author: PER CURIAM:

text:
    UNITED STATES of America, Appellee, v. Arthur Tilmer MANKINS, Appellant. UNITED STATES of America, Appellee, v. Jerry Thomas DISHER, Appellant. UNITED STATES of America, Appellee, v. John Richard NEWSOME, Appellant.
    Nos. 73-2120-73-2122.
    United States Court of Appeals, Fourth Circuit.
    Submitted March 25, 1974.
    Decided June 14, 1974.
    N. Carlton Tilley, Jr., U. S. Atty., on brief for the United States.
    R. Bradford Leggett, Winston-Salem, N. C. [Court-appointed], on brief for appellant Arthur Tilmer Mankins.

      Eddie C. Mitchell, Winston-Salem, N. C. [Court-appointed], on brief for appellant Jerry Thomas Disher.
    Harrell Powell, Jr., Winston-Salem, N. C. [Court-appointed], on brief for appellant John Richard Newsome.
    Before HAYNSWORTH, Chief Judge, BOREMAN, Senior Circuit Judge, and WINTER, Circuit Judge.
   PER CURIAM:

On March 14, 1973, a branch bank of the Winston-Salem Savings and Loan Association was robbed by a lone gunman. Subsequently, Arthur Tilmer Mankins, Jerry Thomas Disher, and John Richard Newsome were indicted and convicted for the offense. Mankins was identified as the gunman, and Dish-er and Newsome were prosecuted as principals for having aided and abetted Mankins. All three men now appeal their convictions. Since the three were tried jointly and raise related issues, we have determined to decide their appeals in a single opinion. For reasons hereinafter stated, we affirm the convictions.

Mankins raises three grounds for relief. It is first claimed that a photographic identification by witnesses was conducted in such a manner that it tainted their subsequent in-court identification. This argument is devoid of merit. The individual who robbed the bank wore no mask or disguise. The two tellers present at the bank had an opportunity to view him for some three to five minutes. Each teller separately identified Mankins from police photographs the afternoon of the robbery, and each identified him in court. We have carefully examined the record and discern nothing whatsoever which would suggest that the photographic display was impermissibly suggestive, or that the in-court identifications did not have an independent basis. Simmons v. United States, 390 U.S. 377, 88 S.Ct. 967, 19 L.Ed.2d 1247 (1968).

Mankins’ second contention is that testimony concerning his status as an escaped prisoner prejudiced his defense. While several references were made to the fact that Mankins had escaped from a state penal facility the week before the robbery, we conclude that he is not thereby entitled to relief. The evidence of a prior criminal conviction was not employed to prove the offense charged, but was introduced because relevant to show the relationship between Mankins and his eodefendants. It was undisputed that Disher and New-some were instrumental in facilitating Mankins’ escape, and that the three were in close contact for much of the week between the escape and the robbery. In any case, there was ample direct evidence of Mankins’ guilt so that any error in allowing unnecessary references to his status as an escaped prisoner was harmless.

Mankins’ final argument is that the court erred by instructing the jury that a finding of guilty as to him was a condition precedent to deliberations concerning the guilt of Disher and New-some. We disagree. The evidence concerning Disher and Newsome was that they aided and abetted Mankins. There was no evidence whatsoever that Disher and Newsome may have aided and abetted someone other than Mankins. It was therefore proper to permit jury deliberations as to Disher and Newsome only after an initial finding of Mankins’ guilt. We find no violation of due process or of Rule 31(b) of the Federal Rules of Criminal Procedure. We therefore affirm Mankins’ conviction.

Disher and Newsome each raise the same allegations of error. They first claim that the district court erred by requiring that they be tried jointly with Mankins. We conclude that denial of the motions for severance was not error. The three men were indicted together pursuant to F.R.Cr.P. 8(b) ; the general rule is that individuals indicted together should be jointly tried. United States v. Shuford, 4 Cir., 454 F.2d 772. Here, the factors of time, money, and manpower dictated a joint trial, since separate trials would have necessitated much duplication of testimony. As in almost all cases with multiple defendants, the jury had to be cautioned periodically that evidence admitted against one defendant was not to be considered against the others. We see no reason, however, why the jury would have been unable to heed the judge’s instructions. This ease presents no situation comparable to Shuford, supra, where we concluded that severance had been improperly denied because one defendant's defense rested heavily on the exculpatory testimony of his codefendant who was willing to give such testimony but for fear that by taking the stand in the joint trial he would jeopardize his own defense. 454 F.2d at 776. Here, there has been no allegation by either Disher or Newsome that they needed the testimony of Mankins to prove their innocence.

The principal ground for relief asserted by both Disher and Newsome, however, is that insufficient evidence was presented to sustain either conviction. We cannot agree since the evidence, viewed most favorably to the government, was sufficient to sustain the jury’s verdicts. United States v. Sherman, 4 Cir., 421 F.2d 198, cert. denied, 398 U.S. 914, 90 S.Ct. 1717, 26 L.Ed.2d 78 (1970). Although the evidence against both Disher and Newsome was circumstantial and did not exclude every reasonable hypothesis consistent with innocence, it is the rule of this Circuit that such evidence may be relied upon by a jury to convict. United States v. Bobo, 4 Cir., 477 F.2d 974. We find nothing in these appeals that persuades us to abandon this rule.

Accordingly, as to each appellant, the judgment of the district court is affirmed.

Affirmed.


source: Caselaw Access Project

author: FEINBERG, Circuit Judge:

license: Public Domain

text:
    UNITED STATES of America, Appellant, v. Anthony James SEBASTIAN a/k/a Tony Sebastian, and Patrick Gibbons, Appellees.
    No. 990, Docket 74-1147.
    United States Court of Appeals, Second Circuit.
    Argued May 8, 1974.
    Decided June 7, 1974.
    Anne M. Srebro, Asst. U. S. Atty. (John T. Elfvin, U. S. Atty. for the Western District of New York, on the brief), for appellant.
    George P. Doyle, Buffalo, N. Y. (Doyle & Denman; Martoche & Collesano, Stanley J. Collesano, Buffalo, N. Y., on the brief), for appellees.
    Before ANDERSON, FEINBERG and MANSFIELD, Circuit Judges.
   FEINBERG, Circuit Judge:

The issue raised in this case is whether a district judge may compel the Government at a pre-trial suppression hearing to turn over to the defense for use in cross-examination prior statements of prosecution witnesses who have already testified on direct. We hold that the Jencks Act (the Act), 18 U.S.C. § 3500, requires a negative answer.

I

The United States appeals, pursuant to 18 U.S.C. § 3731, from an order of the United States District Court for the Western District of New York, John T. Curtin, J., suppressing certain evidence the Government wishes to use at trial against Anthony James Sebastian and Patrick Gibbons, who have been charged with passing and uttering forged United States savings bonds and conspiring to do so. 18 U.S.C. §§ 472, 2 and 371. The evidence consists of a written statement taken from Sebastian by a government agent, and credit cards, checks and stock certificates allegedly stolen together with the bonds involved in this case and seized incident to Gibbons’s arrest.

Judge Curtin’s order was entered after the following course of events. The hearing on defendants’ motion to suppress was held on December 19, 1973. The first prosecution witness, Deputy Sheriff Gary C. Behm, testified to Gibbons’s arrest and the circumstances surrounding the resulting seizure. After his direct examination, the court ordered the Government to turn over “that part of Mr. Behm’s investigative file which is thirty-five hundred [i. e. Jencks Act] material.” The judge specified: “[W]hatever summary he made of his investigation, that shall be marked and made available. . . . ” The Government, however, declined to yield any items, on the ground that the Act compels such disclosure only after a witness has testified on direct examination at trial. Similarly, when the second prosecution witness, United States Secret Service Agent Samuel J. Zona, testified to Sebastian’s arrest and subsequent execution of a written statement, the court granted a defense request for production of Jencks material; again the Government refused to comply.

On December 21, 1973, the judge ordered Sebastian’s statement and the items of physical evidence suppressed because of the Government’s non-production. This appeal followed. For reasons stated below, we hold that the trial court erred in excluding the evidence and reverse the order of suppression.

II

In pertinent part, the Act provides as follows:

(a) In any criminal prosecution brought by the United States, no statement or report in the possession of the United States which was made by a Government witness or prospective Government witness (other than the defendant) shall be the subject of subpena, discovery, or inspection until said witness has testified on direct examination in the trial of the case.
(b) After a witness called by the United States has testified on direct examination, the court shall, on motion of the defendant, order the United States to produce any statement . of the witness in the possession of the United States which relates to subject matter as to which the witness has testified. [Emphasis added.]

18 U.S.C. § 3500.

Clearly, the literal wording of the Act supports the Government’s position that it may not be forced to give defendants statements of prosecution witnesses before the actual trial. The phrase used in the statute — “the trial of the case”— would not ordinarily be taken to mean a suppression hearing. For example, the proposed amendment to Rule 12 of the Federal Rules of Criminal Procedure states that a motion to suppress evidence must be made prior to trial. The legislative history of the Act is less helpful. It reflects a general congressional aim to disapprove “misinterpretations” of Jencks v. United States, 353 U.S. 657, 77 S.Ct. 1007, 1 L.Ed.2d 1103 (1957), which had led some lower federal courts to authorize excessive or untimely disclosure in reliance on supposed Supreme Court precedent, and to establish “an exclusive procedure” for responding to defendants’ demands for access to prior statements of government witnesses. But it is fair to say that the Act’s history does not shed any blinding light on our immediate problem. As we previously stated in United States v. Covello, 410 F.2d 536, 544 (2d Cir.), cert. denied, 396 U.S. 879, 90 S.Ct. 150, 24 L.Ed.2d 136 (1969):

In all probability Congress did not consider the question whether a suppression hearing is itself a “trial” or whether such a hearing is so much an integral part of the criminal trial that determines a defendant’s innocence or guilt so as to intend either that the Act apply to such a hearing or that it not do so.

In terms of case authority, however, we do not write on a clean slate. In United States v. Percevault, 490 F.2d 126 (2d Cir. 1974), this court very recently overturned an order calling for pre-trial disclosure of Jencks material. Similarly, in United States v. Covello, supra, we upheld a trial judge’s refusal to turn over a government agent’s reports after the latter’s direct testimony at a pre-trial suppression hearing. Decisions from other circuits, moreover, uniformly deny production before trial on the merits. See Robbins v. United States, 476 F.2d 26, 32 (10th Cir. 1973); United States v. Lyles, 471 F.2d 1167 (5th Cir. 1972); United States v. McMillen, 489 F.2d 229 (7th Cir. 1972); United States v. Montos, 421 F.2d 215 (5th Cir.), cert. denied, 397 U.S. 1022, 90 S.Ct. 1262, 25 L.Ed.2d 532 (1970).

Appellees rely in part on United States v. Foley, 283 F.2d 582 (2d Cir. 1960), which Covello characterized “as holding no more than that we left it to the discretion of the trial judge whether to order a production of documents . . . . ” 410 F.2d at 544-545. But Foley is readily distinguished by its unusual procedural posture. It arose on the Government’s petition for mandamus, always an extraordinary remedy, and the court found “no indication from the transcript of the argument” that the judge would ultimately “require any disclosure to taxpayers of government files inconsistent with applicable principles of law.” United States v. Foley, supra, 283 F.2d at 584. Moreover, appellees’ brief in Percevault, supra, called Foley to the attention of the panel. Nevertheless, the court stated that “cases which have afforded the district judge a measure of discretion in administering the Act . . . did not consider the timing of the disclosure . ,” 490 F.2d at 132 (emphasis added), but only procedural or definitional issues.

Appellees correctly point out that most of the decisions cited by the Government deal with requests for production in the context of discovery motions or preliminary hearings. See, e. g., United States v. Percevault, supra (discovery); United States v. Lyles, supra (discovery); United States v. McMillen, supra (discovery); Robbins v. United States, supra (preliminary hearing). Appellees argue most persuasively that the case for pre-trial disclosure is strongest in the framework of a suppression hearing. Since findings at such a hearing as to admissibility of challenged evidence will often determine the result at trial and, at least in the case of fourth amendment suppression motions, cannot be relitigated later before the trier of fact, pre-trial production of the statements of witnesses would aid defense counsel’s impeachment efforts at perhaps the most crucial point in the case. Appellees also point out, as did Judge Curtin, that a government witness at the suppression hearing may not appear at trial so that defendants could never test his credibility with the benefit of Jencks Act material. But although we might well — as a matter of policy — favor broadening the Jencks Act or generally liberalizing federal discovery, we do not feel that we can ignore the weight of authority, including our own, or the language of the Act in the absence of contrary legislative history or specific direction from Congress. Cf. United States v. Covello, supra, 410 F.2d at 544. We hasten to add, however, that our opinion should not be construed as disapproving the practice of turning over Jencks Act material well before any legal requirement to do so as part of cooperative discovery between the prosecution and defense counsel, supervised and encouraged by the judge at a pre-trial conference. We encourage that practice and believe that it frequently benefits not only a defendant, but the Government too, and that it may also serve the public interest in expediting the fair resolution of criminal cases. See Percevault, supra, 490 F.2d at 132; ABA Standards Relating to Discovery and Procedure Before Trial § 2.1(a) (i) and commentary b. We hold only that the district judge — and we — cannot properly compel such turnover.

Accordingly, we reverse the order of suppression entered by the district court.

      . Proposed Fed.R.Crim.P. 12(b)(3), Proposed Amendments to the Federal Rules of Criminal Procedure, Communication from the Chief Justice of the United States, H.R.Doc.No.93-292, 93d Cong., 2d Sess. 7 (1974). The Xotes of the Advisory Committee state that this codifies existing practice. Id. at 38.

      . See S.Rep.No.981, 85th Cong., 1st Sess. (1957), and especially Appendix, id. at 7; H.R.Rep.No.700, 85th Cong., 1st Sess. (1957).

      . S.Rep.No.981, supra note 2, at 2. See generally United States v. Covello, 410 F.2d 536, 543 (2d Cir.), cert. denied, 396 U.S. 879, 90 S.Ct. 150, 24 L.Ed.2d 136 (1969).

      . Cf. Stans v. Gagliardi, 485 F.2d 1290 (2d Cir. 1973).

      . Foley disposed of the prosecution’s second attempt, in the same proceeding, to obtain interlocutory review of an adverse order below. In Grant v. United States, 282 F.2d 165 (2d Cir. 1960), we dismissed for lack of appellate jurisdiction an appeal from an order restraining the use of government evidence pending a hearing before the district judge.

      . In view of our disposition of this matter, we do not reach the Government’s second claim that part of the material at issue here may not qualify as a “statement” within subsection (e) of the Act. 18 U.S.C. § 3500(e).


author: PER CURIAM.

text:
    Frank C. HOWARD and Nancy Howard, Plaintiffs-Appellants, v. UNITED STATES of America, Defendant-Appellee.
    No. 73-1946.
    United States Court of Appeals, Seventh Circuit.
    Argued April 16, 1974.
    Decided May 20, 1974.

      Joseph W. Grady, Chicago, 111., for plaintiffs-appellant.
    Scott P. Crampton, Asst. Atty. Gen., David E. Carmack, Atty., Tax Div., Dept, of Justice, Washington, D. C., James R. Thompson, U. S. Atty., Chicago, 111., for defendant-appellee.
    Before FAIRCHILD, PELL and STEVENS, Circuit Judges.
   PER CURIAM.

Plaintiffs, Frank C. Howard and Nancy Howard, filed a joint income tax return for the year 1965 in which they claimed a $99,900.00 theft loss. 26 U.S.C. § 165. The Internal Revenue Service investigated this claim, but made no objection before the statute of limitations ran. Plaintiffs then sought a refund for the years 1962 and 1963 on the ground that the 1965 loss created a net operating loss carryback. 26 U.S.C. § 172. This time, however, the IRS determined that plaintiffs’ 1965 loss was occasioned by a nonbusiness bad debt, 26 U.S.C. § 166, and not by theft; thus, it denied the refund. 26 U.S.C. § 172(d). Plaintiffs commenced an action pursuant to 28 U.S.C. § 1346(a)(1), and, after a bench trial, the district court upheld the Commissioner’s determination.

Two questions are presented on appeal. First is whether the IRS is collaterally estopped from denying the net operating loss carryback because it had already “approved,” by not disallowing, the 1965 loss. Second is whether the evidence demonstrates that plaintiffs’ loss resulted from a theft. We answer both questions in the negative and, accordingly, affirm the judgment below.

I.

Plaintiffs’ initial contention is that the Commissioner’s action concerning the 1965 claim was equivalent to a judgment; thus, the doctrine of collateral estoppel prevents him from “re-determining” the nature of this loss. See Commissioner v. Sunnen, 333 U.S. 591, 68 S.Ct. 715, 92 L.Ed. 898. Assuming, but by no means deciding, that the Commissioner’s review of the 1965 return was tantamount to an approval of the claimed theft loss, we must nevertheless reject plaintiffs’ argument.

Professor Moore has correctly observed :

[I]t is axiomatic to the doctrines of res judicata and collateral estoppel that only judicial decisions are given conclusive force in subsequent legal proceedings. Thus determinations made by the Commissioner of Internal Revenue are not judicial in nature but administrative and are not res judicata to bind him for the same taxable year or for subsequent years.

IB J. Moore, Federal Practice fí 0.-422[2], at 3403 (2d ed. 1974); see Burnet v. Porter, 283 U.S. 230, 51 S.Ct. 416, 75 L.Ed. 996; Commissioner v. Newport Industries, Inc., 121 F.2d 655, 657 (7th Cir. 1941); Bonwit Teller & Co. v. Commissioner, 53 F.2d 381, 384 (2d Cir. 1931), cert. denied, 284 U.S. 690, 52 S.Ct. 266, 76 L.Ed. 582. Accordingly, courts have consistently allowed the IRS to reconsider a taxpayer’s liability in situations analogous to the present one. E. g., Pacific Transport Co. v. Commissioner, 483 F.2d 209, 214-215 (9th Cir. 1973), cert. denied, 415 U.S. 948, 94 S.Ct. 1469, 39 L.Ed.2d 563, 42 U.S.L.W. 3485 (1974); Phoenix Coal Co. v. Commissioner, 231 F.2d 420, 421-422 (2d Cir. 1956); Commissioner v. VanBergh, 209 F.2d 23 (2d Cir. 1954); see 26 U.S.C. § 6214(b).

II.

Plaintiffs’ second contention is that the 1965 transaction with John Laures was an embezzlement of $100,000.00 and, consequently, a theft loss within the meaning of 26 U.S.C. § 165. After having considered all the evidence in this case, the district court concluded:

It is impossible under this record to make any finding based upon credible evidence that a theft occurred as defined by the Illinois statutes .... The evidence furnished by plaintiffs does not establish that Laures obtained possession of plaintiffs’ stock or its proceeds by deception, with the intent to deprive plaintiffs permanently of the use of their property.

In our opinion, the district court’s conclusion is most certainly not clearly erroneous and must therefore be upheld. Fed.R.Civ.P. 52(a).

In 1965 John Laures needed additional working capital for Concrete Maintenance Products, Inc. (CMP), a company which he managed. He approached plaintiffs, who were his friends and business associates, and asked if he could sell their 100,000 shares of CMP stock (at $1.00 per share) to raise the necessary capital. In return Laures promised to replace the stock at some future (unspecified) date with his own and, if possible, to induce the company to issue plaintiffs convertible debentures. Plaintiffs agreed. They gave Laures the shares to sell, which he did, and then endorsed the proceeds of this sale to him. Although Laures initially deposited the entire $100,000.00 in his personal checking account, $50,000.00 eventually found its way into CMP’s corporate account. CMP later went bankrupt and Laures left Illinois without the debentures having been issued or the stock or money having been returned.

The district court coud reasonably infer from this evidence that Laures borrowed the $100,000.00 with the original intent of paying it back. Under such an interpretation, the failure to repay would establish a breach of contract but not a theft. As the Supreme Court has repeatedly held:

[W]here the evidence would support a conclusion either way but where the trial court has decided it to weigh more heavily for . . . [one party] [s]uch a choice between two permissible views of the weight of evidence is not “clearly erroneous.”

United States v. Yellow Cab Co., 338 U.S. 338, 342, 70 S.Ct. 177, 179, 94 L.Ed. 150. Accord, United States v. National Association of Real Estate Boards, 339 U.S. 485, 495-496, 70 S.Ct. 711, 94 L.Ed. 1077. Consequently, the judgment of the district court is

Affirmed.

      . Plaintiffs’ actual loss of $100,000.00 was limited by a $100.00 statutory deduction. 26 U.S.C. § 165(c)(3).

      . Neither the Secretary of the Treasury nor his authorized delegate entered into a closing agreement with plaintiffs pursuant to 26 U. S.C. § 7121. Nor did the IRS ever inform plaintiffs that their return had been audited and found to be correct. The IRS simply failed, albeit after considerable investigation, to disallow the loss.

      . Commissioner v. Sunnen, 333 U.S. 591, 68 S.Ct. 715, 92 L.Ed. 898, is not to the contrary. There the Court indicated that a judgment of the Board of Tax Appeals could be given res judicata or collateral estoppel effect. The Revenue Act of 1926, however, had endowed the Board with capacity to render decisions which were final and binding. American S.S. Co. v. Wickwire Spencer Steel Co., 8 F.Supp. 562, 566 (S.D.N.Y.1934). Prior to the 1926 Act decisions of the Board did not have such an effect. IB J. Moore, Federal Practice ¶ 0.422 [2], at 3403 (2d ed. 1974). With the exception of 26 U.S.C. § 7121, see note 2 supra, we are not aware of any provision which endows the Commissioner with the same capacity.

      . 26 C.F.R. § 1.165-8(d) (1973) provides:
      For purposes of this section the term “theft” shall be deemed to include, but shall not necessarily be limited to, larceny, embezzlement, and robbery.
      Whether a theft has occurred is a factual question, Alison v. United States, 344 U.S. 167, 170, 73 S.Ct. 191, 97 L.Ed. 186, which must be answered in accordance with the law of the jurisdiction where the loss was sustained. Edwards v. Bromberg, 232 F.2d 107, 111 (5th Cir. 1956). Plaintiffs, of course, had the burden of establishing that a theft occurred. See Boehm v. Commissioner, 326 U.S. 287, 294, 66 S.Ct. 120, 90 L.Ed. 78. This burden was not met simply by proving that their claim of theft was initially allowed by the Commissioner.

      . There is some uncertainty as to the precise nature of this agreement. At trial plaintiffs claimed that they were making a loan to CMP and that Laures was authorized only to use the $100,000 for CMP’s working capital. This was perhaps consistent with their claims in the Bankruptcy of CMP. On the other hand, Laures testified in his deposition that plaintiffs were not making a loan to the corporation; rather plaintiffs permitted him to use their stock as an accommodation to obtain the $100,000.00. This was perhaps consistent with plaintiffs’ attachment action against Laures in which they claimed that a personal loan was made to Laures. The district court concluded that, under either version, a theft had not been proven.

      . The Illinois Criminal Code provides that theft is committed when, inter alia, a person “obtains by deception control over property of the owner” and “intends to deprive the owner permanently of the use or benefit of the property.” Ill.Rev.Stat. ch. 38, § 16-1 (1973). The Code further provides: “Failure to perform standing alone is not evidence that the offender did not intend to perform.” Ill.Rev.Stat. ch. 38, § 15-4(e) (1973).


text:
    James H. BERRY, Petitioner-Appellant, v. Henry E. COWAN, Warden, Respondent-Appellee.
    No. 73-2246.
    United States Court of Appeals, Sixth Circuit.
    Argued April 4, 1974.
    Decided June 12, 1974.
    Stuart L. Lyon, Louisville, Ky., on brief, for petitioner-appellant.
    Guy C. Shearer, Asst. Atty. Gen., for respondent-appellee; Ed W. Hancock, Atty. Gen., Frankfort, Ky., on brief.
    Before CELEBREZZE, McCREE and ENGEL, Circuit Judges.
   PER CURIAM.

Petitioner James H. Berry was sentenced to 20 years in prison and fined $20,000 upon his conviction by a jury in the Circuit Court for Jefferson County, Kentucky, on a charge of sale of heroin. Berry appeals the denial of his petition for writ of habeas corpus which alleged that he was deprived of his right to the effective assistance of counsel under the Sixth and Fourteenth Amendments to the United States Constitution.

Upon his conviction, a direct appeal was taken to the Court of Appeals of Kentucky by counsel appointed for that purpose. One of the issues raised on the appeal was whether a claimed last minute substitution of trial counsel for defendant Berry deprived him of his constitutional right to the effective assistance of counsel. The Court of Appeals of Kentucky thereupon remanded the case to the Jefferson Circuit Court for the purpose of making a finding of the facts concerning Berry’s representation.

An examination of the files and records shows the basis for the uncertainty which produced the remand. Berry was originally charged with sale of heroin in an indictment returned on April 30, 1971 and thereafter, apparently in May, he retained private counsel to represent him. That counsel, Mr. Hubert Hevey, did very little in the way of preparation of Berry’s defense and was, in fact, ill and died in the fall of 1971. On January 17, 1972 Berry was brought before Jefferson County Circuit Judge John P. Hayes and because the death of retained counsel left Berry without representation, Judge Hayes appointed Mr. Gary Lorenz of the law firm of Eu-banks, Gardner and Schaefer to represent him. Jury trial was set for February 8, 1972. Upon that date, Lorenz did not appear, but instead a member of the latter’s firm, Mr. John E. Taylor, appeared and defended the case on behalf of Berry.

The Court of Appeals of Kentucky, in remanding the case for hearing, noted these apparent inconsistencies and made the following analysis:

“The answer to the question of alleged inadequacy of counsel depends, we think, on whether Lorenz was an appointed counsel for whom Taylor was a last-second, unprepared substitute, or whether the firm of Eubanks, Gardner & Schaefer was employed by appellant and Taylor, as an associate of that firm, was designated by that firm, a reasonable time before trial, to handle the case, and was prepared to try it. This requires a finding of fact by the trial court.
“The case is remanded to the trial court for the purpose of making a finding of fact on the issue herein-above stated, and certifying that finding to this court. . . . ”

In compliance with the directions of the Court of Appeals, Circuit Judge Hayes thereafter held an evidentiary hearing. His findings of fact set forth in detail the circumstances of Berry’s representation, at least from the time he was brought before Judge Hayes on January 17, 1972. In brief, Judge Hayes found as a matter of fact that he had appointed attorney Lorenz to represent Berry on February 8. He further found that Mr. Lorenz had conferred with Berry at the Kentucky State Reformatory prior to trial, and he found that Berry had told Lorenz that he would arrange to have witnesses present and that it would not be necessary for Lorenz to subpoena them. Judge Hayes found that when a conflict in schedule developed, Mr. Lorenz conferred with Mr. Taylor, a member of his law firm, prepared him on all the facts and supplied him with the notes which he had taken. Judge Hayes determined that Taylor, was, therefore, “as well prepared to try the case as Mr. Lorenz would have been.” He further found that Mr. Taylor actually represented Berry at the trial on February 8, that Taylor had reviewed the file one or two weeks prior to trial, had talked to Lorenz prior to the trial, and had otherwise familiarized himself with the case. Mr. Taylor interviewed all of the witnesses present, and when plea bargaining failed, proceeded to defend Berry before the jury. Judge Hayes made the following further observations :

“Although Mr. Taylor tried the ease instead of Mr. Lorenz, he was not a last second, unprepared substitute. On the contary Mr. Taylor was an associate member of Mr. Lorenz’s law firm, designated to handle the case a reasonable time before the trial date, and was prepared to try the ease on the date of trial.
“Finally and most important from the entire record, it is evident that appellant had a fair trial and was adequately represented by competent counsel, and I find nothing in the proceedings to dictate a contrary conclusion.”

In his appeal, Berry, in effect, asks us to disregard the factual findings of the state trial judge and, upon the same record, accept his own version of the facts. It is manifest from an examination of the record that the evidentiary hearing held by Judge Hayes met all of the requisites of 28 U.S.C. § 2254(d) and that his findings, as certified to the Court of Appeals of Kentucky, are fairly supported by the record as a whole. Under such circumstances, we conceive that the federal courts must accept the relevant historical facts as reliably found by the state court, at least until the petitioner has succeeded in establishing by convincing evidence that those determinations are erroneous. See LaVallee v. Delle Rose, 410 U.S. 690, 93 S.Ct. 1203, 35 L.Ed.2d 637 (1973), where the district court’s refusal to apply this measure of respect for state court determinations brought about reversal. Thus, when it appeared that a full and fair hearing on the issue had been held in the state trial court, the district judge could properly rely on the record made and was not required to hold a de novo evidentiary hearing. Townsend v. Sain, 372 U.S. 293, 83 S.Ct. 745, 9 L.Ed.2d 770 (1963).

The Court of Appeals of Kentucky affirmed Berry’s conviction after considering the facts as found on remand by Judge Hayes, stating:

“This court is committed to the proposition that in order to vacate a judgment of conviction in a criminal case on the ground of inadequate representation by counsel, the court must find that the circumstances of the representation were such as to shock the conscience of the court and to render the proceedings a farce and a mockery of justice. Wahl v. Commonwealth, Ky., 396 S.W.2d 774; Rice v. Davis, Ky., 366 S.W.2d 153. We do not so evaluate the circumstances of the representation in the instant case.
“It appears that the only defense available to Berry was an alibi. That defense was adequately presented and the trial was fairly conducted. While it was improper for Lorenz, the court appointed-counsel, to delegate the handling of the case to Taylor, and while such delegation should not have been permitted by the court, the delegation did not result in inadequacy of representation under the standard above stated.” Berry v. Commonwealth, 490 S.W.2d 741, 744 (Ky.1973).

We note that the Court of Appeals of Kentucky, in holding that “The court must find that the circumstances of the representation were such as to shock the conscience of the court and to render the proceedings a farce and mockery of justice”, applied standards which this circuit has recently expressly rejected as measures of the effectiveness of counsel under the Sixth Amendment. In Beasley v. United States, 491 F.2d 687 (decided and filed February 1, 1974), we held that the farce and mockery test should be abandoned as any meaningful standard in this circuit, and that “The assistance of counsel required under the Sixth Amendment is counsel reasonably likely to render and rendering reasonably effective assistance”.

While the Court of Appeals of Kentucky employed the now rejected standard, we do not for that reason believe that reversal or remand is called for under the circumstances here. The facts as found by the state court demonstrate that the proper constitutional standard was met. Further, we note that while applying the now abandoned test, the Court of Appeals of Kentucky affirmatively found that the only defense of alibi was adequately presented and that the trial was fairly conducted. Since we conclude that the conduct of counsel met the proper constitutional test, it is immaterial in our judgment that that conduct may also have met the test which is now abandoned.

Petitioner in his appeal also challenges the validity of his sentence in light of Tate v. Short, 401 U.S. 395, 91 S.Ct. 668, 28 L.Ed.2d 130 (1971). Berry has failed to exhaust his state remedies on this issue and we therefore decline to consider it here.

Affirmed.


author: THOMSEN, District Judge:

text:
    Lloyd SHELDON et al., Plaintiffs-Appellants, v. Thomas F. O’CALLAGHAN, as President, et al., Defendant-Appellee.
    Cal. No. 841, Docket 73-1744.
    United States Court of Appeals, Second Circuit.
    Argued April 11, 1974.
    Decided May 28, 1974.

      Burton H. Hall, New York City, for plaintiffs-appellants.
    Marvin Schwartz, New York City, for defendant-appellee.
    Before FRIENDLY and TIMBERS, Circuit Judges, and THOMSEN, District Judge.

       Of the District of Maryland, sitting by designation.

      . § 101(a)(1) provides: "Equal rights. — Every member of a labor organization shall have equal rights and privileges within sucli organization to nominate candidates, to vote in elections or referendums of the labor organization, to attend membership meetings, and to participate in the deliberations and voting upon the business of such meetings, subject to reasonable rules and regulations in such organization’s constitution and bylaws.”
      § 101(a)(3) provides that dues shall not be increased except:

        “* * *
      “(B) in the case of a labor organization, other than a local labor organization or a federation of national or international labor organizations, (i) by majority vote of the delegates voting at a regular convention, or at a special convention of such labor organization held upon not less than thirty days’ written notice to the principal office of each local or constituent labor organization entitled to such notice, or (ii) by majority vote of the members in good •standing of such labor organization voting in a membership referendum conducted by secret ballot, or (iii) by majority vote of the members of the executive board or similar governing body of such labor organization, pursuant to express authority contained in the constitution and bylaws of such labor organization: Provided, That such action on the part of the executive board or similar governing body shall be effective only until the next regular convention of such labor organization.”

   THOMSEN, District Judge:

Plaintiffs, members of the International Organization of Masters, Mates and Pilots, AFL-CIO (the union), brought this action in the district court against the three International officers of the union for an injunction preventing a new union constitution from becoming effective. They appeal from an adverse judgment entered at the close of plaintiffs’ case.

Plaintiffs argued below and argue here that defendants, as officers of the union, infringed the rights of plaintiffs and other members of the union under § 101 of the Labor-Management Reporting and Disclosure Act of 1959, 29 U.S.C. § 411, and under the old constitution of the union, (1) by not permitting separate votes on the various provisions of the new constitution, which included an increase in dues and an enlargement of the powers of the defendant officers, but requiring a single “yes” or “no” vote on the adoption of the new constitution; and (2) by publishing allegedly misleading information about the new constitution and refusing to permit plaintiffs either (a) to state their objections to the new constitution in the union newspaper, or (b) to have access to the union’s mailing list or to have the list made available to a mailing service selected by defendants, so that plaintiffs could transmit their views to the other members of the union before or during the voting period.

The stipulated facts and other evidence show that before 1968 the union consisted of largely autonomous local unions, although its collective bargaining agreements were negotiated on an industry-wide basis. In response to suggestions to eliminate the local unions and consolidate their powers and responsibilities into divisions which corresponded to the bargaining patterns in the industry (i. e., offshore, inland, governmental employees and pilots), plaintiff Sheldon, who was then International President, appointed a Constitutional Advisory Committee. That committee prepared proposals for restructuring the union, including a proposal to consolidate the local unions into divisions. Those proposals were published in the March 1968 issue of the union newspaper, which is mailed to each member’s home address, to the ships on which members are employed, to each local union, and to recreation centers overseas.

The committee’s proposals were put before the International convention held in May 1968. The convention decided to hold an advisory referendum of the entire membership on the issue of restructuring the union through consolidation of locals into divisions. The advisory referendum approved the principle of restructuring and consolidation by a vote of about five to two.

In December 1968 the International Executive Board voted to convene a special constitutional convention to be held in September 1969. The result of the advisory referendum and the decision to convene a constitutional convention were reported in the January 1969 issue of the union newspaper. The constitutional convention met in September 1969. It proposed certain constitutional amendments and a description of a proposed structure for an Offshore Division and other divisions. These proposals were published in the October 1969 issue of the union newspaper.

The convention reconvened on January 26, 1970, to consider a draft of a proposed new constitution, which contained a variety of amendments to the then-existing constitution. It “consolidated” all local unions of the sea-going members, who comprise some 8,000 of the union’s total membership of 10,000, into a nationwide Offshore Division, and created other nation-wide divisions for non-seagoing members. It changed the union’s dues structure in various ways and increased the rates of dues payable by more than half of the union’s members. It raised the salaries of the two top International officers, and provided for a new, $35,000 salary for a third, previously unsalaried International officer. It greatly increased the power of the three International officers by providing that those three officers were to become the three top officers of each division, including the Offshore Division, and by virtue of being the three top officers of the Offshore Division would be able to cast one-half of the weighted vote of the Offshore Division on the General Executive Board of the union.

The pre-existing constitution provided that it might be amended by a two-step procedure: approval at a convention and, thereafter, approval by the membership in a referendum.

At the session of the constitutional convention on January 31, 1970, a delegate raised a point of information as to whether the separate provisions of the “new” constitution would be voted upon seriatim or separately; the Chairman (defendant O’Callaghan, the International President) ruled that the entire document would be voted upon as a single package. The proposed constitution was put to a vote at the convention and was approved by a more than two-thirds vote.

During the convention, the International President announced that a committee composed of the executive officers (or their designees) of each offshore local would meet after the close of the convention for the preparation of Offshore Division by-laws. After the convention had dissolved, that committee met and drafted a set of by-laws for the Offshore Division.

During February 1970 a copy of the proposed constitution was sent to the executive officer of each local union and a mimeographed copy of the proposed Offshore Division by-laws was sent to the executive officer of each offshore local. The referendum was to be conducted by mail, over a three month period beginning in March 1970 and ending in June 1970. All members were to vote on the adoption of the proposed constitution; all offshore members were to vote on the adoption of the proposed Offshore Division by-laws.

One of the provisions of the proposed constitution was widely publicized by defendants before and during the referendum ; that was the provision which would consolidate all sea-going local unions into one division — a popular proposal.

On February 23, 1970, the three International officers sent a letter to each member of the union summarizing what they described as the “high points” of the proposed constitution and urging its adoption. The March 9, 1970 issue of the union newspaper published the text of the proposed new constitution in full, and reprinted the February 23 letter of the International officers.

Shortly after receiving the February 23 letter plaintiffs, individually and as members of a committee elected by Local 88 to oppose the new constitution, asked for an opportunity to express their views to the membership of the union, either by space in the union newspaper, by use of the union’s mailing list, or through an independent mailing service designated by the International office, at the cost of the plaintiffs. Their requests were ignored or denied. On the other hand, defendants repeatedly published material favoring the new constitution. In addition to reprinting the February 23 letter on the back page of the March 1970 issue of the union newspaper, the International officers published, in the two issues of the paper which appeared during the referendum period, a substantial amount of material advocating approval.

A ballot containing spaces for a “yes” or “no” vote on the proposed new constitution was sent to each member of the union, together with a booklet containing the text of the proposed constitution. Each offshore member also received a second booklet, containing the text of the proposed Offshore Division by-laws, on which their ballots called for “yes” or “no” votes.

The ballots were counted in June 1970. The new constitution was approved by a vote of 2,781 for and 2,602 against; the Offshore Division by-laws were approved by a vote of 2,206 for and 2,113 against. The new constitution and Offshore Division by-laws went into effect after plaintiffs filed this action.

(1) Plaintiffs’ first argument is that the defendants infringed their rights and the rights of other members of the union under § 101(a)(1) and (3) of the LMRDA, 29 U.S.C. § 411(a)(1) and (3), and under the old constitution, by not permitting separate votes on the various provisions of the new constitution; particularly, they object to not having been able to vote on the dues increase and the enlarged powers of the International officers separately from the consolidation of the local unions, which plaintiffs and most union members favored.

Plaintiffs rely on Sertic v. Cuyahoga, Lake, Geauga & Ashtabula Cos., C. D. C., 423 F.2d 515 (6 Cir. 1970), where the court held that a referendum that resulted in an increase in dues, in which the ballot gave a member no opportunity to vote against such increase without also voting against negotiations for a wage increase, was a violation of the LMRDA. The Sixth Circuit stated that free participation in union government “necessarily would include the right to vote ‘yes’ or ‘no’ on increases of dues or assessments without coercion. * * * Union members are entitled under the Act to the right of a meaningful vote on increases in dues or assessments”, (p. 521). We do not disagree with the principles stated in Sertic, but we conclude that those principles did not require the union in the instant case to submit for a separate vote each of the many interrelated provisions of the proposed new constitution. The adoption of some of those provisions and the rejection of others might have resulted in an unworkable document, and thrown the operation of the union into confusion.

Nor is there any merit in plaintiffs’ contention that the old constitution required a separate vote on the various provisions of the proposed new constitution which differed from the provisions of the old.

(2) Plaintiffs also argue that defendants deprived them of their rights under § 101(a)(1) of LMRDA, 29 U.S.C. 411(a)(1), and under the old constitution of the union, by publishing misleading information about the new constitution and refusing plaintiffs’ repeated requests for permission either to state their objections to the new constitution in the union newspaper, or to have access to the union’s mailing list, or to have the list made available to a mailing service selected by defendants, so that plaintiffs could transmit their views to the other members of the union before or during the voting period.

The purpose of the LMRDA was stated by Chief Judge Lumbard in Navarro v. Gannon, 385 F.2d 512, 518 (2 Cir. 1967), as follows:

“The LMRDA was enacted with the clear purpose of assuring ‘the full and active participation by the rank and file in the affairs of the union.’ American Federation of Musicians v. Wittstein, 379 U.S. 171, 182-183, 85 S.Ct. 300, 307, 13 L.Ed.2d 214 (1964). The Congress by passing a ‘Bill of Rights’ for union members determined that the efficiency of a monolithic union under autocratic rule was gained at too great a price if it necessitated any sacrifice in the members’ rights to determine the course of their organization. The balance was struck in favor of union democracy. Only a union responsive to the rights of all its members can achieve the ideals of responsibility, opportunity and self-determination that are recognized as fundamental values in the labor movement.”

In Schuchardt v. Millwrights & Mach. Erectors Loc. U. No. 2834, 380 F.2d 795, 797 (10 Cir. 1967), the court said: “The basic purpose of the ‘bill of rights’ * * * is to assure to union members a basically democratic union organization with the concomitant protections against arbitrary and despotic control by union leaders.” As Professor Cox put it: “An individual worker gains no human rights by substituting an autocratic union officialdom for the tyranny of the boss. Only a democratic union, sensitive to the rights of minorities, can help men to achieve the ideals of individual responsibility, equality of opportunity, and self-determination.”

On the other hand, the provisions of the LMRDA were not intended to constitute an open invitation to the courts to intervene in the internal affairs of a union. See Gurton v. Arons, 339 F.2d 371, 375 (2 Cir. 1964).

Former Representative, now Senator Griffin recently wrote: “Congress sought to strike a balance between rights for individual members and the recognized institutional requiements necessary for a union to be an effective bargaining force.”

This court recognizes the need to exercise what Judge Wisdom referred to as a “sound reluctance * * * to interfere in internal union affairs”. Allen v. International Alliance of Theatrical, etc., 338 F.2d 309, 317 (5 Cir. 1964). However, the court also recognizes its duty to protect the fundamental rights of individual members against “arbitrary and despotic control by union leaders”. Schuchardt v. Millwrights & Mach. Erectors Loc. U. No. 2834, supra.

Plaintiffs complain because defendant officers emphasized popular features of the proposed constitution while ignoring or playing down other features which would have been' unpopular with many of the members. The duly elected officers of a union have a right and a responsibility to lead, and to give the members the benefit of their advice on questions that arise. They have a right to use the union publications to express their views, and are not ordinarily required to give space therein to the expression of contrary views, provided they do not interfere improperly with whatever rights members may have to communicate their views to other members.

The new constitution contains a provision that:

“h) Every member shall have the right to:
“1) Circulate petitions on union policy.
“2) Publish and distribute leaflets, newspapers and all other written material or present his opinions through other media. * * * ”

The old constitution contained no similar provision, but that does not end the matter.

The old constitution provided for a referendum in which all members in good standing were eligible to vote. The International officers had a duty under the LMRDA to conduct a fair referendum, and that obligation should be enforced by the courts. No special expertise in union affairs is required; for more than a hundred years courts have been dealing with similar rights of members of unincorporated associations. See Chaffee, The Internal Affairs of Associations Not for Profit, 43 Harv.L.Rev. 993 (1930); Developments in the Law: Judicial Control of Actions of Private Associations, 76 Harv.L.Rev. 985 (1963).

The majority rule concept is at the center of our federal labor policy. Because of that policy the Supreme Court has found it necessary to fashion the duty of fair representation. For the same reason Congress enacted a code of fairness to assure democratic conduct of union affairs. NLRB v. Allis-Chalmers Mfg. Co., 388 U.S. 175, 180, 87 S.Ct. 2001, 18 L.Ed.2d 1123 (1967).

A fair referendum under the facts of this case included the right of members whose views were opposed to defendants’ to have an opportunity to present their views to other members of the union. This was particularly true in the case of plaintiffs, who were members of a committee appointed by a large local to present the views of that local to other members of the union.

We do not hold that defendants were required to give plaintiffs space in the union newspaper to present their views. Whether plaintiffs were entitled to a list of the membership is a more troublesome question, since there are reasons why a union may not wish to take the risk of its membership list falling into the wrong hands. It is not necessary to decide that question in this case, because plaintiffs made an alternative proposition, namely, to pay the expenses of having their views sent to the other members of the union through a mailing service selected by defendants.

We conclude that, on the evidence as it stood at the time defendants’ motion to dismiss was granted, the LMRDA, interpreted in the light of established legal principles, required defendants to make the list of members of the union available to a mailing service chosen by-defendants so that plaintiffs could send a letter to all members expressing their views and the view of their local on the issues involved in the referendum.

Defendants state, however, that if their motion to dismiss had not been granted, they would have presented evidence that a newspaper published by plaintiffs’ local union was widely distributed among the union membership, and that plaintiffs’ views were in fact being disseminated.

The judgment must be reversed, and the case remanded for further proceedings consistent with this opinion.

      . Sheldon was thereafter defeated in his bid for reelection by the current President, defendant Thomas F. O’Callaghan.

      . The letter referred not only to the consolidation of local unions, but to at least seventeen other provisions in the new constitution. These included sucli matters as “Closing of membership rolls until a reasonable membership/job relationship exists”, liberalization of qualification for elective office, annual conventions, reduction in terms of elective office, disciplinary procedural changes, recall of officers, and obtaining a national pension and welfare plan. On the question of a dues increase, the letter stated: “The dues for the Offshore Division calls for an increase. Inland dues remain the same. For the past several years the initiation fees have paid over thirty-five percent of the International expenses. Income from initiations will cease until the membership/job ratio is realized. The necessity of a dues increase is obvious.”
      Neither the letter of February 23 nor any other letter to the membership nor any issue of the union newspaper contained any discussion of the proposal to make the three International officers automatically the three top officers of all divisions, or of the proposal to give the three International officers half the weighted vote on the General Executive Board of the Offshore Division. Nor did the union, or any of its officers, publish any statement or article by any opponent of the proposed constitution.

      . The district court found: “The Union, and particularly the Convention delegates responsible for drafting the new Constitution to be submitted to the membership, could reasonably have concluded that the dues increase for offshore members was related to the restructuring and consolidation of the Union provided for in the new Constitution, including the limitation on new members.”

      . Cox, The Role of Law in Preserving Union Democracy, 72 Harv.L.Rev. 610 (1959).

      . Griffin, The Landrum-Griffin Act: Twelve Years of Experience in Protecting Employee Rights, 5 Ga. Law Rev. 622 (1971).

      . Plaintiffs also sent copies of the proposed constitution to all members and copies of the proposed Offshore Division by-laws to all offshore members. The union was composed of persons who were sufficiently well educated to serve as masters, mates and pilots, and who presumably could read and understand those documents.

      . The California courts have held that apart from the LMRDA, the members of a union have a right to inspect the union’s books and records for a proper purpose, and one California court lias indicated that this rule applies to lists of members. See Mooney v. Bartenders Union Local No. 284, 48 Cal.2d 841, 313 P.2d 857, 64 A.L.R.2d 1154 (1957); Hod Carriers Local 89 v. Young, 42 L.C. 61,641 (Cal.Super.Ct., San Diego, 1961). Labor’s Bill of Rights was not intended to narrow the rights of union members.

      . Neither Calhoon v. Harvey, 379 U.S. 134, 85 S.Ct. 292, 13 L.Ed.2d 190 (1964), nor Robins v. Rarback, 325 F.2d 929 (2 Cir. 1963), cert. denied, 379 U.S. 974, 85 S.Ct. 670, 13 L.Ed.2d 565 (1965), is directly applicable to this ease, since they involved union elections rather than referendums. Title IV of the LMRDA provides detailed procedural safeguards for union elections, and the Calhoon Court held that the exclusive remedy for protecting those election rights was through a post-election suit by the Secretary of Labor. Of course, those cases and Gurton v. Arons, 339 F.2d 371 (2 Cir. 1964), a referendum case, strongly suggest that courts should be reluctant to interfere with internal union affairs absent specific statutory license. In this case, however, the defendant union officials’ stiff-necked refusal even to provide their opponents access to the membership mailing list rendered the referendum procedure so patently unfair that their conduct can fairly be deemed “a denial of the [members’] equal right to vote in elections or referendums,” Gurton v. Arons, supra, 339 F.2d at 374.


author: FRIENDLY, Circuit Judge:

text:
    The GENERAL TIRE & RUBBER COMPANY, Plaintiff-Appellant, v. JEFFERSON CHEMICAL COMPANY, INC., Defendant-Appellee.
    No. 909, Docket 74-1050.
    United States Court of Appeals, Second Circuit.
    Argued April 11, 1974.
    Decided May 28, 1974.

      John T. Kelton, New York City (Herbert Blecker, Robert E. Kosinski, and Watson, Leavenworth, Kelton & Taggart, New York City, Frank C. Rote, Akron, Ohio, of counsel), for plaintiff-appellant.
    James R. Sweeney, Chicago, 111. (David H. T. Kane, and Kane, Dalsimer, Kane, Sullivan & Kurucz, New York City, J. Robert Stapleton, Louis A. Hecht and Coffee & Sweeney, Chicago, 111., Carl G. Ries, Houston, Tex., of counsel), for defendant-appellee.
    Before FRIENDLY and TIMBERS, Circuit Judges, and THOMSEN, District Judge.

       Of the District Court for the District of Maryland, sitting by designation.

   FRIENDLY, Circuit Judge:

This patent appeal is another illustration of the absurdity of requiring the decision of such cases to be made by judges whose knowledge of the relevant technology derives primarily, or even solely, from explanations by counsel and who, unlike the judges of the Court of Customs and Patent Appeals, do not have access to a scientifically knowledgeable staff.

The case is unusual in several respects. The chemical patent in suit, Heiss Patent No. 3,102,875, of which defendant Jefferson Chemical Company, Inc. (Jefferson) is the assignee, was pending in the Patent Office for more than ten years — from August 7, 1953 to September 3, 1963. During that period there had issued, after a mere five years of processing, Price Patent No. 2,866,774, of which plaintiff The General Tire & Rubber Company (General) is the assignee, for what at least for present purposes may be considered, cf. p. 1287 & n. 12 infra, to be the very invention here contended to have been made by Heiss. The claims allowed and held to be valid were copied, except in one particular hereinafter noted, by Heiss’ solicitors from the Price patent, in the first instance so as to provoke an interference; as will later appear, there is no convincing evidence that Heiss was aware of the invention now asserted until the Price patent was published. Jefferson says that all this is immaterial, except perhaps for Heiss’ unawareness of what he had done which it feebly challenges, and responds with a tu quoque, namely, that General, which now claims the Heiss patent was invalid for anticipation and obviousness, has collected huge royalties on the Price patent, now shortly to expire, to which many of its arguments of invalidity would be equally applicable. With this background, we briefly state the case, referring to Judge Carter’s opinion in the District Court for the Southern District of New York, 363 F.Supp. 871 (S.D.N.Y.1973), for an ampler development.

The action was brought by General for a declaration of the invalidity of certain claims of the Heiss patent on various grounds, of which we need consider only § 102(e) [anticipation], § 102(f) [patentee not the inventor], § 103 [obviousness], and § 112 [inadequate disclosure], Jefferson counterclaimed for a judgment of validity and infringement. General conceded infringement if the challenged claims were valid. Judge Carter held that they were and directed an injunction and an accounting.

I.

Heiss’ alleged invention concerns polyurethanes. Such products are made by mixing a polyol, i. e., an alcohol with molecules containing more than one hydroxyl group, with an isocyanate, an organic compound containing an NCO group (nitrogen, carbon and oxygen) in its molecule. To insure the presence of enough NCO groups for the complete reaction, an excess of isocyanate is added. The polyurethanes claimed in the Heiss patent — both by direct claims to the products and by claims to the processes of their manufacture — are extensively used for foam matresses, seat cushions, insulation, adhesives and protective eoatings. The parties agree that we may take as representative Claim 3 of the Heiss patent which reads:

3. The reaction product of
(1) a condensate of propylene oxide and a polyhydric alcohol having from 3 to 4 hydroxyl groups, and
(2) an organic poly isocyanate,
the amount of (2) being in excess of that theoretically required to react with the reactive hydrogens of said condensate.

The foundation of the polyurethane industry was laid in Germany in the 1930’s and 1940’s as a result of the researches of Dr. Otto Bayer, who taught cross linkage by use of diisocyanates so as to improve the durability of polyurethane products; see fns. 7 and 8. An extensive article entitled “Industrial Application of the ‘Diisocyanates’ ” appeared in a German chemical journal in 1947. However, Dr. Bayer’s alcohol components were esters, the result of reacting an alcohol with an organic acid, and, as found by the district court, 363 F.Supp. at 878, “polyester urethanes were subject to destruction by hydrolysis.” Continued work on the problem by Dr. Bayer and his associates resulted in the Windemuth patent No. 2,948,691, which was applied for on May 6, 1952 and was granted on August 9, I960. The Windemuth patent involved the mixing of isocyanates with ethers, the result of reacting an alcohol with an alkylene oxide, rather than with esters, as Bayer had previously done. The specifications disclosed that “the reaction of polyglyeolethers and aromatic or aliphatic monoisocyanates — depending on the molecular weight of the polyglycolether and the nature and quantity of the isocyanate — gives rise to products which are either insoluble in water, however, soluble in organic solvents or which dissolve in cold water but not in hot water.” They stated also that “Products of considerable importance are obtained by reacting polyfunctional polyglycolethers and polyfunetional isocyanates in quantities larger than those required for saturating the hydroxyl groups present.” Claim 2 of the Windemuth patent was for:

2. A process for making polymers which comprises reacting a polyalkylene ether of a saturated aliphatic hydrocarbon polyol, said polyalkylene ether having at least two hydroxyl groups per molecule and a molecular weight of at least about 500, and an organic isocyanate containing only hydrocarbon radicals and NCO.

Claim 6 was for:

6. The process of claim 2 wherein the reaction mixture contains an excess of said isocyanate over that required to react with all of said hydroxyl groups.

The district court correctly characterized the advances made by the Windemuth patent as follows:

Its great advance over prior teaching was in the making of polyether (as opposed to polyester) based urethanes. Ethers are sensitive to hydrolysis but are not destroyed by water, as are esters. Moreover, here the diisocyanate ingredient necessary for cross linkage is not required in such large quantities so that the resultant product is less expensive to produce.

363 F.Supp. at 878. Admittedly Claim 6 of Windemuth includes Heiss’ claims; the only relevant difference is that Heiss, copying from the Price patent, singled out as a condensant propylene oxide, whereas Windemuth used for the condensate the generic term “polyalkylene ether”, which also included ethylene oxide as a condensant.

The specifications in Heiss’ application, which were substantially the same as in the patent as issued, describe the invention as relating “to a new series of resins, compositions of matter containing same and to the method of preparing such products.” They list a great variety of “suitable hydroxy compounds for use in the production of organic compounds containing urethane groups,” among which polypropylene glycols are only one, and an equally large array of suitable isocyanates. All claims were rejected as unpatentable over various cited references, not including the Windemuth patent which had not yet issued. Three amendments met the same fate.

While a fourth amendment was pending, Patent No. 2,866,774 was issued on December 30, 1958, to Dr. Charles C. Price. This described an invention relating “to rubbery reaction products of organic di-isocyanates and high molecular weight polyglycols which have unusual physical characteristics.” The specifications referred to the difficulties that had been encountered with polyesters due to their tendency to hydrolysis, the preferability of polyethers from this standpoint, and certain problems that had been encountered with them. Price said he had found “that polymeric materials built with alkylene oxide units having at least three carbon atoms, such as propylene oxide units, are far superior to those built with ethylene oxide units because the resultant rubbery product has improved water resistance and has less tendency to crystallize.” Reading of the Price patent by Heiss’ solicitor led to a fifth and then a sixth amendment of the Heiss application in which certain claims of the Price patent were copied in order to provoke an interference. After proceedings which are set forth in the district court's opinion, 363 F.Supp. at 876-877, and are here unnecessary to detail, the Board of Interference decided in favor of Price. This, however, was not on the ground of prior conception and reduction to practice but on the basis that his patent was dependent on a molecular weight for the condensate of at least 600 whereas the Heiss claims had no such limitation. Thereafter, through the mysterious processes of the Patent Office, the Heiss patent issued on the claims limited to propylene oxide essentially as copied from Price, but without limitation concerning molecular weights and with Windemuth cited as prior art.

II.

The arguments take us back to a territory we reconnoitered not long ago in Carter-Wallace, Inc. v. Otte, 474 F.2d 529 (2 Cir. 1972), cert. denied, 412 U.S. 929, 93 S.Ct. 2753, 37 L.Ed.2d 156 (1973). Indeed, General contends that the Carter-Wallace decision, where we held the patent for meprobamate (“Miltown”) was invalid because the application did not adequately disclose the effectiveness of Miltown as a tranquilizer and because its utility as an anti-eonvulsant was obvious, is controlling in its favor. Putting aside for a moment the question of obviousness in the instant case, we would find it somewhat bizarre that a 17-year monopoly can be gained by copying claims from a patent issued to another half way during the ten-year life of an application in the Patent Office, when nothing in the specifications, then or even later, disclosed that Heiss had any idea that use of propylene oxide-to condense the polyol would yield superior results. However, we prefer to place decision on the closely related grounds that the Heiss patent is invalid under § 103 (without reliance on Carter-Wallace) and, to the degree necessary to supplement this, § 102(f).

As has recently been written,

Perhaps no area of patent law is more uncertain than that concerning the application of the section 103 test of “nonobviousness” contained in the Patent Act of 1952 to chemical compounds which are conceded to meet the other two patentability requirements of “novelty” and “usefulness.”

(Footnotes omitted). Note, Standards of Obviousness and the Patentability of Chemical Compounds, 87 Harv.L.Rev. 607 (1974). Conflicting views have been expressed on the question whether a compound which is structurally obvious on the basis of the prior art is patentable as a composition of matter because it is discovered to have an unexpected useful property. In re Papesch, 315 F.2d 381, 50 CCPA 1084 (1963), and Commissioner of Patents v. Deutsche Gold-und-Silber-Scheideanstalt Yormals Roessler, 130 U.S.App.D.C. 95, 397 F.2d 656 (1968) (Burger, J.), are the leading authorities answering that question in the affirmative. Mansanto Co. v. Rohm & Haas Co., 312 F.Supp. 778 (E.D.Pa.1970), aff’d on other grounds, 456 F.2d 592 (3 Cir.), cert. denied, 407 U.S. 934, 92 S.Ct. 2463, 32 L.Ed.2d 817 (1972), and even more forcefully the district court’s decision in Carter-Wallace, supra, 341 F.Supp. 1303 (E.D.N.Y.), argue that in such cases only a use patent should be available. Here, as in Carter- Wallace, we find it unnecessary to choose between the two polar views. Assuming without deciding that some variation of Papesch and Deutsche Gold-und-Silber-Scheideanstalt represents the correct view, as we did in Carter-Wallace, we think Heiss’ claim must fail.

Before going further, it is desirable to state and justify our conclusion that the Windemuth patent is prior art. Although Jefferson claims the district court left this issue open, Judge Carter’s opinion clearly held Windemuth to be prior art, over a contrary contention by Jefferson which was based on Heiss’ allegedly having conceived his own invention and allegedly having reduced to practice the teaching of the Windemuth patent before the Windemuth application was filed, 363 F.Supp. at 878 n. 12. The ground for the court’s ruling was that Heiss had made no' such claim before the Patent Office. We are not at all certain we agree with that reasoning, for which no authority was cited; General’s attempt to support it by analogy with the doctrine of file-wrapper estoppel, Leggett v. Avery, 101 U.S. 256, 25 L.Ed. 865 (1880); Goodyear Dental Vulcanite Co. v. Davis, 102 U.S. 222, 228, 26 L.Ed. 149 (1880); Keith v. Charles E. Hires Co., 116 F.2d 46 (2 Cir. 1940), is unpersuasive. But Judge Carter’s conclusion was correct. The Rules of Practice of the Patent Office, 35 U.S.C.App. I, 37 C.F.R. § 1.131(b), provide that in order to avoid a United States patent application cited as prior art, § 102(e), “The showing of facts shall be such, in character and weight, as to establish reduction to practice prior to the effective date of the reference, or conception of the invention prior to the effective date of the reference coupled with due diligence from said date to a subsequent reduction to practice or to the filing of the application.’’ The Rule accords with the decision in Marconi Wireless Telegraph Co. v. United States, 320 U.S. 1, 35, 63 S.Ct. 1393, 1410, 87 L.Ed. 1731 (1943), in the context of an anticipation defense to an infringement action, that, in order for the alleged prior art to antedate the invention at issue on the strength of the conception date of the prior art, the artisan must have “proceed [ed] with diligence to reduce it to practice,” cf. 35 U.S.C. § 102(g). See also Scharmann v. Kassel, 179 F.2d 991, 996, 37 CCPA 903 (1950); Riche v. Permutit Co., 47 F.Supp. 275, 278 (D.Del.1942), aff’d per curiam, 135 F.2d 922 (3 Cir. 1943) (both standing for similar rule of law in context of interference proceedings). Jefferson made no showing, nor did it apparently appreciate the need to attempt a showing, of diligence. Although Heiss claimed a conception date of November 14, 1951, and although the date of Windemuth’s U.S. application is May 6, 1952, Heiss does not assert reduction of the claimed invention to practice until September 1952.

It is not seriously contested by Jefferson that, with the Windemuth patent as prior art, the use of propylene rather than ethylene oxide as the condensant was structurally obvious “to a person having ordinary skill in the art to which said subject matter pertains,” 35 U.S.C. § 103. General goes even further and contends with much force that such use not merely was structurally obvious but was actually described in Windemuth since that patent refers to “alkylene oxides,” a term including propylene as well as ethylene oxide — these being the two most prominent alkylene oxides. But even if we were to reject that argument in light of the stress that Windemuth placed on ethylene oxide, whose formula is C3H6O, it is still true that propylene oxide, whose formula is CsHeO, is the next higher homolog. If any structural change is obvious to one skilled in the art, a substitution of the next higher homolog would seem to be. In re Hass, 141 F.2d 122, 31 CCPA 895 (1944), In re Coes, 173 F.2d 1012, 36 CCPA 1067 (1949), and In re Henze, 181 F.2d 196, 37 CCPA 1009 (1950), although sharply criticized in various other respects over the years and indeed no longer good law in some, see, e. g., In re Stemniski, 444 F.2d 581, 58 CCPA 1410 (1971), tend strongly in that direction as to end products, and we see no reason for taking a different view with respect to as crucial a component as that here involved.

However, under the Papesch/Deutsche Gold-und-Silber-Scheideanstalt test, this is not fatal to the validity of the Heiss patent if the substitution of propylene fpr ethylene oxide developed a property unexpected to one with ordinary skill in the art and if all other conditions were met. It is true, as the district judge held, that Windemuth and his associates had not recognized the superior water resistant effects from using propylene oxide as the condensant, and both Jefferson and the district judge make much of a speech by Dr. Price in February 1961, How Chemists Create a New Product, emphasizing this and extolling his own discovery of the superiority of propylene oxide for that purpose. Nevertheless we would have considerable doubt of the correctness of the district court’s conclusion of lack of obviousness even under the Papesch/Deutsche Goldund-Silber-Scheideanstalt test, with the limitations we would deem necessary, see fn. 13 supra, and even if Heiss had himself recognized the advantage of the propylene oxide.

The criterion is not as the district judge said, 363 F.Supp. at 880, whether “an ordinary journeyman would have understood that propylene oxide had these unexpected qualities in 1950 and 1951.” The proper test was suggested in Indiana General Corp. v. Krystinel Corp., 421 F.2d 1023, 1030-1031, (2 Cir.), cert. denied, 398 U.S. 928, 90 S.Ct. 1820, 26 L.Ed.2d 91 (1970), refusing to accord patentability to an improved ferrite, where Judge Medina observed that “experimentation is of the essence of the art involved in this lawsuit” and that “the practitioners of this art are, and of necessity must be highly educated, sophisticated persons who generally have at their disposal laboratory facilities and staffs of competent assistants.” As we noted in Carter-Wallace, Inc., supra, 474 F.2d at 543, citing Eli Lilly & Co. v. Generix Drug Sales, Inc., 460 F.2d 1096, 1103 (5 Cir. 1972), this, of course, is not to say that the development of an unexpected property is to be regarded as obvious simply because it is the result of patient work in the laboratory. But with Windemuth’s patent as prior art, a try at the next higher homolog of ethylene oxide would seem to constitute experimentation which is “on the level of ordinary skill in the art,” 421 F.2d at 1031. See also Note, supra, 87 Harv.L.Rev. at 626-28.

We find it unnecessary, however, to decide this question. The record does not present a picture of Heiss and his associates recognizing the deficiencies of ethylene oxide as a condensant and discovering the superior water resistant qualities of propylene, as the result either of diligent work or of a flash of genius, or as even appreciating that a new discovery had been made. The task that Heiss had set for himself was the discovery of resins which, as said in the specifications, “may be plasticized and rendered more flexible by effecting their preparation in the presence of a non-reaetive organic material, and preferably a non-reactive organic liquid which boils at a temperature not lower than 200° C., and preferably not lower than 250° C., at atmospheric pressure.” In addition, as Jefferson itself has pointed out to us, Heiss testified at trial that he was interested in carrying out the reaction in the presence of a liquid plasticizer with useful dielectric properties as a means to “solidify” or “gel up” the plasticizer and thereby embody the dielectric properties in a solid composition. Nothing in Heiss’ notebooks or in the patent application as filed indicated a preference for propylene oxide. The notebook entry for November 14, 1951, the alleged date of conception, in listing the advantages of Heiss’ experiments to date, states that ether linkages “should be more stable than” ester linkages and lists as a further advantage that

3. The use of poly glycols (or other ethylene or propylene oxide condensates) offers unlimited variety in building up molecules of various degrees of linearity or non-linearity.

All this is taught by Windemuth. Although Heiss testified that he and his associates eventually found that using propylene rather than ethylene oxide improved water resistance, there is nothing to indicate that he regarded this as of particular importance and much to show that to the degree he took an interest in water resistance he regarded the water resistance of his products as being imparted by the presence of the plasticizer. When the specifications boast of water resistance, they refer to all the products covered, whether made with propylene or ethylene oxide. Ethylene oxide was used even in one specific example of how to make a product for which water resistance was presumably of importance. Jefferson’s expert admitted freely and repeatedly under cross-examination that the specifications did not disclose a distinction with regard to water sensitivity between ethylene oxide and propylene oxide based products. And Heiss himself testified at trial that, at least insofar as he was working with the liquid plasticizer with the useful dielectric properties (“Aroclor”), supra, he had not looked into the relative water sensitivity of propylene oxide and ethylene oxide based urethanes “because, for example, if either one of these resins was dissolved in something like Aroclor 50 per cent, which is very hydrophobic, I doubt very much that in these types of materials that that would be a big factor because the Aroclor is providing the nonsensitivity to the moisture.” (Emphasis supplied.)

It is true that a patent is not rendered invalid by the fact that an inventor did not know why the new and beneficial result was obtained. Compare United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966). But just as “accidental results, not intended and not appreciated, do not constitute anticipation,” Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 66, 43 S.Ct. 322, 67 L.Ed. 523 (1923), so an unappreciated result of a structurally obvious modification cannot of itself constitute invention. While Heiss may have noted the superior water-resistant properties afforded by using propylene rather than ethylene oxide as a condensant, he revealed no appreciation of the importance of this until publication of the Price patent. We hold that the invention described in Heiss’ specifications and claims as they read until 1958 was obvious in the light of Windemuth; and that, even if under Papesch/Deutsche Gold-und-Silber-Scheideanstalt the invention described in the claims copied from Price would be patentable because of the disclosure of additional properties in compositions derived from propylene oxide condensates, then as to that claimed invention, Heiss “did not himself invent the subject matter sought to be patented,” 35 U.S.C. § 102(f). Contrast In re Zenitz, 333 F.2d 924, 52 CCPA 746 (1964). We thus have no occasion to consider whether because of the inadequate disclosure in the application until the new claims were copied from Price in 1958, Heiss is not entitled to the benefit of the doctrine of relation back, 35 U.S.C. § 120 (cf. id. §§ 112, 132), compare Benz v. Celeste Fur Dyeing & Dressing Corp., 156 F.2d 510 (2 Cir.), cert. denied, 329 U.S. 736, 67 S.Ct. 101, 91 L.Ed. 635 (1946), with Technicon Instruments Corp. v. Coleman Instruments, Inc., 255 F.Supp. 630, 640-641 (N.D.Ill.1966), aff’d, 385 F.2d 391, 393 (7 Cir. 1967), a point not specifically raised by General in this court, nor to consider other attacks which General does mount.

We therefore reverse the judgment .of the district court with instructions to enter judgment granting General’s complaint and dismissing Jefferson’s counterclaim. General’s request for attorney fees, 35 U.S.C. § 285, is denied.

      . We compliment appellant’s counsel for the appendix to their brief entitled “Background Chemistry,” which has not been controverted by appellee. Without the aid furnished by this, the writer, for one, would have been helpless. But such rudimentary education is no substitute for having lived for years with a subject and a way of thinking.

      . Although the reference has become trite, the circumstances of this case compel quotation of Judge L. Hand’s famous observation, Lyon v. Boh, 1 F.2d 48, 50 (S.D.N.Y.1924), rev’d, 10 F.2d 30 (2 Cir. 1926), that “the antlike persistency of solicitors has overcome, and I suppose will continue to overcome, the patience of examiners, and there is apparently always but one outcome.”

      . The Price application was filed September 23, 1953, and the patent issued on December 30, 1958.

      . The district court held that plaintiff, the assignee of the Price patent, had not sustained its burden of showing that Price’s conception and reduction to practice had antedated Heiss’ application, 363 F.Supp. 871, 881 (S.D.N.Y.1973). Our view of the case makes it unnecessary for us to decide whether this holding was correct.

      . The degree to which General’s arguments could have been turned against its own Price patent can easily be exaggerated, however. A number of General’s claims rest on Heiss’ failure to appreciate or disclose the special properties of the compositions here in issue, a charge to which Price was plainly not vulnerable. Even as to the questions of anticipation or obviousness, General attacks the district court’s finding that it had not proved conception and reduction to practice by Price on a date which would place it prior to the Windemuth patent application hereafter discussed (and incidentally prior to the patent application of Frederick B. Hill, Jr., to which also we shall have occasion to refer). As previously noted, we have no need to evaluate this attack on Judge Carter’s factfinding.

      . Both sides sought the award of attorneys’ fees under 35 U.S.C. § 285. The judge denied Jefferson’s application, a conclusion from which it has not appealed.

      . The importance of the hydroxyl group is that it is reactive, i. e., capable of linking up with another molecule having a reactive group. Alcohols with two hydroxyl groups are called diols or glycols; those with three such groups are called triols; and those with four such groups are called tetrols. Reaction (more precisely, polymerization) of diols produces linear chains; polymerization of triols and tetrols produces branched or cross-linked systems.

      . If there are two such groups, as in the cases with which we are primarily concerned, the compound is called a diisocyanate. All compounds with two or more NOO groups are called polyisocyanates.

      . The district court also noted, 363 F.Supp. at 878, that Bayer’s process required large quantities of diisocyanates, which were the most expensive ingredient.

      . The patent recites that an application had been filed in Germany on May 10, 1951, and that the applicant “claims priority.” However, General has not asserted the applicability of § 119, entitled “Benefit of earlier filing date in foreign country; right of priority”, nor argued that issuance of the German patent, the date of which we do not find clearly of record, antedated Heiss’ invention, thereby triggering § 102(a), or antedated his application by more than a year, thus triggering § 102(b).
      A half interest in the Windemuth patent had been assigned to Mobay Chemical Company, which also held a half and then a full interest in the Heiss patent prior to the conditional assignment of the Heiss patent to Jefferson.

      . Claim 3 of the Windemuth patent claimed specifically “[t]he process of claim 2 wherein the said isocyanate is a diisocyanate.”

      . Although the record before us strongly suggests that the water resistance is imparted only if propylene oxide condensates of higher molecular weight are used, and indeed the district court depended partly on this phenomenon in holding Heiss’ alleged invention nonobvious, 363 F.Supp. _ at 880, see note 19 infra, we need not, under our view of the case, decide whether the Patent Office may have erred in finding the Heiss and Price claims technically distinct.

      . Our arguendo assumption, however, does not go to the full extent that the Court of Customs and Patent Appeals may have applied Papesch as regarding “the demonstration of significant unexpected properties as almost conclusive jiroof of nonobviousness,” Note, supra, 87 Harv.L.Rev. at 612.

      . So much of this contention as rested on Heiss’ reduction of Windemutli’s teaching to practice before Windemuth filed, as distinguished from Heiss’ conception of his own invention before that date, has not been pressed before this court.

      . See note 20 infra.

      . Judge Carter found that the September 1952 date for reduction to practice by Heiss was supported by the evidence. 363 F.Supp. at 881. On appeal, General argues that this finding was unjustified, and that the earliest date the trial court could legitimately have assigned for reduction to practice was January 1953. This debate is of no consequence for our purposes and we need not pursue it.

      . General seeks to reinforce the contention that Heiss’ claimed invention is actually described in 'Windemuth by pointing to the prior art of Sokol, allegedly incorporated in Windemuth by reference, in reacting botli propylene and ethylene oxide with poly functional alcohol, and by arguing in effect that propylene, along with ethylene, oxide was one of the two commercially available alkylene oxides as early as 1950. On the latter point in particular, however, the evidence as to commercial availability of propylene oxide in the early 1950’s was at best sharply conflicting.

      . Another passage in Judge Medina’s opinion is also apt, 421 F.2d at 1031:
      Thus wo hold that when the properties of the metallic-oxide additives that control the permeability and the Q-faotor of a five-component nickel-zinc ferrite are well known to those skilled in the art, the product of individual experimentation with respect to the proportions of such additives required to produce such a ferrite with high permeability and high quality factor is not patentable. The reason for this ruling is that, as we have just said, such experimentation is on the level of ordinary skill in the art.
      AVe limit this ruling to the subject matter before us, as we must, but see no reason to doubt that the principles we have formulated may have a wider application, especially in the field of chemistry.

      . The district judge seemed to give substantial weight to the observation that “Propylene glycols up to a molecular weight of 750 are soluble in water” whereas solubility decreases at higher weights, 363 F.Supp. at 880. Jefferson seeks to make this the basis for a claim that the prior art “led away” from the use of propylene oxide. We disagree. The Windemuth patent had repeatedly suggested polyglycoletliers of a molecular weight of “at least 500” or “at least about 500.” Furthermore the Board of Interference seems to have been correct in holding that Heiss’ application did not disclose a molecular weight limitation. Cf. note 12 supra. In any event, as will ai)pear shortly, whether or not it was obvious to seek to conquer the water sensitivity problem by use of propylene oxide, Ileiss can hardly claim the prior art would have led Mm away from propylene oxide since his experiments with propylene oxide did not reflect any particular attention to water sensitivity.

      . Although Judge Carter found a conception date of September 14, 1951, 363 F.Supp. at 881, this was surely a slip. Jefferson claims nothing earlier than November 14; Ileiss’ testimony at trial was obviously intended to support a finding of conception on that date; and we have found no notebook entry before that of November 14 that even arguably would support a finding of conception.

      . Chief Justice Taft cited with approval, inter alia, Andrews v. Carman, 13 Blatch. 307, 1 Fed.Cas. pp. 868, 875, No. 371 (C.C.E.D. N.Y.1876), where Judge Benedict had said:
      A chance operation of a principle, unrecognized by anyone at the time, and from which no information of its existence, and no knowledge of a method of its employment, is derived by any one, if proved to have occurred, will not be sufficient to defeat the claim of him who first discovers the principle, and, by putting it to a practical and intelligent use, first makes it available to man.

      . In light of this holding, we need not consider whether, as urged by General, the district court failed to evaluate the prior art of Bayer and Hill in combination with one another and, if so, whether this was error.