text:
    Norman HOLTZINGER, Petitioner-Appellant, v. W. J. ESTELLE, Director, Texas Department of Corrections, Respondent-Appellee.
    No. 73-1794.
    United States Court of Appeals, Fifth Circuit.
    Jan. 17, 1974.

      Norman Holtzinger, pro se.
    Robert C. Flowers, Asst. Atty. Gen., Thomas M. Pollan, Asst. Atty. Gen., Austin, Tex., for respondent-appellee.
    Before THORNBERRY, GOLDBERG and RONEY, Circuit Judges.
   PER CURIAM:

Norman Holtzinger, an inmate of the Texas Department of Corrections, appeals from an order of the district court dismissing his petition for the writ of habeas corpus. We affirm.

In February of 1955 appellant was convicted in a Texas state court of robbery by assault and was sentenced to 25 years imprisonment. The conviction was affirmed in Holtzinger v. State, 1955, 162 Tex.Cr.R. 231, 284 S.W.2d 158. On May 4, 1963, he was paroled and granted permission to move to and be subject to the supervision of the state of California. On April 1, 1965 he was convicted in a California state court of robbery by assault and was sentenced to life imprisonment. On April 23, 1965 Texas revoked his parole and a parole violator warrant was filed against him. On May 1, 1969 California handed appellant into the custody of Texas.

In his habeas petition filed below appellant contended that the state of Texas lost its jurisdiction over him due to its undue delay in regaining custody over him and by having him serve his sentence piecemeal. He claimed credit on his Texas sentence for the time spent while incarcerated in California, for time spent on parole, and for “good time” for the time confined in California. The district court held that the question of “good time” does not present a federal constitutional issue and dismissed the petition. On March 22, 1973 appellant was paroled by Texas to the custody of California, where he is now serving his California sentence.

The state of Texas did not lose jurisdiction over the appellant. The parole violator warrant was filed in the same month that appellant was convicted in California, and took custody of him as soon as he was released by California. Therefore Texas has not demonstrated the lack of interest requisite to establishing a waiver of jurisdiction. See Shields v. Beto, 5th Cir. 1967, 370 F.2d 1003; also Dorrough v. State of Texas, 5th Cir. 1971, 440 F.2d 1063; Bilton v. Beto, 5th Cir. 1968, 403 F.2d 664.

It is firmly established that a Federal inmate who has violated the conditions of his parole is not entitled to credit on his sentence for the time spent on parole. 18 U.S.C. § 4205; Blanchard v. United States, 5th Cir. 1970, 433 F.2d 13; Garnett v. Blackwell, 5th Cir. 1970, 423 F.2d 1211; Clark v. Blackwell, 5th Cir. 1967, 374 F.2d 952. Also, this Court has held that the awarding of “good time” is a matter of state law, not a federal constitutional issue. Quirke v. Beto, 5th Cir. 1967, 373 F.2d 739; see Grossnickle v. Alabama, 5th Cir. 1969, 415 F.2d 864. Furthermore, “good time” is provided by the Texas legislature “to encourage prison discipline” by rewarding the good conduct of the inmates in the Texas Department of Corrections (TDC). Title 108 Vernon’s Annotated Civil Statutes, Article 61'84i. Logically, then, “good time” can only be awarded by the TDC to reward the conduct in Texas institutions. Appellant is not entitled to “good time” credit on his Texas sentence for the period incarcerated in California. Mills v. Beto, 5th Cir. 1973, 477 F.2d 124. The judgment below is affirmed.

Affirmed.

      . It is appropriate to dispose of this pro se case summarily, pursuant to this Court’s local Rule 9(e)(2), appellant having failed to file a brief within the time fixed by Rule 31, Federal Rules of Appellate Procedure. Kimbrough v. Beto, Director, 5th Cir. 1969, 412 F.2d 981.


source: Caselaw Access Project

author: PER CURIAM:

license: Public Domain

text:
    Fred and Dorothy JOINER et al., Plaintiffs-Appellants, v. CITY OF DALLAS, TEXAS, et al., Defendants-Appellees.
    No. 71-1166.
    United States Court of Appeals, Fifth Circuit.
    Jan. 17, 1974.
    Rehearing Denied Feb. 22, 1974.
    Jay M. Vogelson, Charles Morris, Edward S. Koppman, John E. Kennedy, Sam Eck, Dallas Legal Services Project, Dallas, Tex., for plaintiffs-appellants.
    Joseph G. Werner, Asst. City Atty., N. Alex Bickley, City Atty., William G. Webb, Dallas, Tex., for defendants-ap-pellees.
    Frank M. Ryburn, Jr., J. Dan Bohan-nan, Burford, Ryburn & Ford, Dallas, Tex., amicus curiae.
    ON REMAND FROM THE UNITED STATES SUPREME COURT
    Before COLEMAN, SIMPSON and RONEY, Circuit Judges.
   PER CURIAM:

We consider this case on remand from the United States Supreme Court to determine whether the remaining issues can now be effectively decided in this Court, or whether the parties should return to the District Court for further litigation. Upon the helpful additional briefing and oral argument after remand and after a full consideration of the issues involved, we reverse in part the decision of the District Court, vacate in part, and remand the case for further proceedings consistent with the action of the Supreme Court and this opinion.

The case involves city eminent domain proceedings condemning land owned by the petitioners adjacent to Fair Park in Dallas, Texas. Joiner filed suit alleging constitutional deprivations and seeking injunctive relief from the federal District Court against pending state court proceedings. Special Commissioners had been appointed, hearings had been held, and awards, to which the petitioners objected, had been filed with the Dallas County Court at the time the suit was filed.

The District Court dismissed Joiner’s claim for lack of jurisdiction.

Jurisdiction is . alleged under 42 U.S.C. § 1983 and 28 U.S.C. § 1343. Plaintiffs seek to enjoin state condemnation proceedings in order to protect their property rights. Such property rights are not protected by 28 U.S.C. § 1343. ... An injunction against pending state court proceedings would be barred by the federal anti-injunction statute 28 U. S.C. § 2283. Plaintiffs would contend that 42 U.S.C. § 1983 is an express exception to § 2283; however, this exception has developed in the context of overbreadth and free expression, circumstances not present in this action.

Joiner v. City of Dallas, 329 F.Supp. 943, 944 (N.D.Tex.1971).

This Court affirmed in a per curiam based on the District Court opinion, 447 F.2d 1403, thus upholding two of the grounds for the District Court’s decision: (1) that real property rights were not protected by 42 U.S.C.A. § 1983 and (2) that § 1983 was not an express exception to the anti-injunction statute, 28 U.S.C.A. § 2283.

After granting the petition for certiorari, the Supreme Court, without opinion, vacated our decision and remanded the case to this Court for consideration in light of Mitchum v. Foster, 407 U.S. 225, 92 S.Ct. 2151, 32 L.Ed.2d 705 (1972); Lynch v. Household Finance Corp., 405 U.S. 538, 92 S.Ct. 1113, 31 L. Ed.2d 424 (1972); and Younger v. Harris, 401 U.S. 37, 91 S.Ct. 746, 27 L.Ed.2d 669 (1971). Joiner v. City of Dallas, 412 U.S. 902, 93 S.Ct. 2286, 36 L.Ed.2d 967 (1973). An examination of these cases, decided after our prior decision in this case, reveals why Joiner was remanded to us for further consideration.

First, the issue in Mitchum v. Foster was whether, in light of the anti-injunction statute, 28 U.S.C.A. § 2283, the District Court had jurisdiction to enjoin state court proceedings to close a bookstore selling obscene literature as a “public nuisance” under Florida law. The Court held that 42 U.S.C.A. § 1983 was an express exception to the anti-injunction statute thus giving the District Court jurisdiction. Our holding in Joiner is in direct conflict with this now controlling decision.

Second, Lynch v. Household Finance Corp. held that § 1983 protects property rights as well as personal liberties. The issue in Lynch was whether, in light of the anti-injunction statute, the District Court had jurisdiction to enjoin a summary pre-judicial garnishment proceeding permitted under Connecticut law, but challenged under the due process clause as it applies to the states through the Fourteenth Amendment. The Court held that 42 U.S.C.A. § 1983 and 28 U. S.C.A. § 1343 provided an exception to the anti-injunction statute to protect property rights as well as personal liberties. Again the Joiner decision was in direct conflict with this holding.

Third, the issue in Younger v. Harris was whether the District Court should enjoin a state prosecution of the defendant for violation of California obscenity laws which were alleged to be unconstitutional. The Court, in reversing the District Court’s injunctive order, held that the principles of equity, comity, and federalism precluded federal courts from enjoining or staying pending state court proceedings except under special circumstances. Those circumstances required the plaintiff to demonstrate that he would suffer irreparable injury if the injunction is not issued and that he has no adequate remedy at law. Reconsidering the case in the light of these cases, as mandated by the Supreme Court, we must reverse the District Court and hold that it had jurisdiction to hear this case on the authority of Mitehum and Lynch. Having jurisdiction, the Court must consider the merits of the claim for injunction under the principles set forth in Younger.

Although the District Court asserted other grounds for its decision, we find them so inextricably interwoven with the above concepts that they should now be fully reconsidered by the trial court. The record in this case consists only of a bare complaint and Motions to Dismiss made without supporting affidavits or other evidence. We vacate so much of the District Court’s order as has not been reversed for development of a full record and reconsideration of the issues in the light of such recent decisions of the Supreme Court and this Court as may relate thereto.

We have fully considered the arguments of the appellees and the amicus briefs that we should sustain the District Court’s dismissal under the principles of Younger v. Harris. This requires balancing the Joiner claim with the firmly established principles of equity, comity, and federalism reiterated in Mitchum. It requires a weighing of the Joiner claim that state remedies are inadequate to protect them against irreparable injury in the light of Younger. This we cannot do on the record before us. It is fittingly an exercise for the trial court in the first instance. On remand the trial court is free to follow such course as it may determine to be correct, it not being our intention to view one way or the other issues previously determined but which must now be redetermined. The appellants shall recover their costs of this appeal. Reversed in part, vacated in part, and remanded.


text:
    Major Ronald L. MALONY, Plaintiff-Appellant, v. Honorable James SCHLESINGER Honorable Howard H. Callaway, and General Creighton Abrams, Defendants-Appellees.
    No. 73-3286
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Jan. 14, 1974.
    Vincent P. McCauley, Columbus, Ga., for plaintiff-appellant.
    William J. Schloth, U. S. Atty., Charles T. Erion, Asst. U. S. Atty., Royce C. Lamberth, Captain, JAGC, U. S. Army, C/O U. S. Atty., Macon, Ga., for defendants-appellees.
    Before BROWN, Chief Judge, and DYER and SIMPSON, 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.

   PER CURIAM:

After being advised that he was to be released from active duty as a commissioned officer in the U. S. Army, Appellant Malony sought a Court declaration regarding his right to retain his status as a commissioned officer or in the alternative to be accepted for reenlistment. At a hearing held by the District Court on May 7, 1973 the appellee, through a member of the Adjutant General’s Office, informed the Court that the Department of the Army offered to enlist Ma-lony under the provisions of 1Ó U.S.C.A. § 3258. Since appellant’s alternative relief had been granted, the Court dismissed the suit as moot. We affirm.

The Department of the Army’s action in granting the appellant the relief which he requested in his complaint, removed the case and controversy thereby rendering the law suit moot. The District Court followed the correct procedure in dismissing a case by reason of mootness. Troy State University v. Dickey, 5 Cir., 1968, 402 F.2d 515, 516-517; Lebus, Regional Director v. Seafarers’ Int’l Union, 5 Cir., 1968, 398 F.2d 281, 283.

Affirmed.


text:
    Eugene F. WELLS, Petitioner-Appellant, v. Louie L. WAINWRIGHT, Director, Florida Division of Corrections, Respondent-Appellee. Carl Everett ARNOLD, Petitioner-Appellant, v. Louie L. WAINWRIGHT, Director, Florida Division of Corrections, Respondent-Appellee. Walter L. ARBOGAST, Petitioner-Appellant, v. Louie L. WAINWRIGHT, Director, Florida Division of Corrections, Respondent-Appellee.
    Nos. 72-3154, 72-3155 and 73-1050.
    United States Court of Appeals, Fifth Circuit.
    Dec. 4, 1973.
    Bruce S. Rogow, A. C. L. U. Foundation of Florida, Louis M. Jepeway, Jr., Miami, Fla., for petitioners-appellants.
    Bennett H. Brummer, Asst. Public Defender, Miami, Fla., amicus curiae on behalf of petitioners-appellants.
    Robert L. Shevin, Atty. Gen., Tallahassee, Fla., William L. Rogers, Asst. Atty. Gen., Miami, Fla., for respondent-appellee.
    Before WISDOM, GEWIN and CLARK, Circuit Judges.
   PER CURIAM:

These appeals, which we have consolidated, request this court to rule on the validity of the waiver-by-failure-to-object principle applied in State v. Silva, 259 So.2d 153 (Fla. 1972). Silva condemned as unconstitutional the jury selection practice, followed in Dade County, Florida between 1966 and 1972, of intentionally including Negros and women on each array to pre-ascertained proportions. We decline to reach the merits of the question presented on the basis of the present record and vacate and remand for a hearing to determine more precisely the factual status of each petitioner.

The federal habeas corpus court declined to hold a hearing. Relying on Shotwell Mfg. Co. v. United States, 371 U.S. 341, 83 S.Ct. 448, 9 L.Ed.2d 357 (1963), and this circuit’s decisions in Davis v. United States, 455 F.2d 919 (1972), aff’d, 411 U.S. 233, 93 S.Ct. 1577, 36 L.Ed.2d 216 (1973), and its federal procedural predecessors, the court ruled that petitioners had waived all right to object to Dade County’s proportional limitation practice by going to trial without objecting. Fla.R.Cr.P. 3.-300, 33 F.S.A. See also Buchanan v. State, 97 Fla. 1059, 122 So. 704 (1929). Thus, we are presented with a record in Arbogast’s case containing untried pleadings which aver that neither petitioner nor his counsel knew of the unconstitutional method of jury selection which was followed in his case and that such procedures were neither open nor notorious. The pro se pleadings of both Wells and Arnold, though less elaborate, assert that they did not know of any impropriety in jury selection procedures until after their trials had been completed. Reliance upon Shotwell Mfg. Co. and Davis implies a determination of either actual or constructive knowledge. The court below would be in error if it assumed that any of these fact allegations were untrue without holding a hearing. Reagor v. United States, 488 F.2d 515 (5th Cir. 1973).

The cases are remanded to the district court with directions to hold such a hearing or hearings as may be necessary to make separate findings of fact which would supply the answers to the following questions in the light of current precedents:

Was the jury selection procedure followed in his ease actually known to petitioner or his counsel prior to the time his trial was commenced ?

Could the petitioner or his attorney have ascertained all of the facts concerning the Dade County jury selection procedure which would have been necessary to formulate and present any meaningful objection they cared to make within the time required by Florida law ?

Could these necessary facts relating to this procedure have been discovered before trial by the exercise of reasonable diligence ?

Did petitioner or his counsel give tactical consideration to determining whether to timely raise such an objection or to hold it in reserve?

Did the ease have any overtones involving race'or sex?

What prejudice did the jury selection procedures followed in this case cause to petitioner ?

What effect did the jury procedures which were used have on the integrity of the fact finding procedures in petitioner’s case?

Would the making of a timely objection to the racial or sexual composition of the jury have so prejudiced the community that the likely result of such a challenge would have been that any jury subsequently impanelled would be prejudiced against the defendant ?

See Davis v. United States, 411 U.S. 233, 93 S.Ct. 1577, 36 L.Ed.2d 216 (1973); Tollett v. Henderson, 411 U.S. 258, 93 S.Ct. 1602, 36 L.Ed.2d 235 (1973); Winters v. Cook, 489 F.2d 174 (on rehearing en banc, 5th Cir. 1973).

Vacated and remanded.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. James William DAULTON, Defendant-Appellant.
    No. 73-2847
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Dec. 3, 1973.
    Sidney S. Jones, (Court appointed) Thomas L. Carter, Atlanta, Ga., for defendant-appellant.
    John W. Stokes, Jr., U. S. Atty., J. Robert Cooper, Asst. U. S. Atty., Atlanta, Ga., for plaintiff-appellee.
    Before GEWIN, COLEMAN and MORGAN, 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.

   PER CURIAM:

James William Daulton was convicted of an assault with intent to commit murder upon one of his cell mates in the United States Penitentiary at Atlanta, 18 U.S.C. § 113(a).

The proof for the government showed that the means and force used by the defendant were three bars of soap wrapped in a towel which made a highly effective club. Moreover, he attempted to strangle his intended victim with another towel.

Daulton now contends on appeal that this weaponry was not “deadly” and that he thus could not have been guilty of the offense charged. For a refutation of this contention see United States v. Johnson, 4 Cir., 1963, 324 F.2d 264, 266. The principal statement of the opinion in the Johnson case is well worthy of quotation:

The main legal contention is that a chair is not a dangerous weapon. While it may not be a dangerous weapon per se, 4 Am.Jur. Assault and Battery § 34, p. 145, almost any object “which as used or attempted to be used may endanger life or inflict great bodily harm.” United States v. Anderson, 190 F.Supp. 589, 591 (D. Md.1960), or which, as it is sometimes expressed, “is likely to produce death or great bodily harm,” Tatum v. United States, 71 App.D.C. 393, 110 F.2d 555, 556 (1940), can in certain circumstances be a dangerous weapon. Illustrating this principle, courts have held that a wine bottle can be a dangerous weapon, Thornton v. United States, 106 U.S.App.D.C. 7, 268 F.2d 583 (1959); shoes can be dangerous weapons, Medlin v. United States, 93 U.S.App.D.C. 64, 207 F.2d 33 (1953); a rake can be a dangerous weapon, Eagleston v. United States, 172 F.2d 194 [12 Alaska 213] (9th Cir. 1949); a thrown club can be a dangerous weapon, United States v. Anderson, 190 F.Supp. 589 (D.Md.1961); a brick can be a dangerous weapon, State v. Perry, 226 N.C. 530, 39 S.E. 2d 460 (1946); and a chair leg can be a dangerous weapon, Wisniewski v. State, 51 Del. 84, 138 A.2d 333 (1957). Not the object’s latent capability alone, but that, coupled with the manner of its use, is determinative.

It is also argued that a confession admitted at the trial was obtained in violation of Daulton’s Miranda rights. He was given full warning of his Miranda rights in the first interview with government agents on December 26, 1972 and chose at that time not to say anything. Thirteen days later, the appellant sent for the agents to come to see him so he could tell his side of the story. On this second occasion the agents read him a form, advising him of his rights, but it failed to include a statement of his right to appointed counsel if he could not afford an attorney. This second warning was given by the same interviewing officer who had first given the Miranda warnings in a full and complete form. There was further evidence that prior to this confession the appellant had a conversation with the prison warden in which he stated his awareness of his entitlement to an attorney. In this situation, having been given the full warning on an occasion when he declined to talk, and being aware of his entitlement to counsel, we attribute no reversible significance to the inadvertent omission of a portion of the warning on the second occasion. See United States v. Springer, 7 Cir., 1972, 460 F.2d 1344; United States v. Hopkins, 5 Cir., 1970, 433 F.2d 1041; Maguire v. United States, 9 Cir., 1968, 396 F.2d 327. The fact that Daulton requested the second interview and was warned by identically the same man who had previously warned him, negates any idea of involuntariness generated by failure to mention a fact already known to the prisoner.

It is additionally assigned that certain photographs were erroneously admitted at the trial and that the prosecutor was guilty of impropriety in his closing argument. There was no objection below and these trial events fall far below the status of plain error. The same may be said of jury instructions which the appellant now claims should have been given but about which there was no objection below, Rule 30, F.R. Cr.P.

The Judgment of conviction is clearly entitled to be affirmed.

Affirmed.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. David M. SARVIS, Defendant-Appellant.
    No. 73-1719.
    United States Court of Appeals, Ninth Circuit.
    Nov. 7, 1973.
    Jesse R. Walters, Jr. (argued), C. L. Green (argued), James W. Derr, Boise, Idaho, for defendant-appellant.
    Charles E. Brookhart (argued), Scott P. Crampton, Asst. Atty. Gen., Tax Div., Dept, of Justice, Washington, D. C., Sidney E. Smith, U. S. Atty., Thomas C. Frost, Asst. U. S. Atty., Boise, Idaho, Meyer T. Rothwacks, John P. Burke, Laurence J. Whalen, Tax Div., Dept, of Justice, Washington, D. C., for plaintiff-appellee.
    Before CHAMBERS, CHOY and WALLACE, Circuit Judges.
   PER CURIAM:

Sarvis was convicted by a jury of at-temped tax evasion and making and subscribing to a false return. In shotgun fashion, he asserts 42 alleged errors. In many instances, he fails to spell out his argument and provide us with suitable authority. We affirm.

One question deserves comment. In United States v. Walker, 479 F.2d 407 (9th Cir. 1973), we reversed a tax case due to the admission of evidence pertaining to the increased net worth of the taxpayer. In criminal prosecutions evidence of net worth must be used with “great care and restraint.” Holland v. United States, 348 U.S. 121, 129, 75 S. Ct. 127, 99 L.Ed. 150 (1954). Appreciation, gifts, and other nontaxable or unrealized income may significantly increase the value of a person's property to make increases in net worth an inaccurate reflection of taxable income. These dangers make it imperative that the court closely scrutinize the use of net worth evidence. Id. at 125, 75 S.Ct. 127. Thus, in Walker, a failure to file case, we held that evidence of increases in net worth was improperly admitted where the government had already established that the defendant had a duty to file. Once the government had established this duty, the evidence had no relevancy and could only have resulted in prejudicing the defendant in the eyes of the jury.

In the present ease, however, Sarvis had filed a return and the questions were whether he had willfully attempted to evade and willfully filed a false return. The district court admitted evidence of his net worth as relevant to the issue of willfulness. Willfulness must be established by independent evidence and may not be inferred from a mere understatement. Id. at 139, 75 S. Ct. 127. Nevertheless, where the taxpayer has no records or records that are inadequate to show his actual tax liability, a consistent pattern of understatement as shown by proof of increases in net worth may give rise to an inference of willfulness. Id.; see Feichtmeir v. United States, 389 F.2d 498 (9th Cir. 1968).' The district court correctly admitted the evidence on this issue and there was no error.

Affirmed.


author: COLEMAN, Circuit Judge:

text:
    Joseph Di GIORGIO et al., Plaintiffs-Appellees, v. Leon N. CAUSEY, Sr., Judge, Circuit Court, Greene County, Mississippi, et al., etc., Defendants-Appellants.
    No. 73-1814.
    United States Court of Appeals, Fifth Circuit.
    Dec. 13, 1973.
    Heber Ladner, Jr., Sp. Asst. Atty. Gen., of Miss., Jackson, Miss., for Maples and Rayburn Hillman.
    Horton Hillman, Leakesville, Miss., for Causey and Horton Hillman.
    Dixon L. Pyles, Carolyn Gentele, Jackson, Miss., David Jaffe, Howard Schul-man, New York City, for plaintiff s-ap-pellees.
    Before BELL, COLEMAN and RO-NEY, Circuit Judges.
   COLEMAN, Circuit Judge:

In the total context, this appeal comes to us in a very odd posture.

It is not an appeal from a final judgment, 28 U.S.C., § 1291, but, rather is from an order of the United States District Court granting a preliminary injunction, 28 U.S.C., § 1292(a)(1).

So far as the record reveals, no final judgment has ever been entered. Yet the parties have briefed and argued the appeal as if it were from a final judgment on the merits.

Shorn of things had and done and about which there is no appeal, this was a suit in the United States District Court to set aside a default civil judgment previously entered in a Mississippi State Circuit Court. It was asserted that the state court judgment was void because (1) the defendant against whom it was entered was not a juridical entity, (2) the attempted service of process was constitutionally repugnant, and (3) the attempted process, under the Mississippi Long Arm Statute, was wholly unauthorized by that statute.

The District Court held a hearing, heard witnesses, and rendered an extensive opinion which set forth the disposition which ought to be made of every contention appearing in the case. Even so, this resulted not in a permanent injunction, or a final judgment in any form. To the contrary, an order was entered, granting a preliminary injunction, phrased as follows:

“Pending further orders of this Court that a preliminary injunction be and the same is hereby issued as follows:”
(a) The County Circuit Clerk shall forthwith expunge the judgment in question from the judgment rolls of the state circuit court;
(b) The judgment creditor and his attorney shall not seek to enforce said judgment in any court;
(c) The plaintiffs shall give the bond required by Rule 65(c) of F.R.Civ.P.;
(d) The motions of the Circuit Clerk, the state judgment creditor, and his attorney to dismiss the complaint are denied.
Seven days later, notice of appeal was filed from the “Order Granting a Preliminary Injunction against the defendants”.

We note at the outset that the District Court by preliminary injunction ■ should not have ordered the expungement of a final state court judgment. An expungement is a final, if not irretrievable, act. It should come only as a matter of granting permanent injunctive relief. The same effect could have been accomplished by preliminarily enjoining the issuance of any writ of execution thereon or any certified copy thereof. The beneficiaries of the judgment had been enjoined from seeking to enforce it. We assume that the expungement was ordered by inadvertence.

The next thing we need to point out is that an appeal from the issuance or denial of a preliminary injunction is ordinarily no way to obtain appellate disposition of a case on its merits. This Court is, with more and more frequency, encountering appeals from such actions. We note that while such appeals are pending the general tendency is to allow the case on the merits to lie dormant. Then, after the lapse of considerable time, it is found that two appeals are required for the disposition of the case. This causes frustration attributed to judicial delays, when the fault lies not with the judiciary, beleagured though it is by an unprecedented torrent of cases.

This, however, is not a major consideration.

The one fact which litigants and their counsel should not overlook is that on an appeal from a preliminary injunction this Court does not concern itself with the merits of the controversy, J. M. Fields of Anderson, Inc. v. Kroger Company, 5 Cir., 1962, 310 F.2d 562; Tatum v. Blackstock, 5 Cir., 1963, 319 F.2d 397. The only question for the reviewing court in such a case is whether the District Court has clearly fallen into a legal abuse of discretion, United States v. Edwards, 5 Cir., 1964, 333 F.2d 567. No attention is paid to the merits of the controversy beyond that necessary to determine the presence or absence of an abuse of discretion, City of Des Moines, Iowa v. Continental Ill. National Bank and Trust Company, 8 Cir., 1953, 205 F. 2d 729. See, also, Brewer v. Huger, 5 Cir., 1966, 358 F.2d 739; Oxford Industries, Inc. v. Nye Systems, Inc., 5 Cir., 1970, 427 F.2d 1175; Quarles v. Oxford Municipal Separate School District, 5 Cir., 1971, 439 F.2d 261.

The instant appeal deals with a preliminary injunction which was granted. In a recent case, however, in which an injunction was denied, this Court clearly marked out some plain guidelines, Blackshear Residents Organization v. Romney, 5 Cir., 1973, 472 F.2d 1197. It was there stated:

“[1,2] On review of the denial of preliminary injunctive relief our role is limited to determining whether the district court abused its discretion. See Eli Lilly & Co. v. Generix Drug Sales, Inc., 5 Cir. 1972, 460 F.2d 1096, 1099; Croskey Street Concerned Citizens v. Romney, 3 Cir. 1972, 459 F.2d 109, 110; DeBremaecker v. Short, 5 Cir. 1970, 433 F.2d 733, 735; Bayless v. Martine, 5 Cir. 1970, 430 F.2d 873, 877. The factors to be considered in determining whether preliminary injunctive relief is appropriate are: (1) whether the plaintiff is likely to prevail on the merits; (2) whether the plaintiff is in danger of suffering irreparable harm; (3) whether the potential harm to the defendant from issuance of the injunction outweighs the possible harm to the plaintiff if injunctive relief is denied; (4) whether issuance of a preliminary injunction will serve the public interest. See North Avondale Neighborhood Ass’n v. Cincinnati Metropolitan Housing Authority, 6 Cir. 1972, 464 F.2d 486; Croskey Street Concerned Citizens v. Romney, supra, 459 F.2d at 111-112 (Aldisert, J., concurring); Bayless v. Martine, supra, 430 F.2d at 877; Perry v. Perry, 1951, 88 U.S.App.D.C. 337, 190 F.2d 601, 602; 7 J. Moore, Moore’s Federal Practice If 65.04 [1]-[2] (2d ed. 1972).”

Except for ordering an expungement of the state court judgment, the preliminary injunction which generated this appeal was not an abuse of discretion.

The preliminary injunction expunging the state court judgment is reversed.

In all other respects the judgment of the District Court is affirmed.


text:
    Louis J. MURRY et al., Plaintiffs-Appellees, v. AMERICAN STANDARD, INC., et al., Defendants-Appellants. AMERICAN STANDARD, INC., et al., Petitioners, v. Honorable Frederick J. R. HEEBE, Chief Judge, United States District Court for the Eastern District of Louisiana, New Orleans Division, Respondent.
    No. 73-1756
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Dec. 14, 1973.

      Andrew P. Carter, David E. Walker, H. Sloan MeCloskey, Jerry Gardner, Jr., New Orleans, La., for defendants-appellants.
    Richard B. Sobol, David J. Dennis, New Orleans, La., George Cooper, New York City, Frederick J. R. Heebe, New Orleans, La., for plaintiffs-appel-lees.
    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:

This is an appeal from an order of the District Court granting a preliminary injunction requiring appellant American Standard, Inc., to reinstate as an employee Cornell Hood, one of the plain-iffs in this Title VII class action.

Appellant’s primary argument is that absent imminent irreparable injury, which it views as necessary to exercise of a trial court’s inherent equitable authority to issue preliminary injunctions; a private individual may not obtain a preliminary injunction in an action premised on Title VII. In its view such an injunction may issue only in an action brought by the Attorney-General. This proposition finds no support in our cases.

Title VII explicitly provides:

If the court finds that the respondent has intentionally engaged in or is intentionally engaging in an unlawful employment practice charged in the complaint, the court may enjoin the respondent from engaging in such unlawful employment practice, and order such affirmative action as may be appropriate, which may include reinstatement or hiring of employees, with or without back pay ....

42 U.S.C.A. § 2000e-5(g). In Culpepper v. Reynolds Metals Company, 421 F.2d 888 (CA5 1970), a case which like this one involved the issuance of a temporary injunction requested by a private individual in a Title VII suit, this court interpreted the statutory language set forth above:

The language in § 2000e-5(g) “if the court finds” does not mean only that if the court finds upon a full hearing on the merits. It can also mean if the court finds upon a hearing on the issue of a temporary injunction, the court may temporarily enjoin the employer and grant temporary affirmative relief.

421 F.2d at 894. Culpepper clearly indicates that a private individual may rightly claim a statutory basis for obtaining a preliminary injunction in a Title VII suit.

Appellant seeks to limit Culpepper to issuance of an injunction based upon inherent equitable power of the court to issue a temporary injunction to prevent imminent irreparable injury. The court discussed that inherent power in the course of the Culpepper opinion, but the burden of that discussion was to demonstrate that even under the rejected restrictive reading of the statute employed by the District Court in that case issuance of a temporary injunction would have been authorized. The presence of this discussion does not alter the interpretation of § 2000e-5(g) expressly adopted by the court. The statutory, as opposed to equitable, basis for the decision in Culpepper is further evidenced by the court’s summary of United States v. Hayes International Corp. et al., 415 F.2d 1038 (CA5 1969), as holding that

[Wjhere the statutory rights of employees are involved and an injunction is authorized by statute, the usual prerequisite of irreparable injury need not be established before obtaining an injunction because irreparable injury should be presumed from the very fact that the statute has been violated.

421 F.2d at 894-895.

In short, Culpepper determined that Title VII authorizes granting a preliminary injunction requested by a private person. Hayes International and Culpepper determined that where such statutory authorization exists irreparable injury need not be shown. The District Court had adequate authority under the statute to issue the injunction attacked here. Additionally, the unavailability to individual plaintiffs of preliminary relief while the action proceeds would limit the utility of private class actions as a means of enforcing the statute. Cf., Oatis v. Crown Zellerbach Corp., 398 F.2d 496 (CA5 1968).

Appellant’s contention that it was unfairly surprised by evidence presented in the hearing on the preliminary injunction must be rejected. Appellant did not respond to the trial court’s offer of additional time if needed to avoid surprise.

Affirmed.

      . There appears to be an error in the reported opinion in Culpepper which might generate confusion. At 421 F.2d 894, column two, new paragraph one, are references to § 2000e-5(b) and § 2000e-5(a). From reading the code and from the immediately preceding paragraph of the opinion itself, we infer that these references should be to § 2000e-5(h) and § 2000e-5(g) respectively.

      . Appellant notes that Hayes International was an action brought by the Attorney-General and infers that the non-requirement of irreparable injury is limited to such suits. In view of the statutory basis for Culpepper, this argument must be rejected.


text:
    James Daniel VICARS, #87420, Petitioner-Appellant, v. UNITED STATES of America, Respondent-Appellee.
    No. 73-2739
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Dec. 10, 1973.

      James Daniel Vicars, pro se.
    Frank D. MeCown, U. S. Atty., Fort Worth, Tex., William F. Sanderson, Jr., Asst. U. S. Atty., Dallas, Tex., for respondent-appellee.
    Before BELL, GODBOLD and GEE, Circuit Judges.

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

   PER CURIAM:

The District Court did not err in denying appellant’s § 2255 petition without an evidentiary hearing.

Some of the asserted grounds do not rise to constitutional dimension: illegal search and interrogation and manhandling during search, not alleged to have resulted in the seizure of evidence or the giving of any inculpatory statement; perjury by a paid informer’s denial that he was paid; sale of drugs by an informer to a codefendant.

Alleged prejudice from the bizarre behavior of a codefendant during trial was decided adversely to appellant on direct appeal, United States v. Vicars, 467 F.2d 452 (CA5, 1972).

The allegation of appellant that he was taking (undescribed) drugs during the trial which rendered him incompetent to assist his counsel in his defense was merely general and conclusory, see United States v. Rice, 420 F.2d 863 (CA5), cert. den., 398 U.S. 910, 90 S.Ct. 1705, 26 L.Ed.2d 70 (1970), and the judge below was the judge who had conducted the merits trial and during the lengthy trial (at which appellant was represented by retained counsel) no mention had been made of incapacity to assist in defense, and, over an extended period, the trial judge had observed appellant’s demeanor and appearance, see Smith v. United States, 431 F.2d 565 (CA5, 1970). It was not error to deny an evidentiary hearing on this contention. In United States v. Collier, 399 F. 2d 705 (CA7, 1968), relied upon by appellant, the trial judge had notice at trial that there was a question of the defendant’s competency, raised by the introduction of documents that tended to show that at an earlier time he suffered a mental disorder or disability.

Several other grounds are presented in brief that were not raised with the court below, and we will not consider them.

Affirmed.


text:
    James Arthur BEECHUM, Petitioner-Appellant, v. W. J. ESTELLE, Director, Texas Department of Corrections, Respondent-Appellee.
    No. 73-2173
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Jan. 14, 1974.
    James Arthur Beechum, pro se.
    Robert C. Flowers, Ed Idar, Jr., Asst. Attys. Gen., Austin, Tex., for respondent-appellee.
    Before GEWIN, COLEMAN and MORGAN, Circuit Judges.

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

   PER CURIAM:

This appeal comes to us from an order of the district court denying the petition of a Texas state prisoner for the writ of habeas corpus. This court holds that appellant has failed to exhaust his available state remedies on all his federal ha-beas grounds. For that reason the dismissal of the lower court is

Affirmed.

      . Garrett v. State of Texas (5 Cir. 1970), 435 F.2d 709; Harrison v. Wainwright (5 Cir. 1970), 424 F.2d 633; Wheeler v. Beto (5 Cir. 1969) 407 F.2d 816.


text:
    GENERAL COMMUNICATIONS SERVICE, INC., Petitioner, v. NATIONAL LABOR RELATIONS BOARD, Respondent.
    No. 73-1434.
    United States Court of Appeals, Ninth Circuit.
    Dec. 27, 1973.
    Max C. Richards (argued), Bilby, Thompson, Shoenhair & Warnoek, Tucson, Ariz., for petitioner.
    Elliott Moore, Asst. Gen. Counsel, W. L. Corbett (argued), National Labor Relations Board, Washington, D. C., Peter G. Nash, Gen. Counsel, and John S. Irving, Deputy Gen. Counsel, Patrick Hardin, Assoc. Gen. Counsel, of NLRB, Washington, D. C., James W. Mast, NLRB, Albuquerque, N. M., for respondent.
    Bruce Thoren, Arizona Director of Communications Workers of America, Phoenix, Ariz., for charging party.
    Before ELY and' SNEED, Circuit Judges, and SOLOMON, District Judge.

       Hon. Gus J. Solomon, Senior United States District Judge, Portland, Oregon, sitting by designation.

   OPINION

PER CURIAM:

The Board’s Decision and Order is reported at 201 N.L.R.B. No. 135.

Our review of the record convinces us that the reasoning of the Board’s Decision was correct. Accordingly, and upon the basis of the Board’s reasoning, the Petition to Review is denied, the respondent Board’s Cross-Application is granted, and the Board’s Order will be

Enfoi’ced.


author: By the Court:

text:
    Roy Alton LANE, Petitioner-Appellant, v. ATTORNEY GENERAL OF the UNITED STATES, Respondent-Appellee.
    No. 72-1747.
    United States Court of Appeals, Fifth Circuit.
    Dec. 13, 1973.
    William Clineburg, Jr., Atlanta, Ga. (Court-appointed), for petitioner-appellant.
    John W. Stokes, Jr., U. S. Atty., P. Bruce Kirwan, William P. Gaffney, Asst. U. S. Attys., Atlanta, Ga., for respondent-appellee.
    Before BROWN, Chief Judge, and WISDOM, GEWIN, BELL, THORN-BERRY, COLEMAN, GOLDBERG, AINSWORTH, GODBOLD, DYER, SIMPSON, MORGAN, CLARK, RONEY and GEE, Circuit Judges.
   By the Court:

A majority of the Judges in active service, on the Court’s own motion, having determined to have this case [477 F.2d 847] reheard en banc,

It is ordered that this cause shall be reheard by the Court en banc on briefs without oral argument. The Clerk will specify a briefing schedule for the filing of supplemental briefs.


text:
    LOCAL 464, SHEET METAL WORKERS’ INTERNATIONAL ASSOCIATION, AFL-CIO, Petitioner, v. NATIONAL LABOR RELATIONS BOARD, Respondent.
    No. 73-1653.
    United States Court of Appeals, Sixth Circuit.
    Argued Dec. 11, 1973.
    Decided Dec. 27, 1973.
    R. Jeffrey Bixler, Toledo, Ohio, on brief, for petitioner.
    Anthony J. Leggio, James W. Wim-berly, Jr., Mitchell, Clarke, Pate & Anderson, Atlanta, Ga., on brief, for inter-venor, Tennessee Plastics, Inc.
    Peter G. Nash, Gen. Counsel, John S. Irving, Deputy Gen. Counsel, Patrick Hardin, Associate Gen. Counsel, Elliott Moore, Deputy Associate Gen. Counsel, Alan D. Cirker, William M. Bernstein, Attys., National Labor Relations Board, Washington, D. C., on brief, for respondent.
    Before CELEBREZZE, PECK and McCREE, Circuit Judges.
   ORDER

This case is before the Court upon the petition of Local 464, Sheet Metal Workers’ International Association, AFL-CIO, filed pursuant to Section 10(f) of the National Labor Relations Act as amended (29 U.S.C., Sec. 151 et seq.), to review a decision and order of the National Labor Relations Board dismissing in its entirety a complaint issued against Tennessee Plasties, Inc. The Board’s decision and order was issued on April 19, 1973, and is reported at 203 NLRB No. 2.

Upon due consideration of the record, briefs and arguments of counsel, it appears to the Court that the findings and Order of the Board are supported by substantial evidence on the record as a whole.

It is therefore Ordered that the petition to review be and is hereby denied.


text:
    NATIONAL LABOR RELATIONS BOARD, Petitioner, v. COCA-COLA BOTTLING COMPANY NO. 5, INC., and Carson, Inc., Respondents.
    No. 73-1372.
    United States Court of Appeals, Sixth Circuit.
    Argued Dec. 5, 1973.
    Decided Dec. 26, 1973.
    Peter G. Nash, Gen. Counsel, John S. Irving, Deputy Gen. Counsel, Patrick Hardin, Associate Gen. Counsel, Elliott Moore, Acting Asst. Gen. Counsel, John D. Burgoyne,' Jane P. Schlaifer, Attys., National Labor Relations Board, Washington, D. C., on brief, for petitioner.
    Arthur R. Donovan, Harry P. Dees, Joseph A. Yocum, Thomas O. Magan, Evansville, Ind., on brief, for respondents ; Kahn, Dees, Donovan & Kahn, Evansville, Ind., of counsel.
    Before EDWARDS and PECK, Circuit Judges, and McALLISTER, Senior Circuit Judge.
   On review of the National Labor Relations Board’s application for enforcement of its order, reported at 200 N.L. R.B. # 69; and

Noting the finding of the Board that the company has violated Section 8(a)(5) and (1) of the National Labor Relations Act, as amended (61 Stat. 136, 73 Stat. 519, 29 U.S.C., See. 151 et seq.) by refusing to bargain with the union which had been duly certified by the Board as the collective bargaining representative of the company’s employees and the unit found appropriate; and

Contrary to respondent’s claims, finding that the alleged misrepresentations of the union were simple and permissible campaign propaganda and that no proofs of union misconduct which could have created an atmosphere of fear prior to the election had been presented,

Enforcement of the order of the National Labor Relations Board is hereby granted.


text:
    Maurice A. RAPOPORT, Petitioner-Appellant, v. E. Wilson PURDY, Respondent-Appellee.
    No. 73-2892
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Dec. 11, 1973.
    Maurice A. Rapoport, pro se.
    Robert L. Shevin, Atty. Gen. of Fla., Tallahassee, Fla., Richard E. Gerstein,
    State’s Atty., Miami, Fla., for respondent-appellee.
    Before BROWN, Chief Judge, and DYER and SIMPSON, Circuit Judges.

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

   PER CURIAM:

The appeal is dismissed as frivolous. See Local Rule 20.


text:
    UNITED STATES IMMIGRATION and Naturalization Service, Respondent-Appellant, v. Marciano Haw HIBI, Petitioner-Appellee.
    No. 72-1562.
    United States Court of Appeals, Ninth Circuit.
    Dec. 21, 1973.
    Before BARNES and TRASK, Circuit Judges, and EAST, District Judge.

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

   We therefor vacate our judgment and remand the case to the United States District Court for the Northern District of California with instructions to deny the petition for naturalization in accordance with the Supreme Court’s ¡opinion.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. Taylor LaJoy MOSLEY, Defendant-Appellant.
    No. 73-2935
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Dec. 28, 1973.
    Victor R. Blaine, Houston, Tex. (Court-appointed), for defendant-appellant.
    Anthony J. P. Farris, U. S. Atty., James R. Gough, Asst. U. S. Atty., Houston, Tex., for plaintiff-appellee.
    Before WISDOM, AINSWORTH and CLARK, Circuit Judges.

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

   PER CURIAM:

The court appointed counsel for the defendant-appellant has filed a brief in this court on October 23, 1973, to which a certificate is appended certifying mail service on defendant, stating that counsel has diligently reviewed the record and is unable, in good faith, to urge any point of error. This court has independently examined the record of this guilty plea proceeding, as required by Anders v. California, 386 U.S. 738, 87 S.Ct. 1396, 18 L.Ed.2d 493 (1967). It appearing that this appeal is frivolous and entirely without merit, the same is

Dismissed. See Local Rule 20.


author: ALMOND, Senior Judge.

text:
    Application of Leslie Frederick WIGGINS et al.
    Patent Appeal No. 8806.
    United States Court of Customs and Patent Appeals.
    Oct. 11, 1973.
    Janes & Chapman, New York City, for appellants. Leland L. Chapman, John R. Janes, New York City, of counsel.
    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.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Patent Office Board of Appeals sustaining the examiner’s rejection of claims 1, 2 and 10 of appellants’ application directed to compounds useful for treating Parkinson’s disease. All these claims were rejected under 35 U. S.C. § 102(b) and claims 1 and 10 were rejected under 35 U.S.C. § 112. We reverse in part and affirm in part.

Invention

Appellants’ invention is most broadly set forth in claim 1 reproduced below:

1. A compound having anti-Par-kinsonism activity selected from the class consisting of compounds of the formula:

and pharmaceutically acceptable salts thereof, in which formula X is selected from the group consisting of oxygen and sulphur, Ri is selected from the group consisting of:

Rx represents lower alkyl and A represents a group selected from the class consisting of unsubstituted and methyl-substituted straight-chain alkylene of two to three chain carbon atoms;

represents a saturated hetero-cyclic group of five to seven ring atoms, from one to two nitrogen atoms, and up to one oxygen atom, and A represents a group selected from the class consisting of unsubstituted and methyl-substituted straight-chain alkylene of two to three chain carbon atoms; and

(C) R5 — (CH2)n—, wherein n is a positive whole number up to 2 and R5 is a saturated heterocyclic group of five to seven ring atoms, up to one oxygen atom and from one to two nitrogen atoms, said hetero-cyclic group containing a member selected from the group consisting'of unsubstituted and lower-alkyl-substituted basic ring nitrogen atoms spaced away from the adjacent carbonyl groups in the barbituric acid ring by from three to five carbon atoms;

and R2 is selected, when X is oxygen, from the group consisting of:

•(D) phenyl, halogenophenyl, hydroxy-phenyl, lower alkylphenyl and lower alkoxyphenyl; and when X is sulphur, from the group consisting of:

(E) phenyl, halogenophenyl, hydroxy-phenyl, lower alkylphenyl, lower alkoxyphenyl, cyclohexyl, benzyl and straight-chain and branched chain alkyls having from three to seven carbon atoms.

Dependent claim 2 is somewhat narrower in scope than claim 1 in its definition of Ri and R2. Claim 10 is directed to the “acid addition salt form” of the compound of claim 1.

When X is oxygen, the compounds embraced by claim 1 are referred to as “ox-obarbituric acids.” Similarly, when X is sulfur, the compounds are referred to as “thiobarbituric acids.” According to appellants’ specification, these compounds are useful for the treatment of Parkinson’s disease (paralysis agitans), a disease of the nervous system sometimes referred to as “shaking palsy.”

The compounds encompassed by the claims can, for the most part, be prepared by a process well known to the prior art involving the condensation of urea or thiourea with a disubstituted malonic ester in the presence of a refluxing solution of sodium in an alcohol (a sodium alcohólate). The disubstitut-ed malonic ester has the formula:

wherein R is a lower alkyl group, preferably ethyl. Appellants term this process a “high temperature condensation.”

Appellants found that certain oxo- and thiobarbituric acids could not be prepared this way because the malonic ester required for the synthesis was unstable and decomposed in the refluxing solvent. The malonic esters susceptible to this decomposition are described by appellants as those having the formula:

group and A represents an unsubstituted or methyl-substituted straight-chain alkylene radical having 2 or 3 chain carbon atoms; or

represents a heterocyclic group containing from five to seven ring atoms and A represents an unsubstituted or methyl-substituted straight-chain alkylene radical having 2 or 3 chain carbon atoms; or

(C) R5 - (CH2) n wherein n is 1 or 2 and R5 represents 2-pyridyl or N-methyl-2-piperidinyl; and

Z represents hydrogen or at least one halogen, lower alkyl or lower alkoxy substituent, provided that when R represents a dimethylaminoalkyl group which is not substituted by methyl in the alpha position of the alkyl group, Z cannot represent hydrogen, but must be at least one halogen, lower alkyl or lower alkoxy substituent.

Appellants discovered that decomposition of the malonic ester could be avoided by carrying out the condensation at or below 30° C. However, at this temperature only the thiobarbituric acids could be obtained since urea, unlike thiourea, would not undergo condensation. Therefore, in order to obtain oxobarbituric acids which could not be prepared by the prior art process, appellants added yet another refinement to their process. First, they prepared the thiobarbituric acid analogue of the desired oxobarbitu-ric acid which was then oxidized by a known process to the corresponding oxo-barbituric acid. Appellants refer to this process as a “low temperature condensation.”

Opinion

Rejection Under § 112

In support of the rejection of claims 1 and 10 under § 112, the examiner, in his “Supplemental Examiner’s Answer On Remand,” made the following observations :

The definitions of “B Ñ —” and “Rs” are indefinite and too broad.

The definitions particularly point out the nature of only one, two, or three, of the five to seven ring atoms. The claims are indefinite as to what other ring atoms can be present. The claims are also indefinite as to what and how many substituents the heterocyclic groups can have, if any. The claims are too broad in that there is no proper support for such rings as pyrazolid-inyl, isoxazolidinyl, oxadiazolidinyl, etc. — i. e. rings wherein the hetero-atoms are not separated by carbon atoms,.

* -X' * *x* * *

Re the rejection as failing to properly define the invention, appellants argue first that “a saturated hetero-cyclic group of . . . from one to two nitrogen atoms, and up to one oxygen atom” means “a saturated het-erocyclic group in which the hetero-atoms are all selected from the group consisting of from one to two nitrogen atoms and up to one oxygen atom”. Concededly, this is a possible construction of the language, but the language is open to other interpretations. * * Support for appellants’ construction may be found in the fact that the specification discloses only heterocyclic groups containing nitrogen or nitrogen and oxygen.

It would appear that the examiner was of the opinion that appellants were claiming an invention that was broader than any described in their specification (a 1st paragraph, § 112 rejection) and were not distinctly claiming that which they regarded as their invention (a 2nd paragraph, § 112 rejection). The board agreed with the examiner’s rejection, commenting, in part, as follows:

Appellants’ arguments do not persuade us of error in the Examiner’s rejection. The terminology employed is so loose as to be indefinite and to be entirely speculative as to the inclusion of groups forming final products having the therapeutic activity herein required. * * *
*- * * * ■» fl-
it must also be noted that the claim terminology is so broad that it does not even require that the heterocyclic group contain a carbon atom. Hetero-cyclic ring systems containing phosphorus, boron, silicon, and other elements in addition to nitrogen and oxygen without the inclusion of carbon atoms are well-known and could not be expected to produce compounds having the properties herein claimed.

In our view, the rejection under § 112 was properly made, at least insofar as it was based on the 2nd paragraph of § 112. That paragraph requires the applicant to “particularly point out and distinctly claim the subject matter sought to be patented.” In re Borkowski, 422 F.2d 904, 909, 57 CCPA 946, 951 (1970). If the scope of the invention sought to be patented is unclear from the language of the claim, a second paragraph rejection will properly lie.

In the instant case, the Patent Office questions whether the term “heterocyclic group” as defined in the claims possesses the requisite definiteness. Both the examiner and- the board felt the term was not precise enough to allow the scope of the claims involved to be accurately determined. ' Appellants seek to overcome their specific criticisms by arguing that:

a- * * the claims clearly define the maximum breadth, namely, heterocy-clic rings containing carbon and nitrogen, or carbon, nitrogen, and oxygen, having from five to seven ring atoms, one or two nitrogen atoms, and up to one oxygen atom. This is a rather limited scope, as heterocyclic rings go. There are many more heterocyclic compounds excluded by the claims than are included by them, such as, for instance, heterocyclic rings containing the two or more oxygen atoms, three or more nitrogen atoms, or one or more sulfur atoms, as well as other types of hetero atoms.

However, we agree with the examiner that appellants’ interpretation of the scope of the claim is but one possible construction and that other, broader constructions are possible that are not unreasonable in light of the words of the! claims. Words in claims are to be given “their broadest reasonable interpretation consistent with the specification where the patent has not yet issued and the applicant has an opportunity to change them.” In re Finsterwalder, 436 F.2d 1028, 1032, 58 CCPA 871, 876 (1971).

Applying this standard to claims 1 and 10, it is our view that the board was correct when it concluded that the “het-erocyclic group” in those claims could be interpreted to include other members than those noted by appellants. Furthermore, the examiner, in his answer, indicated that appellants had support in the specification for a claim of the same scope that appellants would now have us give claims 1 and 10. Therefore, we do not think it would have been difficult to employ language in the claims precisely limiting them to that scope.

In view of our affirmance of the rejection under § 112 on the ground that the claims do not satisfy the requirements of the 2nd paragraph, it is not necessary for us to consider whether a rejection made under the 1st paragraph would have been justified.

Rejection Under Section 102(b)

The rejection of claims 1, 2 and 10 under section 102(b) was based upon an article published by Giudicelli et al. (Giudicelli). This reference reports the syntheses of a number of oxobarbituric acid derivatives (X=oxygen) and studies of their effect as sedatives. None of the compounds actually prepared and studied fall within the scope of the claims involved here. However, Giudicelli mentions by name two compounds that do, phenyl-beta-piperidinoethyl barbituric acid and phenyl-beta-morpholinethyl barbituric acid, whose syntheses were unsuccessfully attempted. The examiner recognized that the failure of Giudicelli to make these compounds was a defect in the reference. Therefore, he cited a second reference, a patent to Donnison, which discloses a process for making oxo- and thiobarbituric acids. This process is similar to appellants’ low temperature process.

The examiner concluded that Donni-son’s process could be used to prepare the compounds named by Giudicelli. The significance of this conclusion can be seen from the legal analysis of that situation, stated by him as follows:

Giudicelli et al. could not prepare these compounds by their | chosen method. However, the test of an “enabling disclosure” is not whether the reference teaches how to make the compounds, but whether the reference taken with the remainder of “the prior art is such as to place the disclosed ‘compound’ in the possession of the public.”

The examiner’s authority for this test was the decision of this court in In re Brown, 329 F.2d 1006, 51 CCPA 1254 (1964). See also In re LeGrice, 301 F. 2d 929, 49 CCPA 1124 (1962); In re Sheppard, 339 F.2d 238, 52 CCPA 859 (1964); In re Hoeksema, 399 F.2d 269, 55 CCPA 1493 (1968); In re Collins, 462 F.2d 538, 59 CCPA 1170 (1972). In his view, Giudicelli is an “enabling disclosure” since Donnison’s process could be used to make the named compounds, thereby putting them in the possession of the public. The board agreed.

The examiner’s rationale necessarily presumes that Giudicelli both describes the invention and would enable one skilled in the art to make the invention, the former by merely naming the compounds and the latter by viewing Donni-son as evidence that one skilled in the art could make the named compounds, thereby .making them available to the public.

Appellants argue that the rejection is improper since Giudicelli by itself does not disclose all that is necessary to put the compounds in the hands of the public. Because the Patent Office had to rely upon Donnison to overcome this defect in Giudicelli, appellants insist that the rejection must be considered as having been made over a combination of references. In their view, a rejection based upon a combination of references is proper only if the statutory basis is 35 U.S.C. § 103. Alternatively, appellants argue that the process taught by Donnison could not be used to make the named compounds.

The solicitor states the issue as to whether § 102(b) can be the proper statutory basis as follows:

Does the rejection of' compound claims for anticipation under 35 U.S.C. 102(b) preclude reliance on additional evidence to show that one of ordinary skill in the art would have known how to prepare the claimed compounds at the time appellants’ alleged invention was made?

The answer to the solicitor’s question, and certainly the one desired by him, must be “No.” Every patent application and reference relies to some extent upon knowledge of persons skilled in the art to complement that disclosed in order that it be “enabling” within the meaning of § 112 and to satisfy the requirements of a reference under § 102. For example, a reference describing an oil refinery need not describe how to make bolts and rivets in order to be considered “enabling.” The hypothetical just stated is an extreme case. In closer cases, where it might be reasonably doubted that a reference or patent application satisfies § 102 or § 112, other references can be cited as evidence of the level of skill in the art.

However, we do not think that the outcome of this case revolves about the answer to the above-stated question. The defect in the issue, as stated by the solicitor, is that it presumes that the naming of the compounds by Giudicelli constitutes a description of the invention within the meaning of § 102(b). We do not accept this presumption. In our view, Giudicelli’s listing of the compounds by name constituted nothing more than speculation about their potential or theoretical existence. The mere naming of a compound in a reference, without more, cannot constitute a description of the compound, particularly when, as in this case, the evidence of record suggests that a method suitable for its preparation was not developed until a date later than that of the reference.

If we were to hold otherwise, lists of thousands of theoretically possible compounds could be generated and published which, assuming it would be within the level of skill in the art to make them, would bar a patent to the actual discoverer of a named compound no matter how beneficial to mankind it might be. In view of the fact that the purpose sought to be effectuated by the patent law is the encouragement of innovation, such a result would be repugnant to the statute. Therefore, we hold that the compounds named in Giudicelli and within the scope of the claims in issue were not “described in a printed publication” as meant by the applicable portion of § 102(b). This dictates a reversal of the rejection of claims 1, 2 and 10 under that section.

Our holding does not mean that a reference merely naming a compound is without effect at all. It may be used as evidence of obviousness under § 103 for all it fairly suggests to one of ordinary skill in the art. In fact, the solicitor suggests in his brief that it wouldn’t matter in this ease whether we view the statutory basis of the rejection as § 102(b) or § 103. We cannot agree.

In evaluating whether a rejection made under § 103 is proper, evidence not pertinent to a rejection made under § 102(b) may have relevance, i. e., commercial success, unexpected results, etc. For example, evidence of commercial success no matter how striking could not overcome a rejection of a claim based on its lack of novelty. It simply is not relevant or material to that point. Therefore, since we do not know what additional evidence appellants might have been able to present if their claims had been rejected under § 103, it would not be proper for us to conjecture whether such a rejection might be sustained.

For the foregoing reasons, the rejection of claims 1 and 10 under 35 U.S.C. § 112 is affirmed, and the rejection of claims 1, 2 and 10 under 35 U.S.C. § 102(b) is reversed.

Modified.

      . Serial No. 526,707 filed February 11, 1966.

      . Anuales Pharm. Francaises, Yol. 15, 1957, pp. 533-546.

      . U. S. 2,876,225 issued March 3, 1959.

      . We do not mean to suggest that we have actually evaluated the process taught by Donnison and concluded that it could be used to prepare the claimed compounds. As this is irrelevant to our decision, we express no opinion on this point.


author: LANE, Judge. RICH, Judge MARKEY, Chief Judge

text:
    INTERNATIONAL SEAWAY TRADING CORP., Appellant, v. The UNITED STATES, Appellee.
    Customs Appeal No. 5523.
    United States Court of Customs and Patent Appeals.
    Dec. 29, 1973.

      Sharretts, Paley, Carter & Blauvelt, New York City, Attys. of Record, for appellant; Eugene F. Blauvelt, New York City, of counsel.
    Irving Jaffe, Acting Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, Joseph I. Liebman, New York City, for United States.
    Lamb & Lerch, New York City, ami-cus curiae; David A. Golden, Richard J. Kaplan, New York City, of counsel.
    Before MARKEY', Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   LANE, Judge.

This appeal is from the decision and judgment of the United States Customs Court, First Division, 69 Cust.Ct. 38, 349 F.Supp. 1019, C.D. 4375 (1972) overruling appellant’s protest against the classification of footwear invoiced as “Basketball High Shoes” under item 700.60 of the Tariff Schedules of the United States [TSUS] as “[f]ootwear (whether or not described elsewhere in this subpart) which is over 50 percent by weight of rubber * * * : Other” and assessed at 20% ad valorem. Appellant claims the merchandise should be classified under item 700.70, TSUS, as “[fjootwear * * * [w]ith soles of material other than leather: [w]ith uppers of vegetable fibers,” at a duty of 15% ad valorem. Involved in the controversy is Schedule 4, Part 4, Subpart B, Headnote 2 [hereinafter cited as Headnote 2], which reads:

2. For the purposes of the tariff schedules, the term “rubber” means a substance, whether natural or synthetic, in bale, crumb, powder, latex, or other crude form, which can be vulcanized or otherwise cross-linked, and which after cross-linking can be stretched at 68° F. to at least three times its original length and which, after having been stretched to twice its original length and the stress re- . moved, returns within 5 minutes to less than 150 percent of its original length, and includes such substance whether or not containing fillers, extenders, pigments, or rubber-processing chemicals.

The nature of the “Basketball High Shoes,” apparently made with heavy midsoles for training purposes, may be seen from certain stipulated facts and from Defendant’s Collective Exhibit “A”, which is a copy of U. S. Customs" Laboratory Report No. S 12355, referred to in the following stipulation.

The stipulation reads:

1. The uppers are of vegetable fibers.
2. The footwear is in no part of leather.
3. The midsoles of the instant footwear contain, as components, among other things, “Natural Rubber RSS” and “Synthetic Rubber”. That “Natural Rubber RSS” and “Synthetic Rubber” are subtances, whether natural or synthetic, in bale, crumb, powder, latex, or other crude form, which can be vulcanized or otherwise cross-linked, and which after cross-linking, can be stretched at 68° F. to at least three times its original length and which, after having been stretched to twice its original length and the stress removed, returns within 5 minutes to less than 150% of its original length.
4. „ Both parties agree to be bound by a determination by the Customs Laboratory as to whether the vulcanized so-called iron powder midsole material can be stretched to three times its original length.
5. Defendant’s Collective Exhibit “A” is correct in its determination of the relative weights of the respective materials insofar as they were therein determined.

Defendant’s Collective Exhibit “A” (Customs Laboratory Report No. S 12355) includes the following statements :

The midsoles in their present condition (containing the iron powder) are not capable of being stretched to three times their original length. In our opinion the rubber hydrocarbon of the midsole would conform to the physical requirements of the term “rubber” as defined in Headnote 2, Subpart B, Part 4, Schedule 4 of TSUSA 1969.
The weight of each sneaker minus the lacing was found to be 272 grams (left sneaker) and 283.5 grams (right sneaker). The midsoles were found to weigh 156.5 grams (left sneaker) and 169.2 grams (right sneaker). Three tests on the midsole of the left sneaker showed an average of 89% by weight of iron and iron oxide. This is equivalent to 51.2% by weight of the left sneaker minus the lacing. Assuming 89% by weight of iron and iron oxide in the right midsole, the right sneaker minus, the lacing contains 53.1% iron and iron oxide.
% # # 3*4
Three tests on the midsole of the right sneaker showed an average of 89.5% by weight of iron and iron oxide. This is equivalent to 53.4% by weight of the right sneaker minus the lacing.

Oral testimony by two witnesses for the United States and additional exhibits were also considered by the trial court.

The Customs Court regarded the issue in this case to be whether the midsole material, which according to the Customs Laboratory Report constitutes over 50 percent by weight of the imported footwear, consists solely of “rubber” as defined in Headnote 2, quoted above. The court below construed Headnote • 2 as referring to all substances in crude form, whether or not containing fillers, extenders, pigments or rubber-processing chemicals, which are capable of being cross-linked and of meeting the requisite tests.

In this interpretation, the Customs Court disagreed with the Government and with the amicus curiae. The Government takes the position that to be “rubber” within the meaning of Headnote 2, it is only necessary that a substance contain a natural or synthetic rubber which in crude form, before adding any fillers, extenders, pigments or rubber-processing chemicals, is capable of being cross-linked and, thereafter, of meeting the specified stretch and return tests. As to the midsole in the imported basketball shoe, the Government and the amicus curiae contend that the entire midsole is “rubber” under the Headnote 2 definition because the specified stretch and return tests should apply only to the precursor natural and synthetic rubber materials (without filler) used in the manufacture thereof and the stretch and return tests do not apply to the finished midsole.

Even though the Customs Court on the one hand and the Government and amicus on the other hand employed different interpretations of Headnote 2, they were in agreement that the classification of the imported shoes as footwear which is over 50 percent by weight of rubber under item 700.60, TSUS, was correct. The court below found that appellant had not demonstrated that the midsole material in crude form (with an actual composition of about 10 percent by weight natural and synthetic rubber and about 90 percent by weight iron powder) could not have been vulcanized or cross-linked in such a manner as to pass the stretch and return tests even though the actual samples submitted to the Customs Laboratory could not pass those tests. Thus, the Customs Court imposed on the importer the burden of proving a negative — -that the midsole material could not have been cross-linked by another process to yield a cross-linked mixture which would, in fact, pass the stretch and return tests. We take a different view of this crucial aspect of the case.

Our disposition of this appeal will focus on the midsole portion of the imported shoes since the midsole constitutes over 50 percent by weight of the total weight of each shoe. Both parties agreed to be bound by a determination of the Customs Laboratory as to whether the imported midsoles are capable of being stretched to three times their orig-nal length. The Customs Laboratory determined that the imported midsoles are not capable of being stretched to three times their original length.

We hold that appellant met its burden of proof regarding the impropriety of the Government’s classification by evidence in the form of the Customs Laboratory report. We find that there is no evidence in the record showing that the Government, thereupon, met its burden of going forward to prove that the cross-linking could have been performed by some other method so that the midsole mixture would meet the stretch and return tests. It may be that in this case, involving as it does a mixture containing nearly 90 percent by weight of iron powder, the Government would be hard-pressed to make such an affirmative showing.

We agree with the Customs Court that the correct interpretation of Headnote 2 is that “rubber” means a substance in crude form, whether or not containing fillers, extenders, pigments, or rubber-processing chemicals, which is capable of being cross-linked and, thereafter, of meeting the specified tests. However, the Customs Court is in error in its statement that there is not a scintilla of evidence that the midsole mixture was incapable, after cross-linking, of meeting the stretch and return tests. That is what the Customs Laboratory report is all about, The Customs Court makes a distinction without a difference by treating the finished midsoles as something different from the vulcanized midsole mixture for the stretch and return test requirements of Headnote 2. Moreover, the statement of the Customs Court places on appellant the burden of demonstrating that all other methods of cross-linking the midsole mixture would produce materials which would fail the stretch and return tests. Such a burden would neither be practical nor fair, particularly in view of the stipulation of the parties agreeing to be bound by a determination of the Customs Laboratory as to whether the instant vulcanized midsole could meet the stretch test.

The interpretations of Headnote 2 urged by the Government and by the amicus curiae require that only the “Natural Rubber RSS” and the “Synthetic Rubber” components (excluding the filler) of the midsole mixture be capable of being cross-linked and thereafter passing the stretch and return tests; whereas the filler is included for purposes of the weight determination under item 700.60, TSUS. In other words, they urge that the iron powder filler be excluded when making the qualitative chemical identification under Headnote 2, but that the iron powder filler be included when making the quantitative weight determination under item 700.60, TSUS. We think these interpretations are inconsistent. Such inconsistency should not be imputed to the Congress in the absence of clear evidence of intent —evidence which does not appear in the record or briefs.

Alternatively, the Government contends that appellant failed to establish that the imported merchandise was not over 50 percent by weight of “plastics.” We will not consider this contention raised for the first time on appeal. The Customs Court did not address this “plastics” question in its opinion, and the record before it dealt entirely with the “rubber” question. Since the Government’s alternative contention entails a new issue which was not raised previously, we see no basis for entertaining it at this stage of the case.

Finally, we come to appellant’s claim that the proper classification of the imported shoes is item 700.70, TSUS, “[f]ootwear, with uppers of fibers: [w]ith soles of material other than leather: [w]ith uppers of vegetable fibers.” Appellant has carried the burden of proving that item 700.70 is the proper classification by virtue of the facts stipulated by the parties, quoted above. The imported shoes are footwear with uppers of vegetable fibers and no part of the footwear is leather. Therefore, the proper classification of the imported merchandise is item 700.70, TSUS. The judgment of the Customs Court is reversed.

Reversed.

RICH, Judge

(concurring).

I fully agree with Judge Lane’s opinion but wish to add the following considerations.

The importation consists of footwear and the issue is whether it is to be classified in TSUS 700.60 or TSUS 700.70. This, in turn, depends on whether plaintiff has sustained its burden of proving that the footwear is not “over 50 percent of rubber.” In determining this seemingly simple fact question, the court below, both parties, and amicus are in agreement that the definition of “rubber” in Schedule 4, Part 4, Subpart B, Headnote 2, is controlling as to the meaning of “rubber.” Indeed, the headnote itself states that “For the purposes of the tariff schedules, the term ‘rubber’ means a substance” meeting certain stated requirements. (My emphasis.) That definition of “rubber” has produced chaos.

Since the Tariff Schedules have provided in Headnote 2 a statutory definition of “rubber” which is not only controlling here but obviously intended to apply to every item in the TSUS referring to “rubber,” that definition is potentially of vast importance to future tariff questions.

There has been an unusual amount of judicial confusion in this case over the interpretation of Headnote 2. I think this stems from its unfortunate grammatical construction, which appears to have led the lower court into results we have found to be incongruous.

Headnote 2 is one of the two head-notes to “Subpart B. — Rubber.” Headnote 1 provides that “This subpart covers all rubber * * That being so, Headnote 2 cannot, as a matter of common sense, be limited to “crude” rubber as the Customs Court appears to have thought. Yet the. literal reading of Headnote 2 makes it appear to apply only to crude rubber. If rubber is being defined for the purposes of all the tariff schedules, many of which cover products made of or containing rubber in which the rubber is, of necessity, not crude but in its finished state — vulcanized, cross-linked or whatever else it may be called —then it must have been the intent of Congress to write a definition that applies to both crude and vulcanized rubber.

The transition point, so to speak, between crude and vulcanized rubber is the point where cross-linking occurs. It is to be noted that Headnote 2 itself deals with substances on both sides of this transition point. It first speaks of a substance in “crude form” which can be vulcanized or otherwise cross linked; it next speaks of a substance which, after cross linking, is capable of meeting specified stretch and stretch-and-return tests. Reading Headnotes 1 and 2 in .;pari materia, one must read Headnote 2 defining “rubber” both before it is cross linked and after it is cross linked — i. e., “all rubber,” as Headnote 1 commands.

The unfortunate grammatical' construction, to which I have referred and which I think we should ignore in order to carry out the obvious intent of Congress, is, first of all, the placement of the word “which,” first occurrence. If it be advanced from its position just before the words “can be vulcanized” to precede the enumeration of various crude forms of rubber, the beginning of the headnote would then read:

For the purposes of the tariff schedules, the term “rubber” means a substance, whether natural or synthetic, which, in bale, crumb, powder, latex, or other crude form, can be vulcanized or otherwise cross-linked * * *

The only form of rubber which can be “vulcanized” or otherwise cross linked is a substance in a crude form because after cross-linking it is no longer “crude.” Cross-linked rubber cannot be cross linked. That, however, is only the first part of the test a “substance” in crude form must meet to qualify as crude “rubber.” The cross-linked material must then meet the stretch tests too, else the crude substance is not crude “rubber.”

If, however, we are dealing with an importation involving a cross-linked substance, as distinguished from a crude substance, as we are in the present case, then, I think, the language of the headnote must be applied thus (emphasis mine):

* * * the term “rubber” means a substance * * * which after cross linking can be stretched at 68° F. to at least three times its original length and which, after having been stretched to twice its original length and the stress removed, returns within 5 minutes to less than 150 percent of its original length, and includes such substance whether or not containing fillers, extenders, pigments, or rubber-processing chemicals.

I read the final clause “and includes * * * chemicals” to mean the same thing whether positioned as it is or whether it be construed as though the word “substance” in the first line above were followed directly by the clause”, whether or not containing fillers, extenders, pigments, or rubber-processing chemicals.” But not all of my colleagues so read it. This is a second unfortunate construction.

A stipulated fact in this case is that the midsoles have been vulcanized or otherwise cross linked. It is also stipulated that both parties will be bound by the finding of the Customs Laboratory as to whether this “so-called iron powder midsole material can be stretched to three times its original length.” The laboratory finding was that it cannot be so stretched.

I agree with the Customs Court that whether the midsole material is or is not “rubber” for purposes of the tariff schedules depends upon whether it meets the standards of Headnote 2. My point of disagreement with the lower court is in its apparent belief that those standards apply only to material in crude form. I also have to disagree that there “is not a scintilla of evidence” that the midsole mixture (elastomer plus iron powder), in crude form or otherwise, was, after cross linking, incapable of meeting the stretch tests of Headnote 2. The stipulated fact is that it was vulcanized or otherwise cross linked when imported and the Customs Laboratory found that it was incapable of meeting the stretch tests of Headnote 2.

As I read Headnote 2, I have to reject the argument that in testing the midsole material for compliance therewith one should ignore the principal component of that material — the iron powder, which is a “filler.” Under the headnote the term “rubber” includes a cross-linked material (10%) and filler of iron powder (90%). It is not technically possible, I believe, to add “filler” to a cross-linked or vulcanized elastomer; the filler has to be compounded with the crude substance, after which they are vulcanized together. I do not see how the Customs Court can object to the fact that the laboratory stretch tests were performed on the “finished midsoles.” If one wishes to know whether they are made of “rubber,” they cannot be performed in any other way. The stretch tests, as specified in Headnote 2, apply only to cross-linked material — -and “whether or not containing fillers.”

I have been motivated to state the foregoing because my experience in this case has persuaded me of three things: (1) Headnote 2, which is controlling, is of great importance; (2) Headnote 2 is very confusing; (3) the legislature should clarify Headnote 2. I hope that the judicial disagreement in this case will persuade it to do so before too many more disputes are generated by the headnote.

MARKEY, Chief Judge

(dissenting).

The issue is whether the imported shoes are, for tariff purposes, more than 50% by weight “rubber.” The answer turns on whether the midsole, composed of approximately 10% cross-linked elas-tomer and 90% iron powder and constituting more than 50% of the weight of the shoe, must be considered to be “rubber” for tariff purposes.

Headnote 2 is our only guide in determining whether the midsole is “rubber” for tariff purposes. Though I find no comfort in Headnote 1, I agree with Judge Rich that the language of Headnote 2 is subject to conflicting interpretations. I opt for what I consider its strict construction.

Paraphrased and stripped of redundant and inapplicable wording, the headnote is being read by the majority as:

For tariff purposes, the term “rubber” means a • substance, whether or not containing fillers, which can be cross-linked and thereafter stretches and returns within certain criteria. So read, the headnote would require

that the midsole itself pass the specified tests. Admittedly, it cannot. Thus, the midsole could not be termed “rubber” and the imported shoes could not be classified as composed of more than 50% by weight of rubber. The majority so holds.

Again paraphrasing and stripping the headnote of redundant and inapplicable wording, I would read it as:

For tariff purposes, the term “rubber” means a substance, in crude form, which can be cross-linked and thereafter stretches and returns within certain criteria and the term “rubber” means that substance whether or not it contains fillers.

So read, the headnote would limit the testing to the substance without fillers. Admittedly that substance here would pass the specified tests and the term “rubber” clearly applies to the substance without fillers. I interpret the provision regarding fillers, etc. as being an add-on or after-thought which says in effect, “if the substance is rubber, it remains rubber, for tariff purposes, even though it contains fillers, etc.”

I am aware, of course, of the seemingly incongruous result. A midsole, 90% of which is iron powder, is “rubber.” The incongruity argument is not persuasive, however, when the phrase “for tariff purposes” is given its full due. The majority interpretation would, for example, deny the title of “rubber” to an article composed of the elastomer and just enough fillers to cause the article to fail one of the tests by the barest margin. It would be just as incongruous not to call such an article “rubber” in an objective sense.

Because the elastomer portion of the midsole was stipulated to be a substance which “can be” cross-linked and therefore would pass the specified tests and, as I believe, the presence or absence of fillers is irrelevant for tariff purposes, the burden of proof as to other methods of cross-linking is of no moment. If it were, I would fully concur with the majority that the burden should be upon the government.

Similarly, I fully concur with the majority in disregarding the government’s arguments regarding “plastics” for the reasons set forth in the majority opinion.

The limited legislative history of Headnote 2, and of neighboring portions of the statute, provides no unerring guide to our decision here. The portion of Headnote 2 relating to “fillers” was removed, without comment, from its position ahead of the portion relating to cross-linking and tests (in an earlier draft) and inserted in its present position at the end of the headnote as passed. Without more, an intent of the Congress should not be found on that fact alone. I am content to take the headnote as it exists and believe it should be read as set forth herein.

In so reading the headnote, I impute no inconsistency to the Congress. Headnote 2 is applicable to all appropriate items of the TSUS, of which item 700.60 is but one. The weight determination under that item and the determination of what is “rubber” are, in my view, entirely separate considerations.

Accordingly, I would affirm the decision of the Customs Court, but for the reasons set forth herein.