author: LIVELY, Circuit Judge.

text:
    OLYMPIC FASTENING SYSTEMS, INC., Plaintiff-Appellee, v. TEXTRON, INC., Defendant-Appellant.
    No. 74-1203.
    United States Court of Appeals, Sixth Circuit.
    Oct. 16, 1974.

      Murray S. Monroe, Taft, Stettinius & Hollister, Cincinnati, Ohio, John M. Webb, Russell D. Orkin, Pittsburgh, Pa., for appellant.
    John W. Melville, Melville, Strasser, Foster & Hoffman, John D. Hayes, Cincinnati, Ohio, for appellee.
    Before PHILLIPS, Chief Judge, EDWARDS and LIVELY, Circuit Judges.
   LIVELY, Circuit Judge.

This patent case is concerned with the art of riveting, especially as it is practiced in the aircraft industry. In the manufacture of airplanes it is necessary to join sheets of metal together by riveting under circumstances where the riveter cannot see or reach behind or inside the sheets being joined. For this reason “blind” fasteners were developed in which a tubular rivet consisting of a fixed head and a hollow sleeve has inserted within its core a stem which is enlarged or serrated on its exposed end so that a pulling-type rivet gun can activate it. The lower end of the stem, which extends beyond the inner sheet of metal, contains a tapered joining portion and a “blind head” which has a larger diameter than .the stem or the sleeve of the tubular rivet. The blind head of the stem “upsets” or expands the lower end of the sleeve into a “tail” when the pulling force of the rivet gun forces it upward into the sleeve. This presses the inner sheet upward, closing any space that might have existed between it and the outer sheet. During this operation the exposed head of the rivet is held tightly against the outer sheet by the rivet gun. Thus, the sheets of metal are clamped or “clinched” together. The Cherry patent No. 2,183,543, not in issue here, was a pioneer in blind riveting, but the joinder it achieved was “non-structural” because the connecting sleeve between the riveted parts remained hollow.

The Huck patent No. 2,501,567 achieved a structural joinder by extruding and deforming the stem — a process known as “wiredrawing” — to fill the hollow sleeve of the tubular rivet. This was accomplished by pulling an enlarged section of the stem through the sleeve and expanding the sleeve by forcing its sides tightly against the holes in the plates being joined and filling the sleeve with the extruded stem. The “blind-head upset” occurred when a second larger section of the stem further enlarged the sleeve on the blind side of the metal sheets to form the tail. Since upset took place after the hole filling was completed rather than before it was begun, satisfactory clamping or clinching of the riveted sheets was not achieved. The Huck patent was concerned with hole filling rather than clamping and did not specify the dimensions of the various parts.

So far as this record discloses the first blind rivet-type fastener that successfully dealt with both the problems of clamping and hole filling was Gapp patent No. 2,931,532, issued April 5, 1960. It was the first “self-plugging” fastener which also achieved satisfactory clinching. The application for this patent stated that it related to a “blind type rivet wherein the stem of multipiece rivet is pulled to first expand the tubular rivet shank and clinch the sheets together and thereafter wiredraw to expand the rivet to fill the hole in the sheets . . .” By increasing the strength of wiredrawing and enlarging the dimensions of the stem, tapered shoulder and blind head of the fastener, Gapp perfected a device which clamped the sheets securely together without leaving a nonstructural hollow tube. This breakthrough was discovered by accident, but met a long-felt need in the aircraft and rivet industries. The sequence of events in the riveting process is important. In the Gapp patent, with the first movement of the joining portion upward the bottom of the tubular rivet is upset, or forced outward to form a tail, pressing the lower plate against the upper, or exposed one. With the clamping complete, pulling is continued and the sleeve is plugged by wiredrawing the blind head.

The Gapp patent is owned by Textron. While the application was being prosecuted in the Patent Office, Textron’s predecessor granted a non-exclusive license to Olympic. Thereafter the plaintiff began to manufacture and distribute Olympic-Lok rivets which are also blind-head, hole-filling fasteners for use in the aircraft industry. Olympic has paid Textron royalties on other fasteners which it admittedly makes under the licensing agreement, but has never paid royalties on Olympic-Lok rivets. The Olympic-Lok rivet is manufactured and sold under patent No. 3,285,121, issued on November 15, 1966 to an Olympic employee, George Siebol, and subsequently assigned by him to Olympic.

This suit was brought as a declaratory judgment action by the licensee seeking a declaration that the Gap patent is invalid and, if valid, that it is not infringed by the Olympic-Lok rivet. The decision of the district court upholding the validity of the Gapp patent has not been appealed. Thus the only questions before this court relate to infringement. Olympic presented three arguments in support of the contention that its fastener is not within the claims of the Gapp patent. The district court made findings on each of these propositions, rejecting two of the plaintiff’s arguments and adopting one. The ultimate conclusion of non-infringement made it unnecessary for the court to deal with Tex-tron’s counter-claim in which it sought an accounting for royalties on the Olympic-Lok rivet, costs and attorney fees.

The three findings of the district Court on the question of infringement may be summarized as follows :

(1) An important distinction between the Gapp patent and the earlier Huck invention was that the size of the blind head of the Gapp fastener beyond the pulling part is of “substantially uniform diameter through its length.” The Huck device had a large protrusion at the bottom of the stem. Although the blind head of the Olympic-Lok rivet varies from five to fifteen percent in diameter over a very small distance, the court held that in the context of the Gapp claim, “the Olympic head is of substantially uniform diameter. The smaller waist measurement in Olympic serves no purpose at all and from a point of view of what is to be accomplished the diameter of Gapp and Olympic are the same.”

(2) In Gapp the blind head is upset completely in a single step while in Olympic the upset occurs in two operations. The district court found that the single-step upset of the Gapp device provided the clamping or clinching required by the aircraft industry, and that the second stage upset of the Olympic fastener merely formed a larger tail which “serves absolutely no purpose.”

(3) The district court found the Gapp requirement that the “joining portion and said blind head are pulled into and through said tubular rivet . . (Claim 1, emphasis added) means these components must be pulled “through and out.” The parties have referred to the questions determined by these findings as “sub-issues” under the general issue of infringement. The court’s finding on the third sub-issue resulted in a holding of no infringement, and we will deal with it first.

Claim 1 of the Gapp patent, 3 which is reproduced in full in the margin, contains the language which the district court found to be decisive. The evidence disclosed that in the Olympic-Lok rivet the stem contains a notch or groove in a position which is even with the top of the rivet head when the pulling action of the rivet gun is completed. The stem can be broken off flush with the exposed head without the necessity of trimming. The court noted that in its formal description of the Gapp invention, the defendant’s Exhibit No. 43 shows a separate step to demonstrate the completion, after illustrating the hole filling. At this completion stage, both in the description and illustration, a portion of the shoulder and blind head are completely through and above the top of the exposed rivet head. In the Gapp specification, after describing the upset of the blind head and the clinching of the sheets together, it is stated that “the enlarged head of the stem is further wiredrawn until the connecting part or the reduced portion of the enlarged head is pulled through the rivet head substantially in the position shown in position ‘D’ in Fig. 1.” Position D shows the joining portion clearly beyond the end of the rivet head. The specification also refers to a step in which “the projecting end of the stem is trimmed' off substantially flush with the rivet head.” The district court determined that “through” as used in the concluding sentence of Claim 1 of the Gapp patent has the meaning of “through and out of.” This finding was based upon language of the specification and the Claim itself in addition to such external evidence as a dictionary definition of “through” and a memorandum from the inventor to his supervisor written shortly after the invention was perfected.

The Supreme Court, in dealing with validity of a patent, has stated the fundamental rule that patent claims are to be interpreted “in the light of the specifications and both are to be read with a view to ascertaining the invention.” United States v. Adams, 383 U.S. 39, 49, 86 S.Ct. 708, 713, 15 L.Ed.2d 572 (1966). In Westinghouse Electric & Manufacturing Co. v. Quackenbush, 53 F.2d 632, 634 (6th Cir. 1932), this rule of construction was applied to patent infringement cases as follows:

The claims must be read and construed in the light of the specification, and so liberally interpreted as to uphold and not destroy the right of the inventor in the substance of his invention.

Our examination of the specification of the Gapp patent convinces us that the word “through” was not used in the restricted sense of “through and out of.” While it is clear that the pulling stem is drawn completely through and out of the hollow sleeve or tubular rivet, the connecting' portion and wiredrawn blind head, referred to collectively by one witness as “the upsetting portion of the stem,” are only required to be drawn into and through the hollow sleeve to a predetermined distance, which may be either flush with the exposed rivet head or beyond it. Reproduced here, with emphasis added, is Column 1 lines 45-71 of the specification of the Gapp patent as granted:

Particular features of this invention include pulling a stem through a tubular rivet so as to pull an elongated blind head into the tubular rivet in the work so that the blind head first expands the tubular rivet wall against the blind side of the work, draws the sheets or work together, and then expands the tubular rivet against the hole in the sheet or work and substantially simultaneously the said blind head is reduced in diameter, or wire drawn, so as to fill tightly the enlarged and expanded passage in the tubular rivet, and then the wire drawing of the stem is continued by pulling the stem until the blind head on the stem is pulled into the rivet to the predetermined extent.
In other words, in a rivet assembly consisting of a tubular rivet with a head on one end -and a stem extended through the rivet, said stem having on its blind end a so-called blind head, the stem is pulled through the tubular rivet so as to first expand the tail of the tubular rivet against the corner of the hole or work and draw the work together, then to reduce the diameter of the blind head by wiredrawing it so that it can be pulled into the rivet so as to expand the side walls of the rivet against the hole, and then to further wire draw the blind head of the rivet by continued pull until the entire length of the tubular rivet is expanded against the hole and the drawn or reduced blind head tightly fills the interior of the tubular rivet; then stopping the pull when the wiredrawn portion of the head reaches or passes through the rivet head.

It can be seen that the words “into” and “through” are used variously and that the distance which the joining portion and blind head are pulled is described by other words such as “predetermined extent” and “reaches or passes through the head.”

The specification also refers to accompanying drawings which illustrate various embodiments of the invention. In addition to Figure 1-D which shows an embodiment in which part of the connecting portion and blind head have been pulled beyond the exposed head and must be trimmed off, modifications which are claimed as protected embodiments of the invention are shown in other figures. With respect to Figure 4, the specification states:

The modified form of the stem shown in Fig. 4 is preferably used in connection with the type of stem which has a pulling head 9 and is provided with a weakened portion or groove 32 which determines the distance at which the pulling action should cease. As the stem is pulled through the work it is pulled until the groove 32 is approximately flush with the top of the head 3 of the tubular rivet 2. Then the stem could be broken off by merely bending the portion of the stem which projects beyond the groove 32 and thereby the necessity for special trimming tools may be eliminated.

Olympic contends that a study of the file wrapper history of the Gapp patent discloses that Figure 4 relates to an abandoned claim. As is often the case, many claims of the original Gapp application were found not to warrant inclusion in the patent as granted. Olympic argues that Gapp’s original Claim 1 was broad enough to include a stem with a notch to permit a break flush with the exposed rivet head (Figure 4), but that when that Claim was abandoned this embodiment was abandoned with it. However, the original Claim 1 was a method claim, rather than a claim on the fastener itself. This and amended Claims 1, and 2 were rejected by the Patent Office on the ground that the steps described therein were fully described in the prior Huck patent. Later the Patent Office rejected Gapp Claim 12 on the ground that the difference between Gapp and Huck was one of design of the stem and blind head rather than one of method. The file wrapper discloses disagreement over whether the method claims were disclosed by the earlier Huck patent, but nothing about whether the wiredrawn blind head was pulled beyond the exposed rivet head or only flush with it.

Gapp also abandoned method Claim 18 which described the notched stem illustrated in Figure 4 and stated that the wiredrawing of the blind head could be stopped when the joining portion reached the “region” of the exposed rivet head. The reason for abandonment was the patent examiner’s objection that it was “considered to recite no more than the obvious and expected use of the rivet of claim 16.” The Claim 16 referred to by the examiner is the same as the final Claim 1 of the patent. Thus a separate claim embodying Figure 4 was treated as unnecessary because it was merely descriptive of the use to be made of the patent device. Under these circumstances the cancellation of Claim 18 should not be considered an abandonment of the embodiment of the invention which it had described.

We have examined the cases cited by Olympic on the issue of abandonment and recognize the principles which they enunciate. However, they have no application in .view of our determination that the embodiment of the Gapp invention containing a notched stem to facilitate breaking flush with the top of the exposed rivet head was never abandoned. In Nickerson v. Bearfoot Sole Co., Inc., 311 F.2d 858, 876 (6th Cir.), cert. denied, 375 U.S. 815, 84 S.Ct. 48, 11 L.Ed.2d 50 (1963), the court held that a patentee may not include matters which the file wrapper shows to have been eliminated from the patent. Similarly, the Supreme Court has held that abandoned claims may not be revived by being read into the language of allowed claims. Schriber-Schroth Co. v. Cleveland Trust Co., 311 U.S. 211, 218, 61 S.Ct. 235, 85 L.Ed. 132 (1940). Here the flush-breaking stem was included in what became Claim 1, as an obvious use of the device. It was not eliminated or abandoned.

In Exhibit Supply Co. v. Ace Patents Corp., 315 U.S. 126 (1942), the original patent application contained six claims, all of which were rejected by the examiner. Amendments were then submitted, four of which were eventually allowed. The Court interpreted the claim language “embedded in” and held that two accused devices embedded in a table but not wholly contained within it infringed on the patent. However, the Court also applied the doctrine of “file wrapper es-toppel” to find no infringement by other accused devices not embedded in a table since the patentee had abandoned the words “carried by” in favor of “embedded in.” We find no basis in the file wrapper history of this case for allowing the defense of file wrapper estoppel even if otherwise applicable. Gapp did not adopt the word “through” as a substitute for less restrictive language. Furthermore, the defense of file wrapper estoppel only applies where infringement is shown under the doctrine of equivalents. Kolene Corp. v. Motor City Metal Treating, Inc., 440 F.2d 77, 82 (6th Cir.), cert. denied, 404 U.S. 886, 92 S.Ct. 203, 30 L.Ed.2d 169 (1971). The district court made no finding on equivalency, and we do not deal with that question. See Graver Manufacturing Co. v. Linde Air Products Co., 339 U.S. 605, 609, 70 S.Ct. 854, 94 L.Ed. 1097 (1950). This sub-issue deals with interpretation of the Claim and a charge of literal infringement. Thus we have considered the file wrapper history as an aid to interpretation of the Claim, and specifically to determine whether there has been an attempt to revive abandoned claims.

Olympic also points to an admission by the inventor Gapp that the “joining portion” should be visible above the exposed head to facilitate inspection. This was described as a bonus of the invention. Facility of inspection from the visible side was listed in the specification as one of the accomplishments of the Gapp device. However, another advantage cited by Gapp in a memorandum to his supervisor Ketchum was that the stem could be notched and the notched portion pulled flush or just below the exposed head. The fact to be determined by inspection is whether the sleeve is completely filled and expanded tightly against the holes in the plates at the end of the operation. This may be observed as readily by examining a completed operation where the filling portion is sheared off flush with the top of the exposed rivet head as where a portion of the filling material extends beyond the head and requires a separate step to trim it flush. Our consideration of the cited evidence leads to the conclusion that Mr. Gapp had both versions of the fastener in mind at the time of the invention. The inventor testified that ease of inspection was “no part of the surprise of the invention.”

Turning to the Claim itself, we note that the concluding language of Claim 1, which was relied on by the district court and Olympic, refers to pulling the joining portion and blind head into and through “said tubular rivet.” Nowhere does the Claim say that the joining portion or blind head is pulled beyond the exposed head. In both the Gapp device and the Olympic-Lok rivet the joining portion and wiredrawn blind head are pulled through the full length of the tubular rivet. Furthermore, in the same sentence of the Claim the purpose of pulling the joining portion and blind head through the tubular rivet or sleeve is stated to be “for expanding the shank of the latter tightly against the sides of said holes in said plates.” In other words, these parts are pulled through the sleeve in order to fill it and force it tightly against the holes in the plates which are being joined. This “hole-filling” function is complete when the wire-drawn parts are pulled to the top of the exposed head because the entire hollow sleeve is then filled and expanded against the holes in the plates. Nothing would be added to this function of the mechanism by continuing to pull until the joining portion and part of the blind head extend beyond the exposed head.

We do not find in the use of the words “into and through” in Claim 1 a precise limitation to fasteners in which the wiredrawn elements are pulled beyond the exposed rivet head or a meticulous exclusion of fasteners whose stems are notched to achieve a break flush with the top of the head. These words do not relate to an inventive step or a substantial function of the invention. Cf. United Shoe Machinery v. O’Donnell, 84 F.2d 383, 386 (6th Cir. 1936). This present case differs sharply from Aluminum Co. v. Thompson Products, Inc., 122 F.2d 796 (6th Cir. 1941), and Dillon Pulley Co. v. McEachron, 69 F.2d 144 (6th Cir. 1934). In both of those cases there was clearly an express limitation in the claim of invention and the accused device departed from the claim in the very area of such limitation. By precisely limiting their claims the inventors were held to have meticulously excluded devices which differed in the particulars so limited. Nor do we believe that the widely accepted principles of Graphicana Corp. v. Baia Corp., 472 F.2d 1202 (6th Cir. 1973), cited by Olympic, have application to the facts of this case. There a finding of noninfringement was based on determination that omission from or change in the accused device of an element in a claim of the patent resulted in a change in function. Specifically, the court found that the accused device contained no element which performed the function claimed in the patent for a “mar-proof base.”

The decision on this sub-issue is controlled by this court’s holding in Maxon v. Maxon Construction Co., 395 F.2d 330, 335 (1968), that if his claim is broad enough an inventor may claim infringement “if another uses the principle and appropriates the substance of his invention.” There the court held that the one function claimed for gates on the body of a dump truck was performed alike by gates on the patent and the accused, though the gates were placed at different locations on the two. Here, the function of filling the sleeve and expanding it tightly against the holes in the clamped plates is performed in the same way in both Gapp and Olympic fasteners. With respect to the meaning of the claim language that the joining portion and blind head are pulled “into and through” the tubular rivet, we find no limitation which prevents Tex-tron from claiming infringement by the Olympic-Lok rivet. The witness Ketchum testified without contradiction that the extent to which the blind head is pulled into the sleeve is not a part of the inventive concept of the Gapp patent. In the same vein, the inventor, Howard Gapp, testified that it is of no importance how far the blind head is pulled so long as the devices clamp-up first, followed by hole filling. He also testified that hole filling is sufficiently complete when the joining portion pulls up to the head of the rivet. There was no evidence that any function was served by pulling the blind head out of and beyond the exposed head of the tubular rivet. The Olympic-Lok fastener performs the same function as the Gapp invention, precisely in the manner of the embodiment described in the specification and illustrated in Figure 4. To the extent that it differs from the embodiment shown in Figure 1, such difference is a non-functional variation in a device which otherwise reads on the claims of Gapp. On this sub-issue the findings of the district court are clearly erroneous.

Though Olympic did not file a cross appeal, both parties have briefed the other two sub-issues upon which the district court made findings of fact in determining the issue of infringement. By questions from the bench during oral argument, the court indicated some doubt as to whether these matters were properly preserved for review. Our holding that the district court’s finding on sub-issue 3 was clearly erroneous requires that we explore the necessity of a cross appeal with respect to sub-issues 1 and 2. The Practitioners’ Handbook of the Sixth Circuit (1973 Rev.) states on page 31:

Cross Appeals
The appellee may, without having to file a cross appeal, defend a judgment on any ground consistent with the record, even if rejected in the lower court. But he cannot attack the judgment, either to enlarge his own rights thereunder or to lessen the rights of his adversary, unless he files a cross appeal. A cross appeal is necessary even if the appellee merely seeks to correct an error or to supplement the decree with respect to a matter not dealt with below.

This appears to be a paraphrase of the rule promulgated in United States v. American Railway Express Co., 265 U.S. 425, 44 S.Ct. 560, 68 L.Ed. 1087 (1924). In that case the appellee urged on direct appeal to the Supreme Court two reasons (which it had also urged in the lower court) for affirming the district court judgment in addition to the reason relied on by the trial court. One appellant argued that the Court should not consider these additional contentions since there had been no cross appeal. Writing for the Supreme Court, Mr. Justice Brandéis characterized this argument as “unsound” and said:

It is true that a party who does not appeal from a final decree of the trial court cannot be heard in opposition thereto when the ease is brought here by the appeal of the adverse party. In other words, the appellee may not attack the decree with a view either to enlarging his own rights thereunder or of lessening the rights of his adversary, whether what he seeks is to correct an error or to supplement the decree with respect to a matter not dealt with below. But it is likewise settled that the appellee may, without taking a cross-appeal, urge in support of a decree any matter appearing in the record, although his argument may involve an attack upon the reasoning of the lower court or an insistence upon matter overlooked or ignored by it. By the claims now in question, the American does not attack, in any respect, the decree entered below. It merely asserts additional grounds why the decree should be affirmed. These grounds will be examined. 265 U.S. at 435-436, 44 S.Ct. at 564.

The Railway Express rule was applied by the Court in Morley Construction Co. v. Maryland Casualty Co., 300 U.S. 185, 57 S.Ct. 325, 81 L.Ed. 593 (1937), where it was held that failure to file a cross appeal did foreclose consideration of contentions urged by an appellee. In that case, however, acceptance of the appellee’s argument by the Court of Appeals had resulted in modification of the district court’s decree. When an appellee seeks to have findings of a trial court revised, a cross appeal is required if such revision “carries with it as an incident a revision of the judgment.” Id. at 191, 57 S.Ct. at 328. In Jaffke v. Dunham, 352 U.S. 280, 77 S.Ct. 307, 1 L.Ed.2d 314 (1957), the Supreme Court held that a successful party in the district court may sustain its judgment on any ground that finds support in the record. It was held to be error for the Court of Appeals to refuse, on the ground that no cross appeal had been filed, to consider the appellee’s claim' that the district court wrongfully ordered an affidavit stricken.

This court has applied the stated rule in a number of cases. In Reynolds Spring Co. v. L. A. Young Industries, Inc., 101 F.2d 257 (6th Cir. 1939), an appellee in a patent infringement suit was denied the right to argue that its damages should have been greater than the district court awarded. The court reasoned that this was an attack on the judgment of the trial court for the purpose of enlarging the appellee’s rights thereunder. A similar result was reached in Third National Bank in Nashville v. United States, 454 F.2d 689 (6th Cir. 1972), where an argument made by the appellant was viewed as leading to a result more favorable to the appellee than the district court judgment. Another rule recognized by this court is that a judgment will be affirmed, if correct for any reason, even though the reason or basis of the district court’s decisions may be erroneous. Paine & Williams Co. v. Baldwin Rubber Co., 113 F.2d 840, 844 (6th Cir. 1940). The same principle has been applied to permit arguments by appellees who have not cross appealed. E. g., Cook v. Hirschberg, 258 F.2d 56 (2d Cir. 1958); Standard Accident Insurance Co. v. Roberts, 132 F.2d 794 (8th Cir. 1942).

Having received the full relief available to it on the issue of infringement because of the district court’s holding on sub-issue 3, Olympic had no occasion to file an appeal. The appeal by Textron put the correctness of the district court judgment in issue, and Olympic was not required to file a cross appeal in order to seek affirmance of that judgment on the basis of arguments expressly rejected by the district court. Swarb v. Lennox, 405 U.S. 191, 202, 92 S.Ct. 767, 31 L.Ed.2d 138 (1972) (concurring opinion of Mr. Justice White).

In contrast to sub-issue 3, the record with respect to the other two sub-issues reveals a distinct conflict in the evidence. The first such issue — whether the Olympic-Lok rivet has a blind head of “substantially uniform diameter”— was the subject of testimony by expert witnesses for each of the parties. As originally filed, the Gapp Claim did not prescribe a uniform diameter throughout the length of the blind head. The Patent Office objected that there was nothing to distinguish the makeup of the lower stem from that of prior art devices which achieved clamping with a plug or “external proturberance” which upset the tail of the rivet after the stem had been pulled completely through the sleeve, leaving a hollow tube. To distinguish the functions its blind head performs — that of clamping first and then filling — from previous patented devices, the Gapp Claim was amended by inserting the words referred to.

The change in diameter of the Olympic-Lok fastener from one end of the blind head to the other is minute. It appears from examining actual rivets and illustrations filed as exhibits that there is a second small flare at the end of the Olympic-Lok blind head. A witness for Textron testified that illustrations which he filed as exhibits were accurate enlargements of the actual Gapp and Olympic-Lok fasteners and an example of the prior art and that when they are superimposed and compared with the prior art, Gapp and Olympic are both of substantially uniform diameter. Since the Gapp claim requires that the blind head be “substantially” rather than absolutely uniform throughout its length, unless the second flare on the Olympic device performs some function not performed by the Gapp fastener, this feature alone will not avoid infringement. The expert witness, Ketch-um, testifying for the defendant, stated that the blind head on the Olympic-Lok rivet is structurally similar to that of the Gapp device and that from a functional standpoint the two devices perform in the same manner. Furthermore, testifying as one skilled in the art, this witness expressed the opinion that the blind head of the Olympic-Lok fastener is of substantially uniform diameter. This testimony is substantial evidence in support of the district court’s findings and conclusions on this issue. Although interpretation of the claim language of a patent involves legal rules of construction, the question of whether an accused device is within the language of a claim is treated as a question of fact to which the “clearly erroneous” rule (Rule 52(a), Fed.R.Civ.P.) applies. Ballantyne Instruments & Electronics, Inc. v. Wagner, 386 F.2d 789, 790 (6th Cir. 1967), cert. denied, 390 U.S. 1026, 88 S.Ct. 1413, 20 L.Ed.2d 283 (1968); Maytag Co. v. Murray Corp. of America, 318 F.2d 79, 83 (6th Cir. 1963). In view of the purpose and function of the blind head in both Gapp and Olympic devices and the reason for amending the claim to add the “substantially uniform” requirement, the finding of the district court is not clearly erroneous as contended by Olympic.

The final question to be decided is whether the Olympic-Lok rivet “will fully clinch the plates and completely expand the rivet tail against the corners of the hole ... in a single' head-forming operation to the finished size of said clinching tail,” thus infringing upon the quoted language of the Gapp patent. Olympic contends that the district court was clearly erroneous in finding that the Olympic device at minimum infringes on the Gapp patent under the doctrine of equivalents. The district court recognized that the tail of the Olympic rivet is not completely formed until the additional flared portion causes a second expansion, but concluded that this expansion “serves absolutely no purpose.” The results of tests run by each of the parties are in the record. Gapp’s tests showed that the increased tail expansion on the Olympic-Lok fastener did not add to the tensile strength _ (the force required to pull two riveted work pieces apart). The tests conducted by Olympic showed the opposite, and each party has assailed the validity of the tests relied upon by the other.

Although the expert witness for Olympic testified that the second “free air expansion” which takes place in operation of the Olympic fastener increases the size of the tail and adds to the strength of the joinder, he admitted on cross-examination that effective clinching does not take place unless it occurs before the hole filling begins. It was testified by Textron’s expert that in operation the Olympic-Lok device removes the entire space between the plates at the first pull, or upset, or not at all. This witness stated that nothing was added to the operation by the second expansion since the function of tail forming is to pull the separated plates together and clinch them prior to plugging the sleeve. In other words, the Olympic fastener forms sufficient tail at the first stage to perform the function called for in the Gapp Claim.

The Olympic-Lok device does not appear to be a literal infringement on the language of the Gapp Claim. The district court reasoned that the critical inventive step in the Gapp patent is tail upset to provide clinching. There is substantial evidence in the record to support his conclusion that this function is performed in the same way and at the same stage in the operation of the two devices. Thus he treated the language in the Gapp patent that tail formation is completed to its finished size at the initial clinching as unimportant. This language does not appear to be an express limitation on the inventive concept. If an express limitation does not “pertain to the inventive step but rather to its mere environment,” it does not preclude reliance on the doctrine of equivalents to protect against infringement. United Shoe Machinery Corp. v. O’Donnell Rubber Products Co., supra, 84 F.2d at 386. Under the doctrine of equivalents “if two devices do the same work in substantially the same way, and accomplish substantially the same result, they are the same, even though they differ in name, form, or shape.” Graver Manufacturing Co. v. Linde Air Products Co., supra, 339 U.S. at 608, 70 S.Ct. at 856. A finding of equivalence is a determination of fact which may not be disturbed unless clearly erroneous. Id. at 609-610, 70 S.Ct. 854. The finding of the district court on this sub-issue is not clearly erroneous.

Study of the record and comparison of the two devices in question lead to the conclusion that the OlympicLok fastener does infringe on Gapp patent No. 2,931,532. The essential purpose of both devices is to obtain a structural joinder of metal plates to meet the standards of the aircraft industry in situations where there is a “blind” side. This function is performed in both de-

vices by a multipiece fastener which first upsets the tail of a rivet and then plugs the hollow tube of the rivet by wiredrawing the blind head so that the sides of the tube are expanded outwardly, entirely filling the matched up holes in the work pieces. There is no difference in the function performed or in the basic structure of the two devices.

The judgment of the district court is reversed for entry of a finding of infringement and further proceedings on the counterclaim of Textron.

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APPENDIX II

      . See Appendix I
      Figure 1, A through D shows the Gapp invention at various stages in the fastening process. The labels were not on the illustration when it was filed with the patent application, but were added by a trial witness.

      . 1. A rivet assembly for tightly securing plates together under stress of use, said rivet assembly including a tubular rivet snugly fitting into aligned holes in the plates to be riveted, said tubular rivet having a shank and a head on one end of the shank and a tail on the other end of said shank, said shank and said tail being of substantially the same outer diameter throughout their entire combined length and of smaller diameter than said head, a stem extending through said tubular rivet tail, shank and head, said stem consisting of a pulling portion extending beyond said head and being readily slidable through said tubular rivet, and an elongated and radially enlarged blind head extending beyond the blind end of said pulling portion, said blind head being of substantially uniform diameter throughout its length, and a joining portion between said pulling portion and said blind head, said joining portion tapering outwardly from said pulling portion to said enlarged blind head and being adjacent the tail of said tubular rivet, the angle of said taper and said substantially uniform blind head diameter and the wire-drawability of said tapered portion and said substantially uniform blind head being such that with the rivet snugly fitting into the aligned holes the tapered joining portion, upon reaching the region of the adjacent plate, will fully clinch the plates and completely expand the rivet tail against the corners of the hole in the adjacent plate in a single head-forming operation to the finished size of said clinching tail, and after said clinching and complete tail formation said tapered joining portion and blind head will be wire-drawn as said joining portion and said blind head are pulled into and through said tubular rivet for expanding the shank of the latter tightly against the sides of said holes in said plates.

      . See Figure 1-D, Appendix I.

      . See Figure 4, Appendix I.

      . See Appendix II for one of the illustrations.


source: Caselaw Access Project

author: PER CURIAM.

license: Public Domain

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Arthur Lee JOHNSON, Defendant-Appellant.
    No. 74-1035.
    United States Court of Appeals, Seventh Circuit.
    Argued May 24, 1974.
    Decided Oct. 18, 1974.

      Paul E. Freehling, Chicago, 111., for defendant-appellant.
    James R. Thompson, U.S. Atty., Gary L. Starkman and Jeremy D. Margolis, Asst. U.S. Attys., Chicago, 111., for plaintiff-appellee.
    Before PELL and STEVENS, Circuit Judges, and LARAMORE,  Senior Judge,

       Senior Judge Don N. Laramore of the United States Oourt of Claims is sitting by designation.

   PER CURIAM.

On December 13, 1971, 367 money orders drawn, on the Republic National Bank of Dallas, Texas, and a money order imprinter were stolen from a Chicago grocery store. Approximately one month later Arthur Johnson went to the apartment of Darlene Smith, displayed at least two money orders and asked if she would cash one. Johnson told Smith that he would provide her with the necessary identification and give her “something” in return. On various occasions thereafter, while riding in a car driven by Marion Lockett, Johnson withdrew some of the several $150 money orders locked in the glove compartment, filled in the blank spaces and persuaded other young women, Annie Jones and Debora Burns, to attempt cashing them. Jones testified that either Johnson or Lockett told her that, if there were “any questions about the money order, who sent it, you know, like I could say my brother or something like that.” Tr. 45. The stores approached by Jones and Burns refused to accept the money orders; when Jones returned from one of her unsuccessful ventures, the order was destroyed by either Johnson or Lockett.

On January 25, 1972, Johnson once again withdrew a $150 money order from the glove compartment, filled in the blank spaces and persuaded Annie Jones to cash it at a Chicago currency exchange. She did so and returned the proceeds to Johnson, who gave her $15 and said that Lockett “ought to have his share.” Tr. 52. A few days later Jones cashed another money order at the same currency exchange, but this time at the direction of Lockett. Both money orders were identified as part of the 367 stolen from the grocery store. They were returned to the currency exchange unpaid by the Dallas bank.

There is nothing in the record indicating that either Johnson or Lockett ever legitimately purchased any of the money orders in their possession. To the contrary, Lockett testified that he obtained the securities from Danny Shears, knowing they were stolen, with the understanding that, if he were able to cash them, part of the proceeds would be given to Shears. There also was evidence from which the jury could infer that Johnson had a similar arrangement with Shears. See Tr. 191.

Johnson and Lockett were later indicted for violating 18 U.S.C. § 2314 and 18 U.S.C. § 371. Lockett pleaded guilty and Johnson, after a jury trial, was found guilty on all counts. Johnson now appeals, raising essentially six arguments. We are not persuaded by any of these contentions, and, consequently, affirm the judgment of conviction.

I.

According to Johnson the record indicates that, when he first obtained the money orders, a dollar amount had already been imprinted upon them, but that the spaces for a date, payee and sender’s name were blank. Consequently, they were in the same form as any money order which had been legitimately purchased. When Johnson completed the securities, he provided no necessary information which was false. On January 25, 1972, for example, he made the money order payable to Annie Jones, and Annie Jones, using her true name, identification and signature, cashed it. Johnson’s initial contention, therefore, is that the government failed to prove that he knew the money orders had been “falsely made” within the meaning of § 2314.

The words “falsely made” and “forgery,” as used in § 2314, are “substantially synonymous.” Greathouse v. United States, 170 F.2d 512, 514 (4th Cir. 1948); Marteney v. United States, 216 F.2d 760, 763 (10th Cir. 1954). And, as the Supreme Court suggested in Gilbert v. United States, 370 U.S. 650, 655, 82 S.Ct. 1399, 8 L.Ed.2d 750, we may assume that they refer to the common law crime of forgery. See also Greathouse, supra, 170 F.2d at 514. The scope of common law forgery was considered by this court in In re Count de Toulouse Lautrec, 102 F. 878 (7th Cir. 1900).

In Lautrec a printer retained as samples of his work several interest coupons, the originals of which had been validly issued in connection with certain corporate bonds. The petitioner obtained some of these samples and, although knowing that they were not genuine obligations of the issuing corporations, negotiated them. The petitioner argued that he was not guilty of common law forgery because: 1) the coupons had been lawfully printed and retained; 2) he had obtained the coupons legitimately from a person with authority to distribute them; and 3) he was able to negotiate the coupons without altering them in any way. The court rejected this argument, concluding that forgery was committed when

the accused adopted the otherwise innocent work of the printer for the purpose of defrauding purchasers by selling as genuine an instrument which purported to have legal efficiency, but was neither intended nor issued as such by the purported maker.

102 F. at 881. See also Gilbert, supra, 370 U.S. at 658, 82 S.Ct. at 1404 (where “ ‘falsity lies in . the genuineness of execution,’ it is . . forgery”).

Thus, the fact that Johnson did not place any false information upon the money orders or that he may not have known of any such falsification is not dispositive. See United States v. Law, 435 F.2d 1264, 1265-1266 (5th Cir. 1970); United States v. Franco, 413 F.2d 282, 283 (5th Cir. 1969). See also United States v. Nelson, 273 F.2d 459, 461-462 (7th Cir. 1960). The question is whether Johnson, when he caused the actual and attempted negotiation of what appeared to be genuine obligations of the Dallas bank, knew that they were not such obligations.

In our opinion a jury could properly infer from the facts already set forth that such knowledge existed. Indeed, mere possession of recently stolen property without a satisfactory explanation gives rise to a presumption that the possessor has knowledge of its stolen character. Barnes v. United States, 412 U.S. 837, 93 S.Ct. 2357, 37 L.Ed.2d 380. Certainly, if Johnson knew that the money orders had been stolen, he knew that they were not genuine obligations. Cf. United States v. Mathews, 429 F.2d 497 (9th Cir. 1970).

II.

Johnson further contends that there was no evidence that he knew the money order would be transported in interstate commerce. As the government correctly notes, however, it is well settled that such knowledge can be inferred from the markings on the face of the security. See, e.g., United States v. Nelson, 273 F.2d 459, 460 (7th Cir. 1960). While the naoney orders in this case did not bear the name of any foreign state, they did contain the legend “Payable at Republic National Bank of Dallas.” Notwithstanding the absence of the word “Texas” and the existence of the metropolis of Dallas City, Illinois (pop. I, 276), we believe the jury could properly infer the requisite knowledge from this legend.

III.

Johnson’s next contention is that his “scheme reached fruition” when the money orders were cashed; any subsequent interstate transportation was “fortuitous” and only “peripherally related” to any of his acts. Citing United States v. Maze, 414 U.S. 395, 94 S.Ct. 645, 38 L.Ed.2d 603, and United States v. Isaacs, 493 F.2d 1124, 1146-1149 (7th Cir. 1974), cert. denied 417 U.S. 976, 94 S.Ct. 3184, 41 L.Ed.2d 1146, Johnson argues that his conviction should be reversed. See also United States v. Flaxman, 495 F.2d 344, 348-349 (7th Cir. 1974); United States v. Staszcuk, 502 F.2d 875, 880-881 (7th Cir. 1974).

This argument was squarely rejected by the Supreme Court in United States v. Sheridan, 329 U.S. 379, 67 S.Ct. 332, 91 L.Ed. 359. See also United States v. Dixon, 339 F.2d 932 (7th Cir. 1964). Neither Maze nor Isaacs is inconsistent with Sheridan for neither considered § 2314. That this is the critical distinction is perfectly clear from Justice Rutledge’s opinion for the Court in Sheridan See 329 U.S. at 386-391, 67 S.Ct. 332.

IY.

Prior to trial Johnson moved for a bill of particulars. With respect of Count I of the indictment, he sought identification of: 1) the unnamed co-conspirators who were then unknown to the grand jury; 2) the persons he transported for the purpose of cashing money orders and from whom he received a portion of the proceeds; 3) the persons who were present during those conversations which were overt acts done in furtherance of the conspiracy; and 4) any overt acts, not listed in the indictment, as to which the government intended to present evidence. With respect to Count II, he sought a description of the means of transportation in interstate commerce which he caused to be used. The district court denied the motion, and Johnson now contends that this constituted reversible error.

In support of his contention Johnson cites several district court decisions where the judge granted some of the above requests. E, g., United States v. Tanner, 279 F.Supp. 457, 474 (N.D.Ill.1967); United States v. Covelli, 210 F.Supp. 589 (N.D.Ill.1962). See also United States v. Feinberg, 502 F.2d 1180, 1181 (7th Cir. 1974). These decisions, however, are not authority for Johnson’s contention. For the question is not whether a trial court, in its discretion, may properly require production of the information sought; rather it is whether the refusal to do so constitutes a clear abuse of that discretion. Cf. Will v. United States, 389 U.S. 90, 88 S.Ct. 269, 19 L.Ed.2d 305; Walsh v. United States, 371 F.2d 436, 437 (1st Cir. 1967), cert. denied, 387 U.S. 947, 87 S.Ct. 2083, 18 L.Ed.2d 1335. Johnson has failed to call our attention to any authority establishing that rulings similar to the court’s in this case constituted such an abuse.

Such an abuse will be found only if the defendant was somehow prejudiced by the court’s action. Wong Tai v. United States, 273 U.S. 77, 82, 47 S.Ct. 300, 71 L.Ed. 545; United States v. White, 370 F.2d 559, 559-560 (7th Cir. 1966). Although Johnson has claimed prejudice, we find nothing in the record to support this claim. Indeed, as the district court correctly concluded, the indictment sufficiently informed Johnson of the nature of the charges. Compare United States v. Micele, 327 F.2d 222, 225-226 (7th Cir. 1964), cert. denied, 377 U.S. 952, 84 S.Ct. 1627, 12 L.Ed.2d 496. Furthermore, Johnson was “provided with information as to the alleged co-conspirators . . . and the alleged overt acts” at some point before trial, Tr. 129, compare United States v. Salazar, 485 F.2d 1272, 1277-1278 (2d Cir. 1973), Williams v. United States, 289 F.2d 598, 601 (9th Cir. 1961), and he stipulated as to the means of interstate commerce used. Tr. 73-74. Finally, the evidence actually adduced at trial could reasonably have been anticipated from a reading of the indictment. Compare Downing v. United States, 348 F.2d 594, 599 n. 7 (5th Cir. 1965), cert. denied, 382 U.S. 901, 86 S.Ct. 235, 15 L. Ed.2d 155.

Johnson, of course, asserts that the “testimony of every single government witness came as a complete surprise.” His contention, however, is really no more than that he was uncertain as to precisely whom the government would call as witnesses and to precisely what they would testify. It is well settled that a bill of particulars cannot be used to obtain a list of the government’s witnesses, United States v. Cansler, 419 F.2d 952, 954 (7th Cir. 1969), cert. denied, 397 U.S. 1029, 90 S.Ct. 1278, 25 L.Ed.2d 540, or evidentiary detail. See authority cited in 1 C. Wright, Federal Practice and Procedure § 129, at 286 & n. 48 (1969). And, as we concluded in United States v. Wells, 387 F.2d 807 (7th Cir. 1967):

[E]very denial of a defendant’s request for a bill of particulars may in some measure make the preparation of his defense more onerous. But a demonstration of this generalized kind of prejudice is insufficient to override the broad discretionary power vested in a district court with respect to such requests. If only a generalized showing of prejudice were sufficient, perhaps the defendant would always be entitled to a bill of particulars. Although the law of discovery in criminal cases has recently been liberalized, that development has yet to materialize.

387 F.2d at 808.

V.

Johnson’s penultimate contention is that the district court unconstitutionally interfered with the presentation of his case by subjecting his only witness, Marion Lockett, to “scathing cross-examination.” We have examined the court’s questioning of Lockett and find nothing “scathing” or improper about it. Furthermore, the questioning came outside the presence of the jury and after Johnson had rested his ease. Johnson makes no claim that, if the court had not “cross-examined” Lockett, he could or would have called Lockett in surrebuttal. Under these circumstances, there clearly was no interference with Johnson’s defense.

Prior to questioning Lockett and in the presence of the jury, the court did direct defense counsel: “Tell your witness [Lockett] to stay available, will you, please?” Tr. 169. Johnson’s related contention that this remark somehow demeaned Lockett in the eyes of the jury and thereby prejudiced his-case can safely be termed frivolous.

VI.

Finally, Johnson argues that the district court erred in refusing to give the following instruction:

Neither association with conspirators nor knowledge of illegal activity constitutes proof of participation in a conspiracy.

This instruction, taken from dicta in Roberts v. United States, 416 F.2d 1216, 1220 (5th Cir. 1969), is a correct statement of law, but would be somewhat misleading to a jury. While the abovementioned conduct does not, by itself, constitute proof of participation in a conspiracy, it does constitute some evidence of such participation. Indeed, knowledge of the illegal activity is an element of the crime of conspiracy. See United States v. Hickey, 360 F.2d 127, 138 (7th Cir. 1966), cert. denied, 385 U. S. 928, 87 S.Ct. 284, 17 L.Ed.2d 210.

Moreover, the district court did instruct the jury that:

A mere similarity of conduct among various persons and the fact that they may have associated and assembled together and discussed common aims and interests does not necessarily establish proof of the existence of a conspiracy. . . . [T]he evidence in the case must show beyond a reasonable doubt in order to establish proof that a conspiracy existed that the members in some way or manner or by some contrivances either positively or tacitly came to some kind of a mutual understanding to try to accomplish a common and unlawful plan.

Tr. 235. Since the substance of Johnson’s proposed instruction is adequately contained in the above instruction, the court’s refusal was not error. See United States v. Fellabaum, 408 F.2d 220, 227-228 (7th Cir. 1969), cert. denied, 396 U.S. 858, 90 S.Ct. 125, 24 L.Ed.2d 109.

The judgment of conviction is therefore

Affirmed.

      . Section 2314 provides in relevant part:
      Whoever, with unlawful or fraudulent intent, transports in interstate or foreign commerce any falsely made, forged, altered, or counterfeited securities or tax stamps, knowing the same to have been falsely made, forged, altered, or counterfeited . . . [s]liall be fined not more than $10,000 or imprisoned not more than ten years, or both.
      Count II of the indictment charged that, on or about January 25, 1972, Johnson
      did with unlawful and fraudulent intent transport and cause to be transported in interstate commerce from Chicago . . . to Dallas, Texas, a stolen and falsely made security, to wit Republic Money Order, Number [ A-XXXXXXXX ], dated January 22, 1972, knowing the same to have been stolen and falsely made; in violation of Title 18, United States Code, Section 2314.

      . Section 371 provides in relevant part:
      If two or more persons conspire . . . to commit any offense against the United States . . . and one or more of such persons do any act to effect the object of the conspiracy, each shall be fined not more than $10,000 or imprisoned not more than five years, or both.
      In Count I the government charged that Johnson conspired with Lockett and others, unknown to violate § 2314 and that they knowingly caused the transportation of lie-public money orders from Chicago to Dallas. The government further charged that, as part of this conspiracy, Johnson and Lockett recruited and transported various persons to cash the money orders, that they filled in the blank securities, that they received a portion of the proceeds from the securities and that they concealed the objectives of and acts done in furtherance of the conspiracy. Finally, the government charged that the following overt acts were committed: 1) conversations between the two defendants in the vicinity of 2514 West Van Burén on or about January 23, 1972, and January 25, 1972; and 2) all acts done to effectuate the violation specified in Counts II and III.

      . Johnson did insert the name of a ficticious sender. He argues, however, that the money order was negotiable without a sender’s name (the Government so stipulated at trial) ; thus, it was irrelevant that the name was ficticious. Johnson also believes that imprinting a dollar amount on the money orders constituted a “false making,” but contends that he had no knowledge of this imprinting. We may assume arguendo that each of these contentions is valid.

      . In United States v. Solomon, 422 F.2d 1110 (7th Cir. 1970), cert. denied, 399 U.S. 911, 90 S.Ct. 2201, 26 L.Ed.2d 565, Judge Cummings, speaking for the court, stated :
      An integral element in the offense stated by 18 U.S.C. § 2314 is the existence of guilty intent or knowledge. . . . The defendant must have knowledge that the check involved has been forged and fraudulently made. . . . This element is also required where a conspiracy to violate Section 2314 is charged under 18 U. S.C. § 371. . . . Evidence of such knowledge may be inferred from the particular circumstances and acts and conduct of the parties . . . but it must be clear and unequivocal.
      422 F.2d at 1112 (citations omitted). See also United States v. Greene, 442 F.2d 1285 (10th Cir. 1971).

      . The jury in this case was instructed in part:
      A “falsely made security” under this section means a security falsely or ficticiously made, signed or authored, with the intent to defraud and which would be legally effective if genuine. The falsification must relate to the execution or the making of the security rather than to its contents.

      . In Franco the Fifth Circuit stated:
      [A] stolen blank traveler's check becomes a forged security when someone fills in the signature spaces even if he uses his own signature. This is because a traveler’s check is cashed on the credit of the issuer. Since American Express had never issued these traveler’s cheeks to anyone, the first person to fill them in, even if he used his own signature, necessarily created forged securities and the first negotiator of the forged securities was necessarily a forger.
      413 F.2d at 283.

      . In Nelson we upheld a conviction under § 2314 where the name inserted in the payee blank of a money order was the former married name of one of the defendants. The opinion does note, 273 F.2d at 461, that a ficticious agent’s name also was placed upon the money order. However, the references to Lautree, at 461-462, make clear that, even absent this ficticious name, the result would have been the same.

      . The evidence must, of course, be considered in the light most favorable to the government. Glasser v. United States, 315 U.S. 60, 80, 62 S.Ct. 457, 86 L.Ed. 680.

      . It should also be noted that Lockett, Johnson’s coconspirator, admitted that he knew the money orders had been stolen. Tr.. 153.

      . The evidence, of course, need only show that the interstate transportation was reasonably foreseeable by the defendant. See United States v. Knippenberg, 502 F.2d 1056 at 1060 (7th Cir. 1974).

      . In Nelson this court stated:
      Each of the money orders bears the printed legend: “American Express Company, New York, New York, agrees to transmit and pay.” In our opinion this clearly indicated that the securities were payable at the American Express Company, in New York, New York. Defendant must have known that the money orders, when forged and uttered, would have to be sent across state lines to New York for collection.

      . In Maze the Supreme Court dealt with the mail fraud statute, 18 U.S.C. § 1341. In Isaacs the court construed the Travel Act, 18 U.S.C. § 1952. Both opinions make clear that the crucial inquiry is one of congressional intent.

      . It is, of course, well settled that the application for a bill of particulars is addressed to the discretion of the trial court and that the court’s action will be reversed only upon a clear showing of abuse. Wong Tai v. United States, 273 U.S. 77, 80, 47 S.Ct. 300, 71 L.Ed. 545; United States v. Cansler, 419 F.2d 952, 954 (7th Cir. 1969), cert. denied, 397 U.S. 1029, 90 S.Ct. 1278, 25 L.Ed.2d 540.

      . Indeed, some contrary authority exists. See, e.g., United States v. Gray, 464 F.2d 632, 635 (1972), and Pines v. United States, 123 F.2d 825, 827-828 (1941), where the Eighth Circuit held that it was not an abuse of discretion to deny a request similar to the one made with respect to Count II.

      . In United States v. Wells, 387 F.2d 807, 808 (7th Cir. 1967), this court stated that a trial judge must “articulate in terms that appear in the record the reason for exercising his discretion in denying a request for a bil of particulars. . . . ” Johnson contends that the failure of the trial judge to do so in this ease constitutes reversible error. In Wells, however, the court made clear that the mere failure to articulate a rationale is not by itself a ground for reversal. See 387 F.2d at 808.

      . See notes 1 and 2 supra.

      . It should be noted that Johnson has failed to call our attention to the point in the record where he objected to this refusal. Fed.R.Crim.P. 30 provides in part: “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. . . . ”

      . As the Second Circuit stated in United States v. Lease, 346 F.2d 696 (1965) :
      It is well settled that “[a] party cannot claim error in the refusal to give a requested instruction which is not entirely correct, or which it is not possible to give without qualification, or which is so framed as to be capable of being misunderstood.
      346 F.2d at 702, quoting, Cherry v. Stedman, 259 F.2d 774, 777-778 (8th Cir. 1958).


author: WEICK, Circuit Judge. McCREE, Circuit Judge

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Pearl BARRETT, Defendant-Appellant.
    No. 73-1872.
    United States Court of Appeals, Sixth Circuit.
    Oct. 18, 1974.
    Certiorari Granted Feb. 18, 1975.
    See 95 S.Ct. 1119.

      McCree, Circuit Judge, concurred in part and dissented in part and filed an opinion.
    Thomas A. Schaffer, Graham, Schaf-fer & West, Cincinnati, Ohio (Court Appointed — CJA) for defendant-appellant; Pearl Barrett, pro se.
    Eugene E. Siler, Jr., U. S. Atty., Robert M. Murphy, Lexington, Ky., for plaintiff-appellee.
    Before WEICK, EDWARDS and Mc-CREE, Circuit Judges.
   WEICK, Circuit Judge.

The indictment charged that appellant Barrett, having been convicted in the state court of a felony, housebreaking, knowingly received and had in his possession a firearm, towit, a .32 caliber Smith and Wesson revolver, which had been transported in interstate commerce, 18 U.S.C. § 922(h). He was tried and convicted by a jury and was sentenced to three years’ imprisonment.

Barrett had purchased the revolver on April 1, 1972, in a Western Auto Store in Booneville, Kentucky. Western Auto Store had received the gun on March 5, 1972 from Gastonia, North Carolina.

About one-half hour after Barrett had purchased the revolver he was observed by two deputy sheriffs driving his automobile south of. Booneville. After the officers chased his car a short distance he stopped, and they arrested him for driving while intoxicated. One of the deputies then noticed the firearm on the floor board on the driver’s side of Barrett’s car; it was loaded.

Barrett had been convicted previously on January 17, 1967, of the housebreaking charge, and was sentenced to two years’ imprisonment. On June' 20, 1969, after Barrett served his sentence, the Governor of Kentucky signed a partial pardon restoring Barrett only to his civil rights.

Barrett contended in the District Court and here that his purchase of the firearm from the dealer was an intrastate transaction, not within the scope of Section 922(h), and that, in any event the document which he received from the Governor of Kentucky constituted a full pardon and therefore his previous conviction had been wiped out.

I

THE STATUTE

Section 922(h) provides in relevant part:

(h) It shall be unlawful for any person — ■
(1) who is under indictment for, or who has been convicted in any court of, a crime punishable by imprisonment for a term exceeding one year;
to receive any firearm or ammunition which has been shipped or transported in interstate or foreign commerce.

This section is part of Title IV of the Omnibus Crime Control and Safe Streets Act of 1968.

It would appear to us that under the Government’s proof this statute has been literally complied with. The firearm indeed had been transported in interstate commerce, from North Carolina to Kentucky, less than one month before Barrett received it.

Barrett relies on dictum contained in the majority opinion in United States v. Bass, 404 U.S. 336 at 342-343, 92 S.Ct. 515, 520, 30 L.Ed.2d 488 (1971). Bass involved a prosecution ünder Title VII of the Omnibus Crime Control and Safe Streets Act, while the prosecution in the present case was under Title IV of the Act. The dictum is as follows:

. . . [Hjowever, Title IV apparently does not reach possessions or intrastate transactions at all, even those with an interstate commerce nexus, but is limited to the sending or receiving of firearms as part of an interstate transportation.

By reference to Tot, the complete sentence, of which the foregoing quotation is a part, is as follows:

Both courts below held that the offense created by the Act is confined to -the receipt of firearms or ammunition as a part of interstate transportation and does not extend to the receipt, in an intrastate transaction, of such articles which, at some prior time, have been transported interstate. (319 U.S. at 466, 63 S.Ct. at 1244).
The Court in Tot further said:
The Government agrees that this construction is correct. (Id. at 466, 63 S.Ct. at 1244).

It therefore appears that the Government conceded that the construction of the statute by the lower courts was correct, and that the Supreme Court accepted the concession without discussion. In Tot all that the Court decided was that the presumptive provision in the Act was invalid.

In the present case the Government has made no such concession, and we are required to decide the issue. Footnote 10 in Bass recognized that “the reach of Title IV itself is a question to be decided finally some other day . . . . ”

It is our opinion that there is no ambiguity in Section 922(h) of the Act. It means exactly what it says.

Barrett did indeed receive a firearm which had been transported in interstate commerce. Such receipt violated the plain language of the statute. It was not necessary for the Government to prove that Barrett received the firearm from the common carrier.

II

THE PARDON

It will be noted that Section 922(h) contains no exemption for any one who has been pardoned.

Barrett in the District Court relied on the exemption contained in 18 U.S.C. § 1203 Appendix, which appears in 18 U.S. C. § 3531 to End, page 496, and reads as follows:

§ 1203 Exemptions This title shall not apply to—
(1) any prisoner who by reason of duties connected with law enforcement has expressly been entrusted with a firearm by competent authority of the prison; and
(2) any person who has' been pardoned by the President of the United States or the chief executive of a State and has expressly been authorized by the President or such chief executive, as the case may be, to receive, possess, or transport in commerce a firearm. Section 1203 is part of Title VII of the

Act and would not appear to apply to an indictment under Title IV of the Act. But if the exemption did apply, it would not help Barrett because the alleged pardon did not authorize him to receive the firearm.

The pardon reads as follows:
To all to Whom These Presents Shall Come, Greeting:
Whereas, It is represented to me that the conduct of PEARL BARRETT has been of an exemplary nature and merits the restoration of all civil rights lost by reason of conviction of a felony.
Now Know Ye, That in consideration of the premises and by virtue of the power vested in me by the Constitution, I do hereby grant unto the said PEARL BARRETT

ALL THE RIGHTS OF CITIZENSHIP

denied him in consequence of said judgment of conviction, and I direct that all officers of this State respect this restoration.
In Testimony Whereof, I have caused these letters to be made patent and the seal of the Commonwealth to be hereunto affixed. Done at Frankfort, the 20th day of June in the year of our Lord one thousand nine hundred and 69 and in the one hundred and 78th year of the Commonwealth, ■ [SEAL] /s/ Louie B. Nunn

By the Governor All that the pardon purported to do was to restore “all civil rights lost by reason of conviction of a felony.”

Section 77 of the Kentucky Constitution provides:

He [the Governor] shall have the power to . . . commute sentences, grant reprieves and pardons, except in case of impeachment.

In Herndon v. Commonwealth, 105 Ky. 197 at 200, 48 S.W. 989 at 990 (1899), the Court quoted the following language taken from Mount v. Conn., 2 Duv., 93, with respect to a Section 77 pardon:

The pardon relieved the convict of the entire penalty incurred by the offense pardoned, and nothing else or more.

The civil rights to which Barrett was restored by the pardon were .the right to suffrage provided for in Section 145 of the Kentucky Constitution, the right to hold public office as provided in Section 150 of the Constitution, and the right to serve on a jury, provided in K.R. S. 29.025. These constitutional and statutory provisions expressly state that their civil rights are restored by the pardon.

The differences between a pardon merely restoring civil rights and a pardon relieving a convict of the penalty are pointed out in Arnett v. Stumbo, 287 Ky. 433, 435-436, 153 S.W.2d 889, 890 (1941), where the Court stated:

It will be perceived that persons losing their right of citizenship whereby they become disqualified to exercise the the right of suffrage under the voters section “may be restored to their civil rights by executive pardon”; whilst the disqualification to seek and hold office under the office holding section “may be removed by pardon of the governor”. There is no language in either of those sections expressly, inferentially or otherwise touching or dealing with a cancellation by any chief executive of the corporal punishment inflicted upon a convict for violation of any criminal law, the power to grant which is contained in Section 77 of our Constitution. The executive clemency provided for by both of the sections referred to (145 and 150) goes no farther than to permit the chief executive to restore lost rights of citizenship to the one convicted so that he might thereafter possess such rights as though no conviction had ever occurred. The rights so lost pertain exclusively to participation in the selection and the holding of a public office in the Commonwealth each of which is taken away by the sections of the Constitution referred to, but which may be restored by executive clemency as therein provided. Clearly, therefore, such restoration relates solely to the qualifications of voters in this Commonwealth and to the qualifications of those who seek and obtain public office within it.
The Court further said:
. . . [The Governor] is expressly authorized by the sections referred to [Secs. 145 and 150] to lift the disabilities prescribed in them from the shoulders of the convict and to restore him to full and complete rights of citizenship. Such authority is in addition and supplementary to the strict pardoning power provided for by section 77 of the same instrument. (287 Ky. at 437, 153 S.W.2d at 891).

In Illinois Cent. R. R. v. Bosworth, 133 U.S. 92, 103, 10 S.Ct. 231, 234, 33 L.Ed. 550 (1890), the Supreme Court stated the effect of a full pardon:

In the opinion of the court in the case of Ex parte Garland, 4 Wall. 333, 380, [18 L.Ed. 366,] the effect of apar-don is stated as follows, to wit: “A pardon reaches both the punishment prescribed for the offence and the guilt of the offender; and, when the pardon is full, it releases the punishment and blots out of existence the guilt, so that in the eye of the law the offender is as innocent as if he had never committed the offence. . . . ”

In 67 C.J.S. Pardons § lb, at 562-563, the several kinds of pardons .are discussed :

There are several kinds of pardons; thus a pardon may be full or partial, absolute or conditional. A pardon is full when it freely and unconditionally absolves the person from all the legal consequences of his crime and of his conviction, direct and collateral, including the punishment, whether of imprisonment, pecuniary penalty, or whatever else the law has provided; it is partial where it remits only a portion of the punishment or absolves from only a portion of the legal consequences of the crime. (Footnotes omitted).

It is clear to us that the pardon in the present case was not a full pardon, but only a partial pardon. There was no remission of guilt, nor of the penalty. The only .thing accomplished by the pardon was a restoration of civil rights under Kentucky law.

The rule of United States v. Renner, 496 F.2d 922 (6th Cir., 1974), should be confined to the facts of that case. The present case involved a question of Kentucky law relating to pardons, and appellant is bound by Kentucky law.

Affirmed.

McCREE, Circuit Judge

(concurring in part and dissenting in part).

I concur in that part of the court’s opinion holding that appellant cannot avail himself of the exemption contained in 18 U.S.C. § 1203 Appendix, but only because that exemption is not available to a defendant tried for violation of 18 U.S.C. § 922(h). That exemption applies only to convicted felons charged with receipt of firearms contrary to 18 U.S.C. § 1202. Appellant was indicted under a similar statute, 18 U.S.C. § 922 (h), also for receipt of a firearm. The exemption applicable to this offense, provided for in 18 U.S.C. § 925, requires, a convicted felon who desires to acquire a firearm contrary to the provisions of § 922(h) to secure the express permission of the Secretary of the Treasury, not a gubernatorial pardon.

I respectfully dissent from that part of the court’s opinion holding that the government established that appellant’s purchase of the gun from a local dealer satisfied the interstate commerce requirement of 18 U.S.C. § 922(h). In Tot v. United States, 319 U.S. 463, 63 S.Ct. 1241, 87 L. Ed. 1519 (1943), the Supreme Court was presented with two cases that required it to construe and to determine the validity of the predecessor statute to section 922 which provided:

It shall be unlawful for any person who has been convicted of a crime of violence or is a fugitive from justice to receive any firearm or ammunition which has been shipped or transported in interstate or foreign commerce, and the possession of a firearm or ammunition by any such person shall be presumptive evidence that such firearm or ammunition was shipped or transported or received, as the case may be, by such person in violation of this Act. Id. at 464, 63 S.Ct. at 1243, quoting C. 850, 52 Stat. 1250, 1251; 15 U.S.C. § 902(f).

The Supreme Court observed in its opinion that two federal courts of appeals, including this court, had held that “the offense created by the Act is confined to the receipt of firearms or ammunition as a part of interstate transportation and does not extend to the receipt, in an intrastate transaction, of such articles which at some prior time, have been transported interstate.” Id. at 466, 63 S.Ct. at 1244. The Court adopted this construction as authoritative in order to determine the validity of the presumption that Congress had created in the second portion of the statue. It invalidated the presumption because there was “no rational connection between the fact proved [possession] and the ultimate fact [receipt in an interstate transaction] presumed. . . . ” Id. at 467, 63 S.Ct. at 1214. Possession of a gun, the Court held, afforded “no reasonable ground for a presumption that its purchase or procurement was in interstate rather than in intrastate commerce.” Id. at 468, 63 S.Ct. at 1245. Because the Supreme Court in Tot authoritatively construed § 2(f) of the Federal Firearm Act, the predecessor to section 922(h), I believe that the phrase in section 922(h), “which has been shipped or transported in interstate or foreign commerce,” must be construed in the same manner as the identical phrase, “which has been shipped or transported in interstate or foreign commerce,” of section 2(f). Accordingly, I would hold, as the Supreme Court did in Tot, that the mere shipment of a weapon in interstate commerce at some time before purchase in an intrastate transaction is an insufficient nexus with interstate commerce .to satisfy the requirements of section 922(h).

In United States v. Bass, 404 U.S. 336, 92 S.Ct. 515, 30 L.Ed.2d 488 (1971), the Supreme Court reiterated that it had construed authoritatively section 2(f) in Tot and stated that section 922(h) “apparently does not reach possessions or intrastate .transactions at all, even those with an interstate commerce nexus, but is limited to the sending or receiving of firearms as part of an interstate transportation.” Id. at 342-343, 92 S.Ct. at 520. In Bass the Court, in construing 18 U.S.C. § 1202(a), concluded that with respect to that statute “the Government meets its burden . . . if it demonstrates that the firearm received has previously traveled in interstate commerce,” and observed that “this reading preserves a significant difference between the ‘receipt’ offenses under Title IV [containing section 922(h)] and Title VII [containing section 1202(a)].” Id. at 350, & n. 18, 92 S.Ct. 524. Moreover, the Court observed that the government had not demonstrated that Congress, in enacting section 922(h) in 1968, in language iden-tieal to that of section 2(f) of the Federal Firearms Control Act, had intended to change and broaden its earlier construction of this language in Tot. The government has also failed to offer in connection with this appeal any proof of •a Congressional change of intent.

Not only has the Supreme Court indicated that the “receipt” offense of section 922(h) is more limited than that defined by section 1202(a), but also this court has adopted a similar construction. In United States v. Craven, 478 F.2d 1329 (6th Cir.), cert. denied, 414 U.S. 866, 94 S.Ct. 54, 38 L.Ed.2d 85 (1973), reh. denied, 414 U.S. 1086, 94 S.Ct. 606, 38 L.Ed.2d 491, appellant contended that the government had failed to demonstrate receipt in violation of section 922(h). We observed that the Supreme Court’s interpretation of the interstate character of the receipt requirement in Bass “comport [ed] with the accepted interpretation of the predecessor statutes of § 922 (h),” and “conelude[d] that 18 U.S.C. § 922(h) speaks only of receipt of firearms or ammunition in interstate transportations and does not concern possessions at all.” Id. at 1336. Applying this test, we affirmed the conviction because within a few days after the theft of a police officer’s gun in Ohio, appellant was found in possession of it in Kentucky.

Finally, in United States v. Ruffin, 490 F.2d 557 (8th Cir. 1974), not cited by either party to this appeal, the court held that “for a receipt to be cognizable under § 922(h), the government must show that at the time the gun was received it was part of an interstate transportation.” Id. at 560. Accordingly, when the evidence showed only that a gun, found in appellant’s possession in Missouri, had been stolen seven months earlier in Illinois from an interstate common carrier, appellant’s conviction had to be reversed. The evidence was deemed insufficient to show that receipt of the gun was part of an interstate transportation.

When the Supreme Court authoritatively construes a statute, and Congress preserves its original language in enacting successor statutes, I believe that the scope of the statute’s prohibition remains the same, in the absence of evidence that Congress intended identical language in a successor statute to mean something different from its meaning in the original statute. In .this case, appellant’s purchase of the weapon was a purely intrastate transaction even though the gun had once been shipped in interstate commerce from the manufacturer to the dealer where it came to rest before it was sold to appellant. This evidence is insufficient to demonstrate the connection with interstate commerce required by 18 U.S.C. § 922(h). Accordingly, I would reverse appellant’s conviction.

      Footnote 10 reads as follows:
      Title IV, 18 U.S.C. §§ 922(g) and (h), is a modified and recodified version of 15 U.S.C. §§ 902(e) and (f) (1964 ed.), 75 Stat. 757, which in turn amended the original statute passed in 1938, 52 Stat. 1250, 1251. Each amendment enlarged the group of people coming within the Act’s substantive prohibitions against transportation or receipt of firearms in interstate commerce. The wording of the substantive offense has remained identical, although the original Act had a provision that possession of a firearm “shall be presumptive evidence that such firearm or ammunition was shipped or transported or received [in interstate or foreign commerce].” That presumption was struck down in Tot v. United States, 319 U.S. 463, 63 S.Ct. 1241, 87 L.Ed. 1519 (1943), and the Court there noted:
      “[T]he Act is confined to the receipt of firearms or ammunition as a part of interstate transportation and does not extend to the receipt, in an intrastate transaction, of such articles which, at some prior time, have been transported interstate.” Id., at 466, 63 S.Ct., at 1244.
      While the reach of Title IV itself is a question to be decided finally some other day, the Government has presented here no learning or other evidence indicating that the 1968 Act changed the prior approach to the “receipt” offense. See, e. g., S.Rep. No. 1097, 90th Cong., 2d Sess., 115 (1968). (404 U.S. at 343, 92 S.Ct. at 520)

      . The dictum in Bass was discussed in our decision in United States v. Craven, 478 F.2d 1329, 1336 (6th Cir. 1973), where there had been a second and more recent transportation of the firearm in interstate commerce, which we held was sufficient to support a conviction under Section 922 (h).