defined in claim 1 wherein said nose and tail sections are so proportioned that the ratio of their longitudinal dimensions to their maximum diameter is of the order of magnitude of two.
4. An auxiliary tank as defined in claim 1 wherein said conoidal nose section has a maximum diameter approximately 55% of its length, said cylindrical intermediate section has a length not less than 2.88% of the total length of the tank, and wherein said tail section has a maximum diameter of approximately 46% of its length.

(b) As originally filed, the patent application asserted claims which, in essence, defined the invention as an auxiliary fuel tank having a semi-elliptical nose, a cylindrical midsection and a conical tail. Some of the claims were more specific in defining the mathematical relationship among the tank’s component parts. All claims were rejected over the prior art, and ultimately, plaintiff amended the claims to make reference to the concept that the tank was separable and had a cylindrical center section for the purpose of adding or substituting other center sections “to change the capacity of said tanks or to shift the center of gravity thereof.” The claims were ultimately allowed after further prosecution during which plaintiff stressed the fact that his tank has definite, definable parameters of contour and is designed for varying the fuel capacity by inserting new center sections.

10. Plaintiff has been active in the field of aviation since 1918 as a pilot, a flight instructor, mechanic, teacher, designer, and manufacturer until his retirement in 1964. In the late 1930s, plaintiff formed his own company, Fletcher Aviation Company..

11. In 1948, plaintiff went to Wright Field, Dayton, Ohio, in connection with his efforts to become a supplier to the Air Force of airplane wing tanks. Plaintiff was advised that the wing tank then being used on F-80 jet aircraft was unsatisfactory because it caused various problems (e. g., aileron buzz, buffeting and flutter) during high-speed jet flight. The tank was known as the “teardrop” tank because its configuration approximated the shape of a teardrop. The “teardrop” tank had a continuously-curved elliptical nose and a conical tail, with a right conical end portion, as shown by a drawing in evidence of a standard Air Force contour in use at the time.

12. (a) After a period of consultation and discussion with engineering personnel at Wright Field extending over several months of 1948 (about which there is conflicting testimony in the record regarding what technical information was exchanged and who came up with various suggestions for tank redesign), plaintiff submitted to Wright Field for evaluation a redesigned “teardrop” tank. The redesigned tank included a -center section of cylindrical shape and was made in three separable parts. But for the added center section, the tank contour was substantially the same as the Air Force standard “teardrop” tank. Plaintiff testified that, prior to redesigning the “teardrop” tank, he did some rudimentary experiments with tank models in his bathtub and determined that the addition of a cylindrical center section provided smoother fluid flow over the tank’s contour and improved its aerodynamic properties.

(b) During the time plaintiff was visiting Wright Field in 1948 and prior to redesigning the “teardrop” tank, there existed in Wright Field’s files photographs of another tank called the Dura-mold tank, which the Government had procured near the end of World War II. The Duramold tank was plastic, and was made in three sections; an elliptical nose section (substantially identical to the “teardrop” nose section), a barrel-shaped center section, and a contoured tail section ending in a right circular cone (substantially identical to the “teardrop” end section). Procurement of Duramold tanks ended with World War II. The contour of the Duramold tank was substantially identical to plaintiff’s redesigned tank except that it had a barrel-shaped center section rather than a cylindrical center section. There is conflicting evidence whether plaintiff saw the Duramold tank photographs. Plaintiff denies having seen them, but one of the Government’s witnesses testified that they were shown to plaintiff. In any event, the evidence establishes that the photographs were generally available to contractors interested in supplying fuel tanks to the Air Force, along with other drawings and photographs showing previously-procured tanks.

13. In late 1948, the Air Force successfully flight-tested plaintiff’s redesigned tank. Shortly thereafter, the Air Force adopted the new tank design as a replacement for the “teardrop” design. During the Korean war, the Air Force used tanks supplied by the plaintiff having contours above noted and being separable into three pieces. At times, the Air Force in combat zones added center sections to the tanks to change their fuel-carrying capacity.

14. Defendant introduced into evidence a host of prior art references showing various configurations and embodiments of auxiliary fuel tanks and other streamlined aerodynamic bodies. Two particularly pertinent references are: U.S. Patent 2,514,888 to McFarland, issued in 1950 on an application filed in 1947; and U.S. Patent 2,471,296 to Allen et al., issued in 1949 on an application filed in 1944. The McFarland patent, entitled “Aircraft Wing Tip Fuel Tank Installation,” teaches, among other things, a wing tip tank for use on a jet aircraft. Other evidence of record shows that the McFarland tank was made for and used on a Navy jet aircraft (XF6U-1) in the mid-1940s. The tank has three integral sections: a generally elliptical nose section, a cylindrical mid-section and a generally conical tail section. Other evidence shows that the tail section of the McFarland tank had a right conical end portion, substantially the same as the standard Air Force “teardrop” tank.

Allen et al., entitled “Jettison Fuel Tank,” teaches a generally “teardrop” -shaped tank which is separable into three sections: a nose section, a midsection and a tail section. The sections are made separable so as to be nestable for ease of shipment and handling prior to assembly. The mid-section is split longitudinally and, when assembled, the split is closed up by a bolted flange arrangement.

15. In the 1940s, the Air Force required that auxiliary fuel tanks be made in separable sections so as to be nestable for ease of handling and shipping. Army Air Forces Specification No. 28495-C, dated 24 September 1946, required as follows:

Construction. — External jettisonable fuel tanks shall be of the nested or collapsed type. Nested tanks shall be designed for shipment in the disassembled condition and when packaged in this condition shall have a space-saving factor of 2.5 to one compared to the assembled volume. Collapsible tanks shall be designed for shipment in the collapsed condition and when packaged in this condition shall have a space-saving factor of five to one compared to the assembled volume.

Later specifications permitted external fuel tanks, which were for “continuous service,” to he preassembled for installation on an aircraft.

16. In sum, the prior art of record shows that, at the time the invention in suit was made, the following were old and well-known:

(a) Auxiliary fuel tanks for attaching to airplane wings having an elliptical nose section and a conical tail section, the tail section being in part a right circular cone (findings 11, 12(b));
(b) Auxiliary fuel tanks for attaching to an airplane wing tip having an elliptical nose section, a cylindrical mid-section and a conical tail section (finding 14);
(c) Auxiliary fuel tanks for attaching to airplane wings made in two or three separable sections, the front and back sections being, respectively, of elliptical contour and (in part) right circular conical contour (findings 12(b), 14,15).

In view of the prior art, claim 1 is entitled, at best, to a narrow construction, and covers only a tank having contours substantially identical to the tank taught by the patent specification and designed to have separable sections with center sections of variable length for addition or substitution to alter the fuel-carrying capacity and/or center of gravity of the tank.

17. Plaintiff contends that claim 1 is infringed by five auxiliary fuel tanks procured and used by the Government during the pertinent accounting period. The tanks are as follows:

(a) Type II 450 Gallon tank;
(b) Tank Assembly — 1360 Gallon tank;
(c) Tank Assembly — 200 Gallon F-104 tank;
(d) Tank Installation — 275/335 Gallon tank;
(e) Type I 300 Gallon tank.

18. Tanks (a), (b) and (e) above are made in three sections: a generally elliptical nose section, a cylindrical midsection and a tail section having at its end a right conical portion. The sections are joined together by interlocking corrugations along the circumference of their ends. Tanks (a) and (e) have cylindrical sections which are split longitudinally and are bolted shut when assembled with the nose and tail sections.

There is no evidence that the nose sections of tanks (a), (b) and (e) follow a contour identical (or substantially identical) with the contour disclosed in the patent in suit or are “semi-elliptical” within the meaning of claim 1 (finding 7); nor does the evidence establish that any of the tanks was designed as one of a family of tanks to have interchangeable center sections of different lengths. There is no evidence that the Government procured additional center sections for substitution in the respective tanks to vary their capacity or center of gravity, nor that the tanks were manufactured to accomodate at any time a quantity of fuel different than that originally designed for. So far as the record shows, the tanks have a contour materially identical to the prior art XF6U-1 tanks and were made in separate pieces for ease of handling and nesting prior to installation, as in the prior art, rather than for addition or substitution of different center sections.

19. Tank (c) above is made in three sections: a nose section, a cylindrical mid-section and a tail section having at its end a right conical portion. The sections are joined together as noted in finding 18. The center section is split longitudinally and is bolted shut when assembled with the nose and tail sections. The nose section has a contour which is generally parabolic, rather than elliptical or “semi-elliptical” within the meaning of claim 1 (finding 7). The evidence does not establish that the tank was made to have interchangeable center sections of different lengths so as to be one of a family of tanks having variable capacity; that the Government procured or intends to procure additional center sections for substitution in the tank to vary its capacity or center of gravity; nor that the tank was made to accommodate at any time a quantity of fuel different from that originally designed for. So far as the record shows, the tank was made in separate pieces for ease of handling and nesting prior to installation, as in the prior art, rather than for addition or substitution of different center sections.

20. Tank (d) above is made in three basic sections: a nose section which has a forward part and an aft part; a cylindrical center section; and a tail section having three parts, the end part being a right conical section. The parts are joined together by V-notches and a bolting arrangement. The longitudinal axis of the tail section angles upward from the longitudinal axis of the nose and cylindrical sections, resulting in a tank which may be characterized as “banana-shaped.” The tank bears little resemblance to the tank of the patent in suit because (i) the nose section is parabolic rather than elliptical or “semi-elliptical” within the meaning of claim 1 (finding 7), and (ii) the tank has a broken longitudinal axis and is not symmetrical about any one axis. The evidence does not establish that the tank was made to have interchangeable center sections of different lengths so as to be one of a family of tanks having variable capacity; that the Government procured additional center sections for substitution in the tank to vary its capacity or center of gravity; nor that the tank was made to accommodate at any time a quantity of fuel different from that originally designed for. So far as the record shows, the tank was made in separate pieces for ease of handling and nesting prior to installation, as in the prior art, rather than for addition or substitution of different center sections.

ULTIMATE FINDINGS AND CONCLUSIONS

21. To be valid in view of the prior art, claim 1 must be narrowly construed to embrace auxiliary fuel tanks (a) having contours substantially identical to the contour taught by the patent specification and (b) designed to have, and in fact having, interchangeable center sections for varying the fuel capacity and/or center of gravity of the tanks. (Finding 16.) If more broadly construed to embrace any tank made in three separable sections, the sections being generally el-lipitieal (nose), cylindrical (center) and conical (tail), claim 1 would be invalid as defining subject matter which would have been “obvious” within the meaning of 35 U.S.C. § 103. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

22. The Type II 450 Gallon tank, Tank Assembly-1360 Gallon tank and Type I 300 Gallon tank do not infringe claim 1, as narrowly construed to be valid. There is no evidence that the accused tanks have contours substantially identical to the patented tank; that the contours of the accused tanks were derived from the teachings of the patent specification; or that the accused tanks were designed to have, and in fact have, interchangeable center sections of varying length for altering the tanks’ fuel capacity and/or center of gravity. The design and contours of the accused tanks follow the teachings of the prior art (or are derivable within ordinary skill from the teachings of the prior art), rather than the patent in suit, and thus do not infringe any valid claim. (Finding 18.) Scott Paper Co. v. Marcalus Mfg. Co., 326 U.S. 249, 66 S.Ct. 101, 90 L.Ed. 47 (1945).

23. The Tank Assembly-200 Gallon F-104 tank and the Tank Assembly-275/335 Gallon tank do not infringe claim 1, as narrowly construed to be valid. The nose sections of the accused tanks are parabolic, rather than elliptical, in contour and do not respond to the claim language “semi-elliptical in longitudinal section.” The nose contour of the accused tanks was not derived from the teachings of the patent specification. Furthermore, there is no evidence that the accused tanks were designed to have, and in fact have, interchangeable center sections of varying length for altering the tanks’ fuel capacity and/or center of gravity. (Findings 19, 20.)

CONCLUSION OF LAW

Upon the foregoing findings of fact and opinion which are made a part of the judgment herein, the court concludes as a matter of law that claim 1 of U.S. Patent 2,596,139 is not infringed and the petition is dismissed.


author: MARKEY, Chief Judge.

text:
    Application of SUPERIOR OUTDOOR DISPLAY, INC.
    Patent Appeal Nos, 8956, 8957.
    United States Court of Customs and Patent Appeals.
    June 14, 1973.

      Fred Flam, Flam & Flam, Encino, Cal., attys. of record, for appellant. D. Paul Weaver, 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, RICH, BALDWIN and LANE, Associate Judges, and ALMOND, Senior Judge.
   MARKEY, Chief Judge.

These appeals are from two decisions of the Trademark Trial and Appeal Board refusing registration of SUPERIOR and a design (No. 8956) and SUPERIOR (No. 8957),* each for “Electrically Illuminated Outdoor Displays.” Refusal was based in both eases on prior registration No. 663,071 of SUPERIOR for a long list of electrical items. The prior registration was owned by Eagle Electric Mfg. Co. (Eagle). Eagle began use in 1930, appellant in 1959. The records, except for the design portion of the mark in No. 8956, are virtually identical. Hence, our present opinion, treating the mark as SUPERIOR, will suffice for both cases. The two decisions are reversed.

The Facts

Appellant had filed an earlier application which had been rejected on the same ground and the same reference mark. Thereafter appellant and Eagle entered into an agreement, in letter form, and appellant filed the present application, attaching exhibits showing its outdoor displays and some of Eagle’s electrical hardware goods, a copy of the agreement and an affidavit of appellant’s sales manager. The affidavit set forth that appellant’s displays are sold by salesmen directly contacting places of business and that the prices of such displays range upward from $200.

The registration lists some 44 items of electrical hardware, ranging from electric appliance cords and connector clips through electric percolators and toasters to push buttons and desk lamps. The examiner and the board noted in this wide ranging list the presence of “incandescent lamps” and “electric sign flashers.”

The agreement spelled out (1) appellant’s sales methods throughout the United States (2) that appellant’s goods are not sold in hardware stores (3) that appellant and Eagle had done business together for years (4) that the Patent Office had held [the earlier decision] that appellant’s displays and Eagle’s sign flashers were “identical in kind” and “could well emanate from a common source” (5) that appellant’s application is specifically for electrically illuminated outdoor displays and for no other products (6) that neither party was aware of any actual confusion (7) that the goods of the parties bore no relationship in use, promotion, distribution or sale (8) that neither party foresaw any likelihood of confusion (9) that appellant would not use the mark on electrical hardware or other electrical items and would restrict its use solely to electrically illuminated outdoor displays and replacement parts for such displays and (10) that Eagle had no objection to the registration sought by appellant.

The Rejection

In his final rejection, the examiner stated:

The Examiner does not believe that a letter of consent can negate the provisions of Section 2(d) of the Trademark Act of 1946.

In his Answer, the examiner pointed to the presence of “electric sign flashers” in the goods of the registration, “again” directed applicant’s attention to the decision on the earlier application, stating his continued belief that that decision “is controlling here.” The examiner noted the “letter of consent” but did not consider it “sufficient grounds for allowance” whqn the marks were identical and the goods “so closely related as those here involved.” Referring again to the prior decision, the Examiner’s Answer closes with:

The Examiner appreciates thát the facts and enclosures here differ from those in application Serial No. 212,-459 which resulted in the decision cited above. But, he still believes that said decision is here pertinent.

The board, recognizing that the present record contained an additional element beyond those in the record on which its earlier decision was based, i. e., the consent of registrant, felt compelled to sustain the examiner’s rejection in view of our decision in In re Continental Baking Company, 390 F.2d 747, 55 CCPA 967 (1968), wherein we said:

It may well be that individual agreements regarding use and registration of trademarks are of “evidentiary value,” as the board here has demonstrated. However, in enacting Section 2(d) of the Lanham Act * * * Congress clearly charged the Patent Office with the initial responsibility of determining whether certain trademarks are entitled to registration, as distinguished from use, within the scope of that section. To hold that the present consent to register should control would be to allow individuals to take the law in their own hands, thus usurping the responsibility that Congress has placed in the Patent Office.

The board did not disregard the agreement herein. On the contrary, it noted that Eagle’s consent related only to electrically illuminated outdoor displays and yet the agreement specifically provided that appellant was free to use the mark for “replacement parts for its outdoor displays” and that the incandescent lamps and sign flashers of Eagle “may constitute such replacement parts.” Thus, in accordance with its “responsibility” described in Continental Baking, the board saw a likelihood of confusion emanating from use of the identical mark on these products and held that the consent agreement could not overcome the proscription of Section 2(d).

OPINION

We have often found confusion likely when identical or similar marks are used on closely related electrical goods. Wincharger Corporation v. Rinco, Inc., 297 F.2d 261, 49 CCPA 849 (1962) ; Eastern Industries, Inc. v. Waterous Company, 289 F.2d 952, 49 CCPA 701 (1961) ; In re General Cable Corp., 222 F.2d 736, 42 CCPA 906 (1955); Sigma Industries, Inc. v. Sigma Instruments, Inc., 470 F.2d 1055, (CCPA 1973). In the latter case, the wire sealing product of the applicant was visibly used on the equipment of op-poser. The records in those cases, however, contained no indication by the parties that the nature of the goods, or their use and distribution, were such as to render confusion unlikely. In three of those cases a party submitted evidence and argument that confusion was likely.

The present record, as did that in In re E. I. DuPont DeNemours & Co., 476 F.2d 1357 (CCPA 1973), contains an agreement by those most familiar with and most pecuniarily affected by the facts of the marketplace. The present agreement, as above indicated, constitutes far more than a mere “consent” of Eagle to registration by appellant. Specifically referring to the Patent Office position vis-a-vis appellant’s earlier application, it established, in the absence of contrary evidence, the absence of actual confusion for 10 years, the disparity in the relationship, promotion, use and distribution of the goods and the belief of both parties that confusion was unlikely.

As was true in DuPont, the earlier decision, though it may have been correct on an earlier and different record, is irrelevant here. The question is not whether the additional evidence (the agreement) overcame the earlier decision. Nor is it whether the agreement negated the statute or stripped the Patent Office of its responsibility. Congress alone can do that. The question is whether the total record, now including the agreement, indicates a likelihood or nonlikelihood of confusion. We think the agreement evidence, in this case, clearly rebuts the “closely related goods” basis of the earlier decision and indicates that confusion is unlikely.

We would remark the apparent basis of the board’s decision as being the likelihood of confusion' emanating from concurrent use of the identical mark on two of Eagle’s items and appellant’s “replacement parts.” But registration is sought for displays, not for replacement parts. We do not reach the question of whether a prior purchaser of appellant’s displays would or would not be likely to be confused in ordering replacement parts for those same displays. The question under Section 2(d) must be decided in relation to the goods for which registration is sought. See Paula Payne Products Co. v. Johnson Publishing Co., Inc., 473 F.2d 901 (CCPA 1973); Commerce Drug Co. v. Kirkman Laboratories, Inc., 59 CCPA—, 461 F.2d 833 (1972). We are not concerned with a use which might occur on goods not described or not included within the description of goods in the application. If confusion should stem from use for replacement parts, it would not be caused by the requested registration. Registration never produces confusion. Nor could it result from any use on which the present application for registration is based. It would result from a use in relation to which neither we nor the Patent Office has any “responsibility.”

In any event, we view the “replacement parts” provision in this case as a normal, practical aspect of everyday business realities. Appellant could not safely assure against the occurrence of its mark on packages and literature accompanying its replacement parts for its previously sold displays and Eagle saw no likelihood of confusion arising from such use. The provision appears to us, therefore, as both irrelevant to the registration sought and as indicative of a careful regard for the total market interface between parties who intend to abide by their agreement.

Reference may be had to our opinion in DuPont with respect to arguments in the briefs which are directed by appellant to its right to use the mark and by the solicitor to the effect of doubt in relation to consents and the duty of the Patent Office under Section 2(d). The briefs herein were, of course, prepared and filed prior to publication of our opinion in DuPont.

Because we think the total record establishes such a marketplace disparity between appellant’s electrically illuminated outdoor displays and Eagle’s electrical items as to render confusion unlikely, the decisions below must be reversed.

Reversed.

      . Serial No. 308,441, filed September 30, 1968.

      . Serial No. 307,145, filed September 11, 1968.

      . The board opinion for serial No. 308,441 is reported at 168 USPQ 378 (1970) and for serial No. 307,145 is abstracted at 168 USPQ 543 (1970).

      . Serial No. 212,459.

      . In re Superior Outdoor Display, Inc., 154 USPQ 631 (TTAB 1967).

      . The letter heading refers to “Application Serial N,o. 212,459” but the goods are identical in botli of appellant’s applications.


author: LANE, Judge. RICH, Judge

text:
    Application of Dean M. CHRISTENSEN.
    Patent Appeal No. 8558.
    United States Court of Customs and Patent Appeals.
    May 31, 1973.
    Homer J. Schneider, Phillip H. Mayer, Wolfe, Hubbard, Leydig, Voit & Os-ann, Chicago, 111., attorneys of record, for appellants. William A. Smith, Jr., Washington, D. C., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jere W. Sears, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   LANE, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the rejection of claims 4 and 5 of appellant’s application entitled “Method of Determining Subsurface Porosity.” No claims were allowed. Subsequent to the oral argument of this appeal, the Supreme Court of the United States handed down its opinion in Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972) (hereafter Benson). We allowed appellant and appellee here to file supplemental briefs directed to that Supreme Court opinion and both have done so. We affirm the decision of the board.

The invention relates to a method of determining the porosity of subsurface formations. Porosity is one of the subsurface parameters which are of value to geologists, petroleum engineers and others interested in analyzing lithologic formations. In accordance with the present invention, it is possible to obtain a continuous plot of the porosity of the substances penetrated by a bore hole. The claimed method of determinng the porosity of lithologic substances from collected well logging data is set forth in claims 4 and 5:

4. The method of determining the porosity of a subsurface formation in situ comprising the steps of forming a fluid filled hole through said formation, measuring the density of said formation, generating both compression and shear waves in said formation, computing compression and shear wave velocity from said waves, determining the bulk modulus of said fluid, and computing the porosity of the formation from the relation:

wherein 0 is the porosity, X*is said density, Vp is said compression wave velocity, Vs is said shear wave velocity and K is the bulk modulus of said fluid. CA7561]

5. The method of claim 4 in which the value of K is taken to be 0.235 x 1011 dynes/cm2.

The examiner rejected method claims 4 and 5 under 35 U.S.C. § 103 as unpat-entable over Itria and Blizard since, in his opinion, the alleged advance over the art resides in nonstatutory subject matter. The examiner explained the reasoning behind the rejection in his Answer stating:

* * * the prior art teaches all the claimed steps except that drawn to computing the porosity of a formation. The essence of the appellant’s invention lies in using data already available to one of ordinary skill in the art to compute the values of a parameter known to be of value in determining the geophysical properties of a formation * * * according to a novel quadratic equation. Stated otherwise, the appellant’s point of departure from the teachings of the prior art lies in applying his new formula to old data to calculate values of a known parameter. While this discovery of the appellant may constitute an important contribution to' the art of geophysical prospecting, unless it falls within the four statutory subjects matter of 35 U.S.C-. 101 it cannot be protected by the patent laws.

The 'board, agreeing with the examiner’s reasoning, affirmed. On request for reconsideration, the board went on to explain:

* * * the present case, which * * * depends for patentability on non-statutory matter, comes primarily under the provisions of 35 U.S.C. 101.
The Examiner referred to 35 U.S.C. 103 in the final rejection since no single reference showed each of the physical steps of collecting data as defined by the claims, even though these steps were admitted to be old in the specification.

From this, we conclude that the only real issue before us is whether the method claims, which recite a mathematical formula at the point of novelty, define a statutory process within the meaning of 35 U.S.C. § 101.

OPINION

It is well established that under the present statutory scheme, patent property rights may not be secured on mathematical equations. As this court recently said in In re Bemhart, 417 F.2d 1395, 1399, 57 CCPA 737, 743 (1969):

We think it is clear that in enacting section 101 Congress meant to exclude principles or laws of nature and mathematics, of which equations are an example, from even temporary monopolization * * *.

The Supreme Court in Benson, supra, more recently said:

It is conceded that one may not patent an idea. But in practical effect that would be the result if the formula for converting * * * [BCD numerals to pure binary numerals] were patented in this case. The mathematical formula involved here has no substantial practical application except in connection with a digital computer, which means that if the judgment below is affirmed, the patent would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself.
It may be that the patent laws should be extended to cover these programs, a policy matter to which we are not competent to speak. [409 U.S. at 71, 93 S.Ct. at 257.]

The Benson application claims, which the Supreme Court held do not constitute a patentable process within the meaning of 35 U.S.C. § 100(b), recite a method of converting signals or representations from binary coded decimal form into binary form by a series of steps. The steps include shifting, masking, adding, and repeating. The Benson claims are set forth in the appendix to the Supreme Court opinion, 409 U.S. at 73-74, 93 S.Ct. 253.

The Supreme Court concluded that the Benson method varies the ordinary arithmetic steps á human would use by changing the order of the steps, changing the symbolism for writing the multiplier used in some steps, and by taking subtotals after each successive operation. The Court found that the claimed mathematical procedures may be carried out in existing digital computers long in use, no new machinery being necessary, and that the mathematical procedures may also be performed without a computer.

Appellant here, in his supplemental brief, contends that Benson did not decide the issues of this case. Appellant states that his claims are drawn explicitly to a method of determining subsurface porosity in situ, and that his invention is not a computer program. It is clear that the term, in situ, as used in appellant’s application and claims merely means that formation porosity is determined without removing core samples for direct measurement. The actual computation of subsurface porosity is not made in the ground. The measurement of density, compression wave velocity, shear wave velocity and bulk modulus of the subsurface formation, all known steps, merely precede the mathematical computation of formation porosity by solution of appellant’s novel equation. The in situ limitation in appellant’s claims does not render Benson inapplicable. We believe that Benson must influence our decision in the instant case. Appellant’s arguments, that Benson does not fully deal with the breadth of ’§ 101 and does not suggest what view the Congress should take, do not render inapplicable what the Supreme Court said in the quotation reproduced above.

Appellant further states that Benson does not mention the mental step issue and that it does not refer to the prior decisions of this court except the specific one before it. The issue considered by the Supreme Court in Benson was a narrow one, namely, is a formula for converting binary coded decimal numerals into pure binary numerals by a series of mathematical calculations a patentable process? The issue before us in the instant case is also a narrow one, namely, is a method claim in which the point of novelty is a mathematical equation to be solved as the final step of the method, a statutory method? We follow the Supreme Court'in concluding that the answer is in the negative. Given that the method of solving a mathematical equation may not be the subject of patent protection, it follows that the addition of the old and necessary antecedent steps of establishing values for the variables in the equation cannot convert the unpatentable method to patentable subject matter.

In reaching our conclusion in the light of Benson, we find it unnecessary to discuss the correctness or the rationale of any of our prior decisions in a line of cases starting with In re Abrams, 188 F.2d 165, 38 CCPA 945 (1951). Each new appeal must be decided on its own facts and in view of interpretations of the patent law as handed down by the Supreme Court of the United States.

We conclude that in the instant case, the nonstatutory subject matter rejection made toy the Patent Office calls only for a treatment of this aspect of patentability with respect to the particular claims here involved. The decision of the board is affirmed.

Affirmed.

RICH, Judge

(concurring).

I agree, reluctantly, with the result reached in Judge Lane’s opinion because, in view of Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972), we have no alternative but to affirm the rejection of claims 4 and 5. However, I wish to state my own views as to the bearing on this ease of the Supreme Court’s Benson decision.

This ease is quite unlike Benson, which we decided in 1971, 441 F.2d 682, 58 CCPA 1134, and which the Supreme Court reversed. The rejection by the examiner in the present case was based on a combination of a holding of obviousness under 35 U.S.C. § 103, using two prior art references, and application of the old “mental steps” doctrine. He found the only advance over the prior art to be the computation step, recited in the claims, which he said was “purely mental” and, in itself, therefore “non-statutory.” He relied primarily, for legal support, on this court's old opinions in In re Abrams, 188 F.2d 165, 38 CCPA 945 (1951), and in the companion case of In re Yuan, 188 F.2d 377, 38 CCPA 967 (1951), containing ideas which we have partially rejected and considerably refined in recent years. The board, in a two-paragraph opinion, added nothing and affirmed the section 103 obviousness rejection. In a second opinion, in response to a request for reconsideration, the board added a short discussion of the mental step aspect of the case, Abrams, and Yuan and said 35 U.S.C. § 101 had applicability to the decision. The implication in that observation, which was not explained, is that under section 101 a mental step is not patentable subject matter.

In Benson, on the other hand, the sole rejection was purely and simply that the rejected method or process claims, as a whole, were directed to non-statutory subject matter in that they were not “processes” within the meaning of 35 U.S.C. § 101. Stated another way, Benson’s process was said not to be the kind of process the statute contemplates. That was the only question we decided in Benson. That was the only question presented to the Supreme Court. As its opinion states at the outset,

The question is whether the method described and claimed is a “process” within the meaning of the Patent Act [quoting 35 USC 101 and the section 100(b) definition of “process” in a footnote].

Unfortunately, after stating that to be the question, the Supreme Court opinion does not again advert to it and never decides it, except inferentially by reversing our decision that the claims were directed to statutory processes. Since the Court’s opinion does not discuss the meaning of “process” in the statute, it sheds no light on that subject. It ends up discussing the patentability of programs for digital computers but no program was before us in Benson. Nor is a program before us in this case.

Since the issue in Benson was not the same as the issue in this case, one must ask what bearing the Supreme Court’s Benson decision has here. The answer for me is that, notwithstanding the fact that the Supreme Court never discussed the issue presented to it, its opinion went on at some length about the “abstract and sweeping” scope of the claims, making that the pivot on which its decision turned, proceeding on the assumption — of doubtful validity — that the processes they defined could be carried out “through any existing machinery or future-devised machinery or without any apparatus.” Having set up these hypothetical abstract and sweeping claims as the subject of its consideration, it treated them as for a “mathematical formula” or “the algorithm itself,” because of their breadth, and as such, held them unpatentable.

Thus the reasoning of the Supreme Court’s opinion has more bearing on the facts in this case than it had on the facts before it in Benson. The claims in this case do contain a mathematical formula; in Benson they did not. I therefore agree with Judge Lane that the Benson opinion “must influence our decision in the instant case.”

It was made quite clear in the “nutshell” summation in the Benson opinion that patents are not to issue where their effect would be to enable the patentee to prevent others from making use of a mathematical formula. That would be the effect here. I think it matters not, under the Supreme Court’s rationalization, that appellant’s claims are limited to porosity-determination application of the novel formula, characterized by the examiner as a possible “important contribution to the [useful] art of geophysical prospecting.” In Benson, the Supreme Court specifically assumed that the “mathematical formula involved here has no substantial practical application except in connection with a digital computer” yet it went on in the same sentence to say that “the patent would wholly pre-empt the mathematical formula * * Whether or not that statement conforms to fact, it expresses the view of the Supreme Court which we must follow in administering the patent law, at least until such time as it may clarify the situation.

If the process claimed in Benson, having no practical application other than in operating a digital computer, constituted pre-emption of a formula, it follows that the processes claimed here pre-empt a formula notwithstanding they have application only to subsoil porosity determinations. According to the reasoning of the Supreme Court, this appears to be a question of scope, or at least the abstract nature of the claims, not a question of what the Patent Act means by “process.” I can read the opinion only as saying that the abstraction or undue scope of the claims is the result of their assumed pre-emption or exclusion from the use of a formula, algorithm, or “generalized formulation,” though for a specific application in a useful art. “Algorithm” has been used in the sense of a “procedure for solving a given type of mathematical problem” and “formula” is used in the sense of a mathematical formula. The Supreme Court in Benson appears to have held that claims drafted in such terms are not patentable — for what reason remaining a mystery. Under the rules of the legal game, we are obliged to follow its lead as best we can.

But for the Benson decision, I would reverse the rejection here because I see no reason why such a specific, useful, technological process as a process for determining subsurface porosity, concededly a contribution to the useful arts, cannot be defined in the language of mathematics which is widely used as a medium of communication in that field. I have no more doubt it is a “process” within the meaning of § 101 than I had about Benson’s process; but on that point I seem to have been reversed.

      . Serial No. 450,503 filed April 23, 1965.

      . U. S. Patent 3,127,950 issued April 7, 1964.

      . U. S. Patent 3,181,645 issued May 4, 1965 on an application originally filed August 6, 1959,


author: STEPHENSON, Circuit Judge.

text:
    UNITED STATES of America, Appellee, v. Lloyd FOLSOM, Jr., Appellant. UNITED STATES of America, Appellee, v. Gerald Lance SINGER, Appellant.
    Nos. 72-1607, 72-1618.
    United States Court of Appeals, Eighth Circuit.
    Submitted April 10, 1973.
    Decided June 8, 1973.

      Gary Eldredge, and Robert G. Duncan, Kansas City, Mo., for appellants.
    Anthony Nugent, Asst. U. S. Atty., Kansas City, Mo., for appellee.
    Before LAY and STEPHENSON, Circuit Judges, and TALBOT SMITH, Senior District Judge.

       Eastern District of Michigan, sitting by designation.

   STEPHENSON, Circuit Judge.

Appellants make numerous contentions of error in their trial wherein they were convicted by a jury for violation of the Dyer Act. 18 U.S.C. § 2313. The jury failed to return a verdict on Count I of the indictment which charged appellants with transporting a stolen motor vehicle, but convicted appellants on Count II in which it was charged that they had concealed a stolen motor vehicle.

On appeal, appellants present the following contentions:

1. Whether there was sufficient evidence to support the jury’s verdict on Count II.

2. Whether there was sufficient evidence to identify the truck found in appellants’ possession as the one stolen.

3. Whether the trial court erred in charging the jury that they may infer guilt from the “defendant’s unexplained or unsatisfactorily explained possession of recently stolen property.”

4. Whether the jury charge allowed the jury to convict appellant Singer of receiving stolen property, an offense not charged in the indictment.

5. Whether the trial court erred in its definition of concealment in its charge to the jury.

I. A thorough examination of the record convinces us that the evidence, when viewed in the light “most favorable to sustaining the jury verdict and [accepting] as established all reasonable inferences that tend to support the jury’s determination,” is clearly sufficient to support the jury’s verdict as to both appellants. See, United States v. Mahanna, 461 F.2d 1110, 1116 (CA8 1972) and United States v. Briddle, 430 F.2d 1335, 1337, 1338 (CA8 1970). See also, United States v. Brady, 425 F.2d 309 (CA8 1970).

II. There was also sufficient evidence to identify the stolen motor vehicle as the one recovered from the appellants. Not only was color, make and year established, but the truck recovered was identified by its owner as the one stolen and the Chief of Police testified that he had discovered the recovered truck’s ID tag to have been removed from the door and lying in the back of the truck. Furthermore, appellant Singer later personally delivered the stolen vehicle’s license plate, some doors and windows to the owner of the truck.

III. The trial judge instructed the jury that if they found that the government had proved beyond a reasonable doubt every essential element of the offense charged and that the appellant had possession of the stolen truck, that the jury may infer guilt from the defendant’s unexplained or unsatisfactorily explained possession of the recently stolen property if such an inference was warranted in their judgment. This instruction has been approved on numerous occasions by this Circuit in Dyer Act cases. United States v. Johnson, 466 F.2d 537 (CA8 1972) (and cases cited at 538). But see, United States v. Barnes, 466 F.2d 1361 (CA9 1972), cert. granted, 409 U.S. 1037, 93 S.Ct. 544, 34 L.Ed. 2d 486 (1973). Under the instruction the jury was entitled to disbelieve appellant Folsom’s explanation as to how he and Singer came into possession of the stolen truck. We are satisfied that under the circumstances of the case the instruction was appropriate.

IV. Appellant Singer is foreclosed by Rule 30 of the Federal Rules of Criminal Procedure from raising on appeal the fourth contention, that under the instructions the jury was allowed to convict Singer of receiving stolen property, a crime under § 2313 not charged in the indictment (Singer was charged with concealing a stolen motor vehicle). Rule 30 provides that “No party may assign as error any portion of the charge or omission therefrom unless he objects thereto before the jury retires to consider its verdict, stating distinctly the matter to which he objects and the grounds of his objection.” In any event, we are satisfied that the instructions, when viewed as a whole, clearly indicated to the jury that Singer was being tried and that they could convict him only for concealing, and not receiving the stolen truck.

V. Finally, Singer contends that the trial court’s instructions were erroneous in that they allowed the jury to find Singer guilty of concealing the stolen truck for only his mere possession of the motor vehicle. Again we would be justified in refusing to consider the contention for noncompliance with Rule 30 since no objection was made until after the jury had retired to consider its verdict. United States v. Gurule, 437 F.2d 239, 242 (CA10 1970). See Harding v. United States, 337 F.2d 254, 257 (CA8 1964).

“Concealing a stolen automobile requires some overt act over and above mere possession.” United States v. Powell, 420 F.2d 949, 950 (CA6 1970). See also, Mahanna, supra 461 F.2d at 1117, fn 1. The trial court in its charge to the jury stated that the term conceal “includes doing any act which was intended to throw off an owner searching for his car.” (emphasis added) The instructions, when viewed in their entirety, disclose to our satisfaction that this particular charge was appropriate in the context of this case and that the trial court in no way precluded the jury from applying the ordinary meaning of the term conceal. The instruction was intended only to give supplemental meaning to the common definition of the term. We are satisfied that Singer suffered no prejudice by the instruction and could not have been convicted solely on the basis of “mere possession” of the stolen truck. Furthermore the evidence of concealment is strong and clearly supports the jury’s verdict. The truck’s license plates were replaced, one vehicle identification number removed and another distorted. See Powell, supra (and cases cited 420 F.2d at 950).

The judgment is affirmed.

      . The trial court instructed that the essential elements of the offense in Count II were:
      First, the act or acts of receiving and concealing or causing to be received and concealed a stolen motor vehicle moving in interstate commerce; and, second, doing such act or acts with knowledge that the motor vehicle had been stolen.
      Other instructions regarding Count II refer only to the concealment of the stolen truck.

      . The Sixth Circuit, subsequent to Powell, has approved this instruction. United States v. Ward, 433 F.2d 1299, 1300 (CA6 1970).


author: MOORE, Circuit Judge:

text:
    SECURITIES AND EXCHANGE COMMISSION, Plaintiff-Appellee, v. RADIO HILL MINES CO., LTD., et al., Defendants, Sidney Stein, Defendant-Appellant. Application of Sidney STEIN for a Writ of Habeas Corpus, Sidney Stein, Relator-Appellant.
    Nos. 279-281, Dockets 72-1615, 72-1746 and 72-1747.
    United States Court of Appeals, Second Circuit.
    Argued Oct. 25, 1972.
    Decided May 25, 1973.

      Sidney Feldshuh, New York City (Feldshuh & Frank, New York, N. Y., Richard Weinberger and Robert Bartels, New York City, of counsel), for defendant-appellant and relator-appellant.
    Jacob H. Stillman, Asst. Gen. Counsel, S. E. C., Washington, D. C. (Walter P. North, Acting Gen. Counsel, Frederick L. White, Atty., S. E. C., Washington, D. C., of counsel, for plaintiff-appellee.
    Before MOORE, HAYS and MULLIGAN, Circuit Judges.
   MOORE, Circuit Judge:

Defendant-appellant Sidney Stein appeals from three orders of the United States District Court for the Southern District of New York, Charles H. Ten-ney, Judge, issued in connection with an application by the Securities and Exchange Commission (SEC) to adjudge Stein in civil contempt for failure to comply with a preliminary injunction. Two of these orders were issued in the pending injunctive action — an order of May 22, 1972, found Stein in contempt for failure to comply with the reporting provisions of a preliminary injunction, and a commitment order of June 9, 1972, directed that Stein be confined until he did so comply. The third order which is here appealed denied an application for a writ of habeas corpus in a proceeding brought to obtain Stein’s release from confinement.

I.

The preliminary injunction was issued on November 5, 1970, upon motion of the SEC. After a seven-day evidentiary hearing on the motion then District Judge Mansfield found that Stein and three others had participated in a scheme that violated the registration and anti-fraud provisions of the Securities Act of 1933 (15 U.S.C. § 77e(a), (c), 77q(a)) and the antifraud provisions of the Securities Exchange Act of 1934 (15 U.S.C. 78j(b)) and Rule 10b-5 promulgated thereunder (17 CFR 240.10b-5). Judge Mansfield’s order required that each defendant submit to the Commission within thirty days of the entry of the decree, a complete record of all securities owned by him either of record or beneficially, and thereafter to submit quarterly reports of all of his securities transactions.

Stein did not comply with this order. Instead, on December 16, 1970, some eleven days after the initial report to the SEC was due, Stein appealed that order. No stay of the order pending appellate review was sought. By letter dated December 22, 1970, Stein informed the SEC that he did not intend to submit the ordered reports on the ground that to do so would tend to incriminate him in violation of his rights under the Fifth Amendment.

On July 7, 1971, the SEC filed a notice of motion before Judge Tenney to adjudge Stein in contempt for failing to comply with the November 5th order. Before any decision was reached on its contempt motion, the SEC, on January 20, 1972, moved to dismiss Stein’s appeal of the November 5th preliminary injunction. The motion was unopposed by Stein. On February 15, 1972, fourteen months after the notice of appeal had been filed, this Court dismissed that appeal for want of prosecution.

On May 4, 1972, Judge Tenney issued a Memorandum Opinion in which he found Stein in contempt for failing to file the required reports with the SEC. On June 7, 1972, new counsel for Stein sought to have the dismissal of Stein’s appeal of the preliminary injunction vacated. This Court denied that application. On June 9, 1972, Judge Tenney signed a commitment order which provided that Stein be incarcerated until he purged himself of his contempt. On June 13, 1972, Stein’s attorneys sought stays of the contempt and commitment orders. These stays were denied and Stein was confined in the Federal House of Detention. On June 15, 1972, Stein’s attorneys filed a petition for a writ of habeas corpus asserting Stein’s Fifth Amendment privilege as the basis for that petition. When the petition was denied, Stein purged himself of the contempt by filing the required reports and was released from custody.

We affirm the orders of the court below by which Stein was found in contempt and incarcerated; we further affirm the denial of Stein’s petition for a writ of habeas corpus.

II.

Stein has attacked the reporting provision of Judge Mansfield’s preliminary injunction on three grounds. He asserts that this provision is invalid because (1) there is no statutory authority for such reports in the Securities Acts, (2) all of the securities reporting requirements which Congress intended to permit are specifically provided for in the statutes, and (3) the required reports constitute an unreasonable search and seizure in violations of Stein’s Fourth Amendment rights.

“It is now well established that [the Securities Act of 1933 and the Securities Exchange Act of 1934] confer general equity powers upon the district courts.” SEC v. Manor Nursing Centers, Inc., 458 F.2d 1082, 1103 (2d Cir. 1972). See also, SEC v. Texas Gulf Sulphur Co., 446 F.2d 1301, 1307 (2d Cir.), cert. denied, 404 U.S. 1005, 92 S.Ct. 561, 30 L.Ed.2d 558 (1971), reh. denied, 404 U.S. 1064, 92 S.Ct. 733, 734, 30 L.Ed.2d 753 (1972). The Supreme Court has held that in appropriate instances there is authority in equity “to use quite drastic measures” to insure compliance with the law. United States v. Bausch & Lomb Optical Co., 321 U.S. 707, 726, 64 S.Ct. 805, 88 L.Ed. 1024 (1944).

Despite appellant’s contention to the contrary, we believe that the existence of certain reporting requirements within the Securities Acts (see, e. g., §§ 13 and 14(d) of the Securities Exchange Act of 1934, 15 U.S.C. §§ 78m and 78n (d)) does not preclude a court, acting in the exercise of its equitable powers in an appropriate case, from designing additional reporting requirements which may be necessary to insure compliance with an injunction. Indeed, in United States v. E. I. duPont deNemours & Co., 366 U.S. 316, 81 S.Ct. 1243, 6 L.Ed.2d 318 (1961) the Court declared:

[I]t is well settled that once the Government has successfully borne the considerable burden of establishing a violation of law, all doubts as to the remedy are to be resolved in its favor.
Id. at 334, 81 S.Ct. at 1254 (footnote omitted)

It is clear beyond cavil that the district court did have the power to impose upon Stein the reporting provision included as ancillary relief in its preliminary injunction.

Given the power to impose the reporting requirement, the district court could properly do so only if the circumstances of this case justified this relief. In determining the propriety of the preliminary injunction sought by the SEC, Judge Mansfield conducted an evidentiary hearing which extended over seven days. As the court stated in its Findings and Conclusions and as the preliminary injunction itself reiterates, at these hearings the SEC established to the court’s satisfaction that the “defendants have been engaged in, and unless enjoined will continue to engage in, acts- and practices which constitute violations of * -x- * ^0 Securities Act of 1933 -x- -x- -x- [and] the Securities Exchange Act of 1934 * * Findings and Conclusions, 70 Civ. 3286, November 4, 1970; Order of Preliminary Injunction, November 5, 1970.

The hearings established that Stein had orchestrated an elaborate scheme which violated the registration and anti-fraud provisions of the securities laws and which defrauded securities broker-dealers of approximately $132,000. At these hearings the SEC also demonstrated Stein’s practice of concealing his participation in securities transactions by the use of nominees and other devices. Because the court’s preliminary injunction has the primary purpose of prohibiting Stein from violating the securities laws, the SEC convincingly argued that the reporting provision was a necessary form of ancillary relief which would aid the principal purpose of the injunction.

We find that on the facts of this case the reporting provision of the November 5th injunction was and is an appropriate exercise of the district court’s equity powers. We further find that the provision, as a necessary adjunct of the preliminary injunction, is neither vague nor overly broad.

III.

Stein asserts that even if the reporting provision of the preliminary injunction is valid, his Fifth Amendment privilege against self-incrimination is an absolute defense to complying with the provision. In his Memorandum Opinion of May 4, 1972, by which Stein and two other defendants were held in contempt, Judge Tenney found that by abandoning his appeal of the preliminary injunction (that appeal was dismissed for want of prosecution on February 15, 1972), Stein had waived his right to assert this privilege and thus would not be permitted to attack the preliminary injunction collaterally by way of a contempt proceeding. We do not reach the issue of waiver since we find no constitutional defects in the preliminary injunction itself.

In California v. Byers, 402 U.S. 424, 91 S.Ct. 1535, 29 L.Ed.2d 9 (1971) the Court considered a statute which required a motorist involved in an accident to stop and give his name and address. In his plurality opinion Chief Justice Burger noted that the California statute did not require the disclosure of information which entailed a “substantial risk of self-incrimination * * *.

Furthermore, the statutory purpose is noncriminal and self-reporting is indispensable to its fulfillment.” 402 U.S. at 431, 91 S.Ct. at 1539. Chief Justice Burger further noted that “Driving an automobile * * * is a lawful activity”, 402 U.S. at 431, 91 S.Ct. at 1539, and that automobile drivers are not a group “inherently suspect of criminal activities.” Id., citing Albertson v. Subversive Activities Control Board, 382 U.S. 70, 79, 86 S.Ct. 194, 15 L.Ed.2d 165 (1965). The Albertson case also pointed out the significance of determining whether the claim of self-incrimination is in an “essentially noncriminal and regulatory area of inquiry.” Id.

It is clear that securities regulation is an “essentially noncriminal and regulatory area of inquiry.” Id. The reporting provision here challenged requires disclosure of Stein’s beneficial and record ownership of securities. Such ownership is generally a completely “lawful activity”, Byers, supra, 402 U.S. at 431, 91 S.Ct. 1535, and disclosure of such ownership is not an admission of an “inherently suspect” activity, Albertson, supra, 382 U.S. at 79, 86 S.Ct. 194. We, therefore, conclude that the reporting provision of the preliminary injunction is proper in the circumstances of this case and that interposition of a Fifth Amendment claim, if appropriate, would be of no aid to appellant Stein.

IV.

As part of this consolidated appeal Stein has also challenged the denial of his petition for a writ of habeas corpus, by which he sought release from federal custody which had been ordered as i a result of his having been found in contempt of court. Since Stein has purged himself of his contempt and thus effected his own release from custody, the appeal as to this order is dismissed as moot.

We have considered appellant’s remaining arguments and find them to be without merit.

In conclusion, we affirm in all respects the orders of the court below.

      . It Is Further Ordered that Sidney Stein, Albert Feiffer, Norman Rubinson and Harry Silber and any entities under their control are required to report to the New York Regional Office of the Securities'and Exchange Commission all of their securities transactions in the following manner :
      A. Within 30 days of the entry of this judgment a complete record of all securities owned beneficially or of record by them ; and
      B. By the tenth day after the close of every calendar quarter commencing with and including the fourth quarter of 1970, a complete record of all transactions within the preceding quarter.
      Order of Preliminary Injunction, November 5, 1970.