text:
    UNITED STATES of America, Appellee, v. Robert TUCKER, Appellant.
    No. 73-1424.
    United States Court of Appeals, Eighth Circuit.
    Oct. 11, 1973.

      Robert M. Evans, St. Louis, Mo., for appellant.
    No brief was filed by appellee’s counsel.
    Before HEANEY, BRIGHT and ROSS, Circuit Judges.
   PER CURIAM.

The appellant, Robert Tucker, was convicted of a violation of 18 U.S.C. § 2314, in causing to be transported in interstate commerce two forged money orders. He objects on appeal to the following instruction given below:

“Possession of property recently stolen, if not satisfactorily explained, is ordinarily a circumstance from which the jury may reasonably draw the inference and find in the light of surrounding circumstances shown by the evidence in the case, that the person in possession knew the property had been stolen.”

The appellant argues that this instruction places an unconstitutional burden on the defendant tp introduce evidence in his behalf and to testify in violation of his Fifth Amendment right against self-incrimination. He also argues that the instruction contradicts two other instructions which informed the jury that no inference of guilt may be drawn from the defendant’s failure to testify, and that the law never imposes on the defendant the burden of testifying in his behalf or calling any witnesses.

In light of the Supreme Court’s decision in Barnes v. United States, 412 U.S. 837, 93 S.Ct. 2357, 37 L.Ed.2d 380 (1973), decided June 18, 1973, directly rejecting these contentions, we find the appellant’s appeal to be without merit.

Judgment affirmed.


source: Caselaw Access Project

author: PER CURIAM:

license: Public Domain

text:
    William JENNINGS, Jr., #006952, Petitioner-Appellant, v. Louie L. WAINWRIGHT, Respondent-Appellee.
    No. 73-1720.
    United States Court of Appeals, Fifth Circuit.
    Nov. 12, 1973.
    Henry Harnage, Miami, Fla. (Court-appointed), for petitioner-appellant.
    Barry Scott Richard, Asst. Atty. Gen., Joel D. Rosenblatt, J. Robert Olian, Asst. Attys. Gen., Miami, Fla., for respondent-appellee.
    Before WISDOM, COLEMAN and SIMPSON, Circuit Judges.
   PER CURIAM:

In the Criminal Court of Record for Dade County, Florida, the appellant, William Jennings, Jr., was convicted of armed robbery, State disposition of Jennings’ original appeal and subsequent motions to vacate are reported, Jennings v. State, 228 So.2d 117; 248 So.2d 247; and 268 So.2d 576 (D.C.A., Fla., 1969, 1971, and 1972).

Jennings has filed four previous petitions for habeas corpus in the United States District Court for the Southern District of Florida. In the instant proceedings Jennings contends that he is entitled to federal habeas corpus relief on the following grounds, restated for the benefit of the record:

“(1) Police officers illegally searched petitioner and his vehicle without a warrant.
(2) Petitioner was not taken before a committing magistrate without unnecessary delay.
(3) Police officers gave perjured testimony that petitioner was initially arrested for public drunkenness. Petitioner contends that he was arrested for robbery and that the drunk charge was placed against him to justify the search of his car.
(4) Police officers gave perjured testimony concerning whether petitioner’s clothes were seized from him at the time of his arrest.
(5) Petitioner was deprived of a lineup. Instead he was forced to pose for photographs which were subsequently exhibited to witnesses outside of the presence of his counsel.
(6) Photographs were exhibited to the witnesses in an impermissably suggestive manner.
(7) Petitioner was denied effective assistance of counsel because his attorney was forced to represent a co-defendant along with petitioner.
(8) Petitioner was denied effective assistance of counsel when the trial court denied his counsel’s motion for continuance.
(9) Petitioner was deprived of a preliminary hearing as a result of the state attorney filing a direct information.
(10) Petitioner was interrogated by police officers after his arrest without benefit of counsel.
(11) Certain state witnesses violated the witness rule.
(12) The State of Florida refused to provide petitioner with a transcript to perfect an appeal.”

Judge Mehrtens considered these contentions and rejected them in a detailed memorandum opinion dated January 31, 1973.

There was an extensive state court record, entirely sufficient in scope and extent to negate the necessity for an independent evidentiary hearing before the United States District Judge. Our consideration of that record leads to the same result.

The Judgment denying habeas corpus relief is

Affirmed.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. L. A. DOWDY, Defendant-Appellant.
    No. 73-1151
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Nov. 12, 1973.

      C. Michael Malski, Amory, Miss. (Court appointed), for defendant-appellant.
    H. M. Ray, U. S. Atty., Oxford, Miss., for plaintiff-appellee.
    Before JOHN R. BROWN, Chief Judge, and DYER and SIMPSON, Circuit Judges.

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

   PER CURIAM:

Dowdy was convicted in a jury trial of bank robbery by force and intimidation in violation of 18 U.S.C.A. §§ 2, 2113(a), (d). In this appeal, Dowdy contends that the court below improperly denied the Fifth Amendment privilege against self-incrimination enjoyed by a prosecution witness by requiring the witness to testify at Dowdy’s trial, and that Dowdy has standing to protest this alleged violation of the witness’ constitutional right. We affirm.

In the course of Dowdy’s trial, the prosecution called as a witness Herbert Freeman, who had earlier entered a guilty plea in connection with the same offenses charged against Dowdy. Following Freeman’s damaging testimony on direct examination as to Dowdy’s participation in the robbery, Dowdy objected that Freeman was being forced to testify, without advice of his retained counsel, in violation of the witness’ Fifth Amendment rights. Holding that Freeman’s guilty plea constituted a waiver of his testimonial privilege, the court overruled Dowdy’s objection.

Even if Dowdy’s argument with respect to Freeman’s Fifth Amendment privilege were persuasive, the opportunity to urge his theory must be denied for lack of standing. Since he was not compelled to testify, Dowdy does not complain of violations of his own Fifth Amendment rights, but only of alleged infringements of the privilege enjoyed by another. As this court has previously held, one cannot assert in his own defense the denial of another’s right against self-incrimination. “Some constitutional rights are personal and may not be vicariously asserted. Among these is the right against self-incrimination.” Hall v. United States, 5 Cir. 1969, 413 F.2d 45, 48 (citations omitted). See Gissendanner v. Wainwright, 5 Cir. 1973, 482 F.2d 1293.

The district court properly overruled Dowdy’s objection.

Affirmed.


text:
    Jose VASQUEZ, Individually, etc., et al., etc., Plaintiffs-Appellants, v. Raymond W. VOWELL, etc., et al., Defendants-Appellees.
    No. 73-1201.
    United States Court of Appeals, Fifth Circuit.
    Nov. 1, 1973.

      Stanley Dalton Wright, Melvin N. Ei-chelbaum, Miles H. Appleberry, San Antonio, Tex., for plaintiffs-appellants.
    John L. Hill, Atty. Gen. of Tex., Pat Bailey, Asst. Atty. Gen., Robert W. Gauss, Austin, Tex., for defendants-ap-pellees.
    Before GOLDBERG, CLARK and RO-NEY, Circuit Judges.
   PER CURIAM:

The central question on this appeal (Does a State law which requires that welfare payments to disabled or mentally incompetent minors be made to a court appointed guardian in the absence of legal emancipation of the minor contravene the Social Security Act and the Supremacy Clause of the United States Constitution?) has been rendered moot by the enactment of Texas Statute, Vernon’s Ann.Civ.St. Art. 5923b (Supp. 1973), which established eighteen years of age as the legal age in Texas. The federal program involved, Aid to the Permanent and Totally Disabled, 42 U. S.C.A. § 1351 et seq., is only available to “needy individuals eighteen years of age and older who are permanently and totally disabled.” The question presented this Court concerning Texas’ practices in relation to minor recipients under the Act is rendered moot since Texas no longer has any minor recipients. Accordingly the appeal is

Dismissed.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. Florencio SEPE, Defendant-Appellant.
    No. 72-1352.
    United States Court of Appeals, Fifth Circuit.
    Nov. 19, 1973.

      Melvyn Kessler, Miami, Fla., for defendant-appellant.
    Robert W. Rust, U. S. Atty., Michael P. Sullivan, Asst. U. S. Atty., Miami, Fla., Elliot L. Richardson, Acting U. S. Atty. Gen., Robert B. Patterson, Dept, of Justice, Washington, D. C., for plaintiff-appellee.

      Appeal from the United States District Court for the Southern District of Florida

    Before JOHN R. BROWN, Chief Judge, and WISDOM, GEWIN, BELL, THORNBERRY, COLEMAN, GOLDBERG, AINSWORTH, GODBOLD, DYER, SIMPSON, MORGAN, CLARK, RONEY, and GEE, Circuit Judges.
   PER CURIAM:

The panel opinion in this case is reported, United States v. Sepe, 5 Cir., 1973, 474 F.2d 784.

The panel held that Sepe’s voluntary plea of guilty to a charge of conspiring to import heroin and his voluntary pleas of nolo contendere to charges of importing heroin and of possessing narcotics with intent to distribute waived all non-jurisdictional errors and barred an appeal in which Sepe sought to assert that the heroin and the suitcase in which it was contained should have been suppressed as the fruits of an unlawful search.

It was further held that a guilty plea is not invalid because it represents a compromise by the defendant or thrusts a difficult judgment on him or is motivated by fear of greater punishment.

The panel was careful to say that a guilty plea does not bar an appeal which asserts that the indictment or information failed to state an offense, or that the statute providing the basis for the charge is unconstitutional, or that the indictment showed on its face that it was barred by the statute of limitations.

In the interest of clarity we point out that this case did not) involve an express agreement to allow an appeal, but we now take advantage of an opportunity to say that as matter of policy this Court disapproves the practice of accepting pleas of guilty or nolo contendere if they are coupled with agreements that the defendant may nevertheless appeal on non-jurisdictional grounds.

The opinion and judgment of the panel, 474 F.2d 784, is

Affirmed.

      . Haynes v. United States, 390 U.S. 85, 88 S.Ct. 722, 19 L.Ed.2d 923 (1968).

      . United States v. Rosenberg, 5 Cir., 1972, 458 F.2d 1183.

      . United States v. Cook, 5 Cir., 1972, 463 F. 2d 123; United States v. Wysocki, 5 Cir., 1972, 457 F.2d 1155.
      Since the record reflects no agreement to permit an appeal after the guilty and nolo pleas, this appeal presents no Santolello issue, Santobello v. New York, 404 U.S. 257, 92 S.Ct. 495, 30 L.Ed.2d 427 (1971).


author: PER CURIAM.

text:
    John D. and Karla Kay GLASGOW, Petitioners-Appellees, v. COMMISSIONER OF INTERNAL REVENUE, Respondent-Appellant.
    No. 72-1640.
    United States Court of Appeals, Tenth Circuit.
    Nov. 9, 1973.

      James H. Bozarth, Dept, of Justice, Washington, D. C. (Scott P. Crampton, Asst. Atty. Gen., and Meyer Rothwacks and Thomas L. Stapleton, Attys., Dept, of Justice, Washington, D. C., on the brief), for respondent-appellant.
    John D. Glasgow, pro se, for petitioners-appellees.
    Before HILL and HOLLOWAY, Circuit Judges, and TEMPLAR, District Judge.

       The Honorable George Templar of the United States District Court for the District of Kansas, sitting by designation.

   PER CURIAM.

This appeal is taken by the Commissioner from a decision of the Tax Court, 31 T.C.M. 310, holding that petitioners-appellees were entitled to a 1967 income tax deduction for educational expenses as ordinary and necessary business expenses under section 162(a) of the Internal Revenue Code of 1954 and the 1958 regulation, Treas.Reg. § 1.162-5, T.D. 6291, 1958-1 Cum.Bull. 63; 26 C.F.R. § 1.162-5, Rev. 1958.

The expenses incurred were for undergraduate educational courses pursued by petitioner John D. Glasgow while serving as a Baptist minister. On the record we feel the issue was essentially a question of fact. We are satisfied that the findings and conclusions of the Tax Court as the trier of fact, as stated in its opinion, are not clearly erroneous and should therefore not be disturbed. Commissioner of Internal Revenue v. Duberstein, 363 U.S. 278, 80 S.Ct. 1190, 4 L. Ed.2d 1218.

Affirmed.


text:
    Gladys S. RANDOLPH, Plaintiff-Appellant, v. Elliott L. RICHARDSON, Secretary, Defendant-Appellee.
    No. 73-1453.
    United States Court of Appeals, Sixth Circuit.
    Argued Oct. 9, 1973.
    Decided Nov. 6, 1973.

      John E. Acuff, Cookeville, Tenn., for plaintiff-appellant; W. Keith Crawford, Cookeville, Tenn., on brief.
    Joe B. Brown, Asst. U. S. Atty., Nashville, Tenn., for defendant-appellee; Charles H. Anderson, U. S. Atty., M. D. Tenn., on brief.
    Before PECK and McCREE, Circuit Judges, and ALLEN, District Judge.

       The Honorable Charles M. Allen, United States District Judge for the Western District of Kentucky, sitting by designation.

   PER CURIAM.

This is an appeal from the grant of summary judgment affirming the Secretary’s denial of a claim for disabled widow’s insurance benefits under 42 U.S.C. § 402(e). This provision authorizes the award of benefits to a widow of a fully insured individual if she is unmarried and has attained age 50, but has not attained age 60, and is under a disability, as defined in § 423(d) of the Social Security Act. Benefits may be awarded within a period beginning with the month of the death of the wage earner and concluding with the close of the 84th month following the month when the period began.

Disability for this purpose is defined by regulations prescribed by the Secretary as a level of physical or mental impairment sufficient to preclude engaging in any gainful activity, and the Secretary has adopted regulations listing impairments preclusive of any gainful activity. The regulations also permit the award of benefits for an impairment that is the equivalent in severity and duration of a listed impairment. Social Security Administration Regulations, Chapter III, 20 C.F.R. § 404.1504 et seq.

Although it is apparent to us, as it was to the district court, that appellant experiences substantial physical impairment, nevertheless, the record affords substantial evidence to support the findings and conclusions of the Secretary, affirmed by the district court, that appellant’s impairment is not of a severity that meets or equals any described in the listing of impairments in the applicable regulations. The findings of the Secretary are made conclusive as to any fact if supported by substantial evidence. 42 U.S.C. § 405(g); Rose v. Cohen, 406 F.2d 753 (6th Cir. 1969). Accordingly, noting that the period during which appellant may establish that she is under a disability as defined in the statute extends through June 30, 1974, the judgment of the district court is affirmed.


text:
    Cleo ORANGE, Individually, and on behalf of all others similarly situated, Plaintiff-Appellant, v. Louie L. WAINWRIGHT et al., Defendants-Appellees.
    No. 73-2086
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Oct. 23, 1973.

      Cleo Orange, pro se.
    Nelson Bailey, Asst. Atty. Gen., West Palm Beach, Fla., Jerry E. Oxner, Asst. Atty. Gen., Dept, of Legal Affairs, Civil Div., Tallahassee, Fla., for defendants-appellees.
    Before THORNBERRY, GOLDBERG and RONEY, Circuit Judges.

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

   PER CURIAM:

In this prisoner’s rights action plaintiff originally complained of abusive treatment which allegedly occurred when plaintiff was incarcerated in the Glades Correctional Institution at Belle Glade, Florida. Before the ease could be heard in the District Court, plaintiff was transferred to the Florida State Prison. On defendant’s motion the case was dismissed as moot, since the complaint did not allege that any violations had occurred at the second institution nor ask any relief from officials there.

After entry of the final order of dismissal, the court received plaintiff’s “Reply to Defendant’s Response to Complaint,” in which he for the first time complained of abusive treatment at the second facility. In this appeal he renews the complaint. Since these allegations have never been before any district court, we may not consider them at this time., Chunn v. Clark, 5th Cir., 1971, 451 F.2d 1005. We affirm the district court’s dismissal of the other allegations as moot.


text:
    AMERICAN BEEF PACKERS, INC., Appellant, v. UNITED STATES DEPARTMENT OF AGRICULTURE, Appellee.
    No. 73-1275.
    United States Court of Appeals, Eighth Circuit.
    Nov. 5, 1973.

      David E. Pavel and Bruce D. Vosburg,-Omaha, Neb., on brief for appellant.
    Irving Jaffee, Acting Asst. Atty. Gen., and Morton Hollander and Stephen F. Eilperin, Attys., Dept, of Justice, Washington, D. C., on brief for appellee.
    Before GIBSON, LAY and STEPHENSON, Circuit Judges.
   PER CURIAM.

The Department of Agriculture instituted proceedings against Farmland Enterprises, Inc., a corporation, Frank R. West, an individual, and American Beef Packers, Inc., a corporation, alleging price manipulation upon the sale of dressed hog carcasses in violation of the Packers and Stockyard Act of 1921, 7 U.S.C. §§ 181 et seq. The complaint also alleges that American Beef Packers, Inc. allowed West to own stock and control it at the same time West also owned and controlled market agencies and dealers in violation of § 201.68 of the Regulations of the Secretary of Agriculture.

American Beef moved to sever its hearing from the hearing relating to the other parties. It likewise moved to sever specific counts. Judge Dorothea A. Baker, an experienced and able administrative law judge, denied these motions. Judge Baker’s rulings were adopted by the Secretary. American Beef brought this petition for review alleging that under the collateral order doctrine of Cohen v. Beneficial Industrial Loan Corp., 337 U.S. 541, 69 S.Ct. 1221, 93 L.Ed. 1528 (1949), this court has jurisdiction to review the interlocutory order.

Assuming, without deciding, the propriety of review by this court, we determine that plaintiff’s petition for review should be dismissed. Procedural decisions relating to such matters as pleadings, joinder of parties, and motions to sever, fall well within the administrative agency’s discretion. There has been no showing of abuse here.

The petition for review is denied.


author: PER CURIAM: COLEMAN, Circuit Judge

text:
    Willie McLAURIN et al., Plaintiffs-Appellants, v. The COLUMBIA MUNICIPAL SEPARATE SCHOOL DISTRICT et al., Defendants-Appellees.
    No. 71-3022.
    United States Court of Appeals, Fifth Circuit.
    Nov. 26, 1973.
    Rehearing Denied Dec 19, 1973.
    Nausead Stewart, Fred L. Banks, Jr., Melvyn R. Leventhal, Jackson, Miss., Brian Landsberg, U. S. Dept, of Justice, Civil Rights Div., Washington, D. C., for plaintiffs-appellants.
    Stephen J. Poliak, Richard M. Sharp, David Rubin, Washington, D. C., N. E. A. and Miss. Teachers Assn., for amici curiae.
    Maurice Dantin, Columbia, Miss., for defendants-appellees.
    Before JOHN R. BROWN, Chief Judge, and WISDOM, GEWIN, BELL, THORNBERRY, COLEMAN, GOLDBERG, AINSWORTH, GODBOLD, DYER, SIMPSON, MORGAN, CLARK, RONEY and GEE, Circuit Judges.
   PER CURIAM:

Briefs and oral arguments on rehearing en banc lead the Court to conclude that this ease is not enbancworthy, F.R. A.P. 35. The en banc Court is therefore dissolved and the cause remanded to the panel.

COLEMAN, Circuit Judge

(concurring specially):

A consideration of the majority and minority opinions originally filed in this case on April 11, 1973, 478 F.2d 348, gave every indication, I thought, of enbancworthiness. A majority of the Judges of this Court thought so, for they voted to rehear the case en bane. Viewed in their totality, the divergent panel opinions raised serious questions as to whether the teacher discharges were within the Singleton rule as well as concerning the power of school boards to dismiss teachers for such causes as intemperance and striking a retarded child with such brutality as to bring blood from the hand, 478 F.2d at 357.

The winnowing accomplished by the en banc hearing clearly indicated that the reductions did fall within Singleton coverage, that the School Board had never adopted objective criteria for the dismissal of teachers occasioned by a reduction in faculty, that the driver instructor alleged to have had a drinking problem had twice been rehired since the occurrence which led to the charges against him, and that the child striking incident had been shown by hearsay, with no direct eyewitness testimony. This caused the dissolution of the En Banc Court in this case.

Speaking as only one member of the Court I have no doubt that where definitely supported by the evidence any teacher, regardless of race, may, and ought to be, dismissed for habitual intemperance or for inexcusable brutality, and that Singleton does not provide a shield for such behavior. It turns out, however, that evidentiarily we do not now have such a case before us.

During the en banc arguments counsel for the School Board expressed grave concern about the enormity of the sum involved in the back pay order. A careful reading of the majority panel opinion, 478 F.2d at 356, will allay most of these fears. Counsel will have no trouble finding the law applicable to situations in which teachers are physically unable to teach, even when the job was legally available to them.

I do not consider the time spent on this en banc case to have been a waste of judicial time.


text:
    Eddie FULLER, Petitioner-Appellant, v. Louie L. WAINWRIGHT, Director, Division of Corrections, State of Florida, Respondent-Appellee.
    No. 73-2384
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Nov. 20, 1973.

      Eddie Fuller, pro se.
    William W. Herring, Asst. Atty. Gen., Frank B. Kessler, West Palm Beach, Fla., 'for respondent-appellee.
    Before BELL, GODBOLD and GEE, Circuit Judges.

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

   PER CURIAM:

Petitioner’s habeas petition alleges constitutional defects the existence of which can only be adequately determined by examination of the state trial record, or should that prove fruitless, after an evidentiary hearing in the District Court. See Gerzin v. Beto, 459 F.2d 671 (CA5 1972). As we construe the order denying the petition — although we are not entirely free from doubt — it appears that the District Court did not have the record for examination and did not conduct an evidentiary hearing.

Vacated and remanded.

      . If our construction is wrong, the case can be returned to us without the necessity of redocketing, with a copy of the state court record made a part of the appellate record.


text:
    27 PUERTO RICAN MIGRANT FARM WORKERS, Appellants, v. SHADE TOBACCO GROWERS AGRICULTURAL ASSOCIATION, INC., et al., Appellees.
    No. 56, Docket 73-1415.
    United States Court of Appeals, Second Circuit.
    Argued Oct. 31, 1973.
    Decided Nov. 19, 1973.
    David M. Sheehan, Leverett, Mass. (James W. Zion, Mitchell W. Pearlman, Hartford, Conn., Miriam Guido, Kevin Carey, Migrant Legal Action Program, Washington, D. C., on the brief), for appellants.
    Aaron Nassau, Hartford, Conn., for appellees.
    Before MOORE, HAYS and FEIN-BERG, Circuit Judges.
   PER CURIAM:

Appellants, Puerto Rican migrant farm workers, who labored in the tobacco fields of the Connecticut Valley, allege violations of their employment contracts, principally the failure to supply them a hot lunch. The United States District Court for the District of Connecticut, T. Emmet Clarie, J., dismissed their complaint for lack of subject matter jurisdiction and we affirm, substantially on the basis of Judge Clarie’s excellent opinion. 352 F.Supp. 986 (1973). We add only that we think that Gomez v. Florida State Employment Service, 417 F.2d 569 (5th Cir. 1969), upon which appellants rely, is properly distinguishable because that case involved actions of state officials, who were defendants in violation of specific minimum requirements of federal regulations and the alleged deprivation of basic human rights. Here, in contrast, appellants are deprived neither of the fundamentals of human dignity nor of any right specifically secured by any federal regulation.

Judgment affirmed.


author: MARKEY, Chief Judge. ALMOND, Senior Judge BALDWIN, Judge

text:
    Application of Howard C. HAAS.
    Patent Appeal No. 9136.
    United States Court of Customs and Patent Appeals.
    Nov. 1, 1973.
    Sheldon W. Rothstein, Brown & Mikul-ka, Cambridge, Mass., attorneys of record, for appellant; Donald R. Dunner, Washington, D. C., of counsel.
    Ellsworth H. Mosher, Arlington, Va., for amicus curiae.
    Joseph F. Nakanura, Acting Sol., for the Commissioner of Patents.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge./
   MARKEY, Chief Judge.

This appeal is from the dismissal by the Board of Appeals in Ex parte Haas, 175 USPQ 217 (1972), for lack of jurisdiction of an appeal from the examiner’s “withdrawal from further consideration” of claims 1 and 2 of appellant’s application, serial No. 821,511, filed May 2,1969, entitled “Novel Polymerization .Initiators.” We hold that the board erred in its denial of jurisdiction under 35 U.S.C. §§ 7 and 134 and remand for review on the merits of the examiner’s action.

The Invention

The invention relates to benzoyl peroxide compounds containing reactive moieties on the benzene rings, said compounds being useful in the initiation of the formation of polymers whose chains are each capped with a reactive group on one or both ends. These reactive sub-stituents of the peroxide compounds are set forth in Markush format. Claim 1 is representative:

1. A compound of the formula:

wherein X is a reactive functional group selected from the group consisting of a-monosubstituted chloro, bromo and fluoro alkyl groups containing from 1 to 3 carbon atoms, inclusive; formyl; formyl substituted alkyl groups containing from 1 to 4 carbon atoms, inclusive; isocyanate; and iso-cyanate substituted alkyl groups containing from 1 to 4 carbon atoms inclusive.

Dependent claim 2 limits X to the para position of the benzene rings.

Background

Claims 1 and 2 of the present application are very similar to claims 1 and 2 of the parent case. The latter had been rejected under 35 U.S.C. § 112 as being indefinite and inadequately supported. In the present case, however, the examiner chose to withdraw claims 1 and 2 from further consideration on the ground that they included multiple “patentable distinct” inventions. A species claim was allowed. A narrow Markush claim, encompassing only those reactive moieties similar to the allowed species, was suggested. Appellant was given thirty days to cancel claims 1 and 2 and the prosecution was otherwise closed.

Appellant filed a petition under Rule 144 which was denied. His request for reconsideration was also denied. We note that both were denied by the director of the same examining group from which the examiner’s action had originated.

The issue of the withdrawal of claims 1 and 2 was taken to the Board of Appeals, which accorded appellant an en banc hearing by fifteen Examiners-in-Chief. A split decision resulted, with nine members of the board joining or concurring with the principal opinion, five dissenting in full and one dissenting in part. The basic holding of the principal opinion was:

In summation, we cannot find that the Examiner has made a rejection of the claims here before us on any statutory ground which falls within our appellate jurisdiction. * * *
The appeal was dismissed.

The withdrawal practice has apparently become widespread in the Patent Office. The impact of a denial of appellate review of that practice has been emphasized before us not only by appellant but by the American Patent Law Association in an amicus curiae brief.

OPINION

Jurisdiction of This Court

Prior to oral hearing the solicitor filed a motion to dismiss this appeal for lack of jurisdiction. The motion having been denied “without prejudice to renewal at oral argument,” it was renewed in the solicitor’s brief and at oral argument. It is the solicitor’s basic contention that the board’s dismissal was not the type of “decision” required by 35 U.S.C. § 141 to confer appellate jurisdiction upon this court. It is urged that the board was not acting in its statutory capacity, reviewing on the merits an adverse decision of an examiner (35 U.S.C. § 7).

We have an inherent power to review any action of the board which affects our appellate jurisdiction. Cf. In re Szajna, 422 F.2d 443, 57 CCPA 899 (1970). Both 28 U.S.C. § 1542 and 35 U.S.C. § 141 limit our jurisdiction to appeals of “decisions” of the board. The board’s authority to make such “decisions” is set forth in 35 U.S.C. § 7. But this court has the right to determine whether the board properly refused to make such “decisions” in its statutory capacity. To hold otherwise would be to confer upon the board the power, albeit undoubtedly unwanted and unsought, to control the subject matter jurisdiction of this court.

Here the dismissal was a refusal to act under 35 U.S.C. § 7 on an appeal under 35 U.S.C. § 134 because there had not been the rejection necessary to confer jurisdiction on the board. Cited by the board as support is In re Hengehold, 440 F.2d 1395, 58 CCPA 1099 (1971), wherein we held that under the combined effect of § 7 and § 134 the board’s review must be restricted to those adverse decisions of examiners “which relate at least indirectly, to matters involving the rejection of claims.” As applied to our jurisdiction, however, we point out that in Hengehold itself the inherent power of this court to review the board’s action was invoked, although we therein concluded that the board had correctly determined the scope of its jurisdiction.

The solicitor relies on this court’s conclusion in In re James, 432 F.2d 473, 57 CCPA 1371 (1970), that “an acceptable ‘decision,’ in the jurisdictional sense, refers to an action taken by the board, in a capacity provided for in the statutes which has been dispositive of the appeal in that it has adjudicated a legal right.” But in James the board refused to act because of a procedural defect, the failure to file a reply brief. Here the board’s dismissal was founded on the substantive holding that there could be no review under 35 U.S.C. § 7 because there was no basis for appeal under 35 U.S.C. § 134. The controversy turns on whether the board properly determined that no “decision” in the sense of § 141 could rather than would be made.

In the recent case of In re Dollinger, 474 F.2d 1027 (Cust. & Pat.App.1973), we held that our jurisdiction under § 141 is dependent upon the jurisdiction of the board under § 7, viewed in light of § 134. Thus in order to confer subject matter jurisdiction upon us, the board must have reviewed an adverse decision of the examiner relating at least indirectly to a rejection of the claims. In Dollinger the board had acted on its own in dismissing as to certain claims because of appellants’ acquiescence in their rejection. Similarly in the case of In re Litman, 480 F.2d 872, Cust. & Pat.App.1973), the board’s independent dismissal as to certain claims rested on appellants’ failure to respond to a rejection of those claims. In neither Dollinger nor Litman was there a review of an examiner’s adverse decision. Subject matter jurisdiction had not been conferred upon us.

In those cases we found nothing which dictated our review of the board’s refusal to exercise jurisdiction. No doubt had been raised as to the appellants’ right to appeal the examiner’s action. A “rejection” was clearly present. Only the appellants’ acquiescence or inaction was at issue. In the present case, however, the basic question of jurisdiction has been raised. An answer to that question requires our consideration of the board’s decision that no “decision” could be made and of the nature of the examiner’s underlying action. Accordingly, the motion to dismiss is denied.

Nature of Examiner’s Action

In considering the examiner’s action we look both to the language employed and the effect thereof. We consider the form and the substance. Although the principal opinion below considered the examiner’s language “most nearly suggestive of a restriction requirement,” the effect of that language must also be considered. The particular packaging employed cannot be determinative.

The examiner stated:

Claims 1-2 are held withdrawn from further consideration by the Examiner under 35 U.S.C. §§ 101 and 121 as being inclusive of multiple patentable distinct inventions.

Prosecution as to those claims was then closed and they were never to be considered on the bases of § 102, § 103 and § 112. The petition to compel examination of the subject matter of the claims and the subsequent request for reconsideration were to no avail. The petition was denied because “[c]laims which include more than one patentably distinct invention are improper and need not be acted on.” The Examiner’s Answer emphasized that the claims were “withdrawn” and not under “rejection” and referred to the merits of the withdrawal only by citation to the denial of the petition.

We are not here faced with the usual restriction requirement under 35 U.S.C. § 121 wherein separate claims directed to an invention “independent and distinct” from an elected invention are withdrawn from consideration in a particular application. Accordingly, as pointed out below in the dissents of Examiners-in-Chief Witherspoon and Mangan, the Hengehold case, involving separate claims, is not controlling.

In fairness, we note that the board did attempt to “go behind the bare words because of the possibility that a rejection in fact has been mislabeled as a withdrawal (or objection).” A stumbling block arose, however, in the apparent refusal even to consider the possibility that a rejection had been made under § 121. That a de facto rejection had been made without statutory basis was also not considered. The withdrawal from any further consideration was instead classified as a “refusal * * * to act on claims” in keeping with a restriction requirement and deemed a purely administrative matter.

We find that the action taken by the examiner did in fact amount to a rejection of claims 1 and 2. Those claims were withdrawn from consideration not only in this application but prospectively in any subsequent application because of their content. In effect there had been a denial of patentability of the claims. Presumably only by dividing the subject matter into separate, and thus different, claims in plural applications could an examination of the patentability of their subject matter be obtained.

Conclusion

We are thus led inevitably to the conclusion that the examiner’s action here meets the standard established in Henge-hold for adverse decisions reviewable by the board. The absolute “withdrawal” herein cannot properly be categorized as merely a “requirement” or “objection” and the avenue of review thereby be restricted to petition and judicial examination under 5 U.S.C. §§ 701-706. An examiner’s adverse action of this nature is a rejection, a denial of substantive rights. Review thereof must fall within the jurisdiction of the board.

Summary

We hold, therefore, that the Board of Appeals has jurisdiction under 35 U.S. C. §§ 7 and 134 to review an adverse decision of an examiner when that decision, although designated a “withdrawal” of a claim from further consideration, is in fact a rejection of that claim on the ground that it encompasses independent and distinct inventions. Accordingly, we reverse the decision of the board to dismiss the appeal and remand for further action by the board not inconsistent herewith.

Reversed and remanded.

ALMOND, Senior Judge

(concurring).

I agree with the majority’s conclusion that this court has the power to review board determinations pertinent to jurisdiction. I also agree that the board’s decision in this case should be reversed and the case remanded to it for further consideration. However, my reasons differ from those expressed by the majority.

The majority appears to hold that a restriction requirement invoked against a single claim on the ground that it contains independent and distinct inventions must in all circumstances be regarded as a “rejection” and subject to review by the board. As I see it, this holding leaves the board several options.

The board can find that § 121 does not afford a statutory basis for making restriction requirements against single claims. Put another way, it can conclude that a single claim cannot contain “independent and distinct inventions” within the meaning of § 121. Alternatively, the board might conclude that § 121 does provide a statutory basis for such requirements. In the latter event, the majority opinion seems to demand that the board consider whether in fact the claims involved here contain “independent and distinct inventions.” In other words, the board must also consider the propriety of the actual restriction requirement made if it decides that § 121 empowers the Patent Office to make such requirements against members recited in a Markush claim.

In my view, the majority opinion goes too far. I believe that the board should be restricted to a consideration of the threshold legal question of whether § 121 authorizes the Patent Office to make a restriction requirement against allegedly independent and distinct inventions within a single claim. Absent such authority, I would agree that the examiner’s action in this case would amount to a rejection without a statutory basis. I think the board has jurisdiction to consider this question.

However, if the board should conclude that § 121 permits such a restriction requirement, it should not go further and consider the propriety of that requirement. I regard In re Hengehold, cited by the majority, as controlling on this point. I do so because I see no logical basis for interpreting § 121 in a manner which would create a jurisdictional dichotomy by which the propriety of a requirement for restriction made against a single claim is reviewed by the board, whereas one made on the ground that independent and distinct inventions reside in separate claims must be reviewed by the Commissioner upon his receipt of a proper petition. Accordingly, I would remand the case to the board with instructions consistent with my above-stated view.

BALDWIN, Judge

(concurring).

I agree with the denial of the motion to dismiss for reasons stated and further agree that the examiner’s actions amounted to a substantive rejection of the claims. In fact, it is the same rejection as has traditionally been given on the basis that the claim contained “improper Markush groups.” See the dissenting opinions of Examiners-in-Chief Mangan, 175 USPQ at 226-29, and Witherspoon, 175 USPQ at 235-37. In re Hengehold, 440 F.2d 1395, 58 CCPA 1099 (1971), which specifically exempted from its purview actions “which relate, at least indirectly, to matters involving the rejection of claims,” is not controlling, and the board, and thus this court, does have jurisdiction to rule on the propriety of the actions taken by the examiner, and this case should be remanded to the Patent Office for that purpose.

      . A continuation-in-part of serial No. 630,222, filed April 12, 1967.

      . A complete discussion of the prosecution history .and appellant’s quest for relief from the examiner’s action is set forth in the principal opinion in Ex parte Haas, supra.

      . The pertinent part of 35 U.S.C. § 141 reads: An applicant dissatisfied with the decision of the Board of Appeals may appeal to the United States Court of Customs and Patent Appeals, thereby waiving his right to proceed under section 145 of this title.

      . The board’s disregard of § 101 as an appropriate basis, because of insufficient argument, need not be treated here. We caution, however, that such application of § 101 would conflict with the final sentence of § 121. The purpose of § 101 is to define patentable subject matter, not to limit a patent to one invention.


author: MILLER, Judge.

text:
    Application of Joto F. WAFMOUTH and Frederic Koury.
    Patent Appeal No. 8991.
    United States Court of Customs and Patent Appeals.
    Nov. 8, 1973.
    Supplemental Opinion in Rehearing Jan. 24, 1974.
    See 489 F.2d 1297.
    James Theodosopoulos, Danvers, Mass. (GTE Sylvania Incorporated), for appellants.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. William H. Beha, Jr., Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   MILLER, Judge.

This appeal is from the Patent Office Board of Appeals decision affirming the examiner’s rejection of claims 18-21 of appellants’ application under 35 U.S.C. § 132 as containing “new matter.” We reverse and remand.

Claims 18-20 are exact duplicates of claims 1, 2 and 6 of a patent to Edris et al., and claim 21 represents a modified claim based on claim 1 of said patent.

The invention relates to a high pressure arc discharge lamp shown in the accompanying figure where 12 is a hermetically sealed are tube having internal terminal electrodes 13 and 14. The arc tube contains a light emissive filling material.

Claim 18 reads:

18. A discharge lamp adapted to be normally operated with a predetermined power input, said lamp comprising :
(a) a light-transmitting elongated arc tube which encloses a predetermined volume;
(b) arc supporting electrodes disposed within said arc tube proximate the ends thereof;
(c) lead-in conductors connecting to said electrodes and sealed through said arc tube;
(d) a discharge-sustaining filling within said arc tube, said discharge-sustaining filling initially placed as a dosing charge into said arc tube, said dosing charge including as essential constituents a predetermined pressure of inert ionizable starting gas, mercury, sodium iodide, and a predetermined amount of selected metal which will combine with free iodine as may be released during operation of said lamp to form metallic iodide,
(1) said mercury constituent of said dosing charge present in predetermined amount which when fully vaporized during normal operation of said lamp will provide a predetermined pressure of mercury vapor in said arc tube,
(2) said sodium iodide constituent of said dosing charge present in amount of at least 0.17 mg./cc. of said arc tube volume,
(3) said selected metal constituent of said dosing charge present at least in amount sufficient to react with free iodine, as may be released during operation of said lamp, in amount of 4.5 x 10-7 gram-atom of iodine per cc. of said arc tube volume, and
(4) the amount of combined and uncombined metal in said dosing charge, other than mercury being predetermined to:
(a) combine stoichiometrically with the total amount of iodine in said dosing charge plus (b) provide at least sufficient metal to combine with free iodine, as may be released during operation of said lamp, in amount of 4.5 x 10-7 gram-atom of iodine per ec. of said arc tube volume; and
(e) the thermal conductivity from said arc tube and the predetermined power input at which said lamp is adapted to be operated bearing such relationship to one another that the minimum temperature on said arc tube when said lamp is operating is at least 580°C. (Emphasis added.)

The above italicized phrases are the ones objected to by the Patent Office as being drawn to “new matter.”

Claim 19 depends on claim 18 and specifies an amount of sodium iodide from 0.6 to 4.5 mg./cc. of arc tube volume. Claim 20 recites a preferred amount of the selected metal. Claim 21 is similar to claim 18 except that the phrase “at least 580 °C.” has been replaced by “sufficient to vaporize an effective amount of said constituents.”

Appellants raise the issue of a “new rejection” applied by the board and also contest the “new matter” rejections.

THE ISSUE OF NEW REJECTION

It is necessary to present some of the prosecution history in this case in order to understand the issue of a “new rejection.” The examiner’s final rejection first raised the issue that the claims contained “new matter” in that they recited “sodium iodide,” whereas he alleged that appellants’ specification referred only to “sodium.” His rejection stated that the specification referred to the addition of “certain amounts of sodium within a specified range and not sodium iodide” and could not, therefore, include 0.17 mg./cc. of sodium iodide (specified in the claims of the-Edris et al. patent and the claims before the examiner) . The examiner offered no objection to similar volume limitations with respect to iodine in claim 18(d)(3) and 18(d) (4) and sodium iodide in claim 19.

On the issue of appellants’ disclosure of sodium iodide, the board said: “We agree with the appellant with respect to this first point, that his disclosure of utilizing sodium iodide is sufficient to support claims requiring that an ‘essential constituent’ of the claimed device is sodium iodide.” However, in regard to the 0.17 mg./cc. limitation, the board declared : “Since the appellants fail to disclose the volume of their tube, we are unable to see where they are able to find support for a value which is dependent on such volume. . . . ”

In response to the board’s decision and opinion, appellants submitted an affidavit, a petition for reconsideration, and an amendment containing a proposed claim 23 to overcome the board’s rejection. The petition asked that the board reconsider its decision and allow the claims or enter claim 23 to overcome the rejection. The amendment was preceded by a request that it be considered by the board or remanded to the examiner under MPEP 1214.01(B).

The board’s decision on the petition for reconsideration stated that its comments concerning the “0.17 mg./cc.” limitation were merely “an additional reason” for affirming the examiner’s rejection based on “new matter.”

We believe the prosecution history of this application clearly shows that the examiner was only concerned with an alleged failure to disclose sodium iodide. However, after finding for appellants on this issue, the board proceeded to sustain the rejection on a wholly different basis. Although the same phrase (“sodium iodide . . . present in amount of at least 0.17 mg./cc. of arc tube volume”) was questioned by both the examiner and the board, the bases of their rejections were wholly different, necessitating different responses by appellants.

To attempt to deny appellants an opportunity to provide a different and appropriate response to the board’s rejection by saying that the board merely advanced “an additional reason” for affirming the examiner begs the question and does not satisfy the administrative due process established by Rule 196(b) of the Patent Office. 73 C.J.S. Public Administrative Bodies and Procedure § 60. What we said in In re Wiechert, 54 C.C.P.A. 957, 370 F.2d 927, 152 U.S.P.Q. 247 (1967), is particularly apposite:

We turn now to the issue raised by the “position isomer” first noted in the board’s opinion. The board’s language, quoted above, in noting the isomer, appears to us to be a rejection of the appealed claims on the ground the claimed compounds are obvious, under 35 U.S.C. § 103, in view of the disclosed isomer. For reasons to be stated below, we find this to be a ground of rejection which was specifically pointed out for the first time by the board and, under the facts of this case, we believe that appellant should be afforded an opportunity to respond to that rejection. In view of the board’s failure to do so, we remand the case to the board for further proceedings. Cf. In re Yale, 52 C.C.P.A. 1688, 347 F.2d 995, ....

See also In re Eynde, 480 F.2d 1364, 178 U.S.P.Q. 470 (C.C.P.A.1973), In re Moore, 58 C.C.P.A. 1340, 444 F.2d 572, 170 U.S.P.Q. 260 (1971), In re Echerd, 471 F.2d 632, 176 U.S.P.Q. 321 (C.C.P. A.1973) and In re Bulina, 53 C.C.P.A. 1275, 362 F.2d 555, 150 U.S.P.Q. 110 (1966).

In view of the foregoing, we hold that the board’s action constituted a new rejection within the contemplation of Patent Office Rule 196(b) and MPEP 1214.01(B). Accordingly, while we express no opinion on the propriety of the board’s rejection of the claims because of the “0.17 mg./cc.” limitation, the case must be remanded to the board to allow appellants full opportunity to respond to the new rejection.

MINIMUM 580 °C. TEMPERATURE

With respect to this limitation, the board stated: “While it is true that this temperature falls within the appellants’ range of operation (400-700°C.), there is no basis in the original disclosure to limit operation of the device within a subportion of this range (i. e., 580°C. and higher).” Thus, the board misstated appellants’ range, which is 450 to 700°C.

Appellants’ specification reads: “The arc tube 12 is provided with a filling of mercury in a quantity such as to vaporize completely when a pressure in the order of one half to several atmospheres is reached during normal lamp operation at temperatures of 450 to 700°C.” (Emphasis supplied.)

Although describing a minimum temperature of 580° C. on the arc tube when the lamp is operated, the Edris patent also states that some of the iodides in the filling will condense at “the coolest portion” of the arc tube during operation; that “The charge of mercury is present in predetermined amount so that when the mercury is fully vaporized during operation of the lamp, the proper voltage drop across the lamp and power input to the lamp will be realized”; and that the mercury charge will be heated to a “fully vaporized condition.” (Emphasis supplied.)

We believe a reading of the specification and the Edris patent indicates that vaporization of the filling is what is important, and this conclusion is reinforced by the board’s holding that the dropping of the minimum 580° C. temperature limitation from claim 21 (which calls for a minimum temperature “sufficient to vaporize”) did not constitute “new matter.”

The foregoing compels the conclusion that the operating temperatures of appellants’ invention and the Edris patent serve the same purpose (vaporization) and that substantially the same invention is involved. Appellee cites Storchheim v. Daugherty, 56 C.C.P.A. 1147, 410 F.2d 1393, 161 U.S.P.Q. 679 (1969), but we think that Hall v. Taylor, 51 C.C.P.A. 1420, 332 F.2d 844, 141 U.S.P.Q. 821 (1964), where the ranges involved were held not to define different inventions, is in point. There we said:

While we realize that all limitations of a claim must be considered in deciding what invention is defined, it is futile merely to compare quantitatively range limits and numbers set out in counts with range limits and numbers disclosed in an allegedly supporting specification. Closer scrutiny is required to get at the essence of what invention the count purports to define.” (Emphasis in original).

See also Den Beste v. Martin, 45 C.C.P. A. 798, 252 F.2d 302, 116 U.S.P.Q. 584 (1958).

Ex parte O’Reilly, 162 U.S.P.Q. 499 (PO Bd. App.1968), also cited by appel-lee, involved a “critical limitation” found by the board, which merely allies that case with Storchheim.

Finally, we note that, under Rules 204, 205, and 206 of the Patent Office, MPEP 1101.02 specifically authorizes , action similar to that taken here by appellants. Section • C.I. (b) thereof sets forth an example of a patent claim with a range of 10-80. In attempting to provoke an interference, the applicant is al-

lowed to present a claim to a temperature range of 20-80, notwithstanding that his specification discloses a range of 20-90.

We hold, therefore, that no “new matter” has been claimed by appellants in copying the minimum operating temperature of the Edris patent.

The decision of the board is reversed and the case remanded for proceedings in accordance with this opinion.

Reversed and remanded.

      . Serial No. 230,944, filed October 16, 1962, for “Electric Discharge Device” a continuation-in-part of application serial No. 209,974, filed July 13, 1962.

      . 3,398,312, issued August 20, 1968, for “High pressure vapor discharge lamp having a fill including sodium iodide and a free metal,” on application serial No. 516,200 filed November 24, 1965, which is a continuation-in-part of serial No. 317,508 filed October 21, 1963.

      . Among other things this provides:
      “Where the Board’s decision completely removes the examiner’s rejection as to one or more claims and substitutes a new one under Rule 196(b), the applicant . . . may amend the claims involved or substitute new claims to avoid the art or reasons adduced by the Board. . . .”

      . The rule provides: “Should the Board of Appeals have knowledge of any grounds not involved in the appeal for rejecting any appealed claim, it may include in its decision a statement to the effect with its reasons for so holding, which statement shall constitute a rejection of the claims. The appellant may submit an appropriate amendment of the claims so rejected or a showing of facts, or both, and have the matter reconsidered by the primary examiner. . . . The applicant may waive such reconsideration before- the primary examiner and have the case reconsidered by the Board of Appeals upon the same record before them.”


author: .MARKEY, Chief Judge. MILLER, Judge, dissenting, with whom RICH, J., joins.

text:
    60 CCPA
    AUTHENTIC FURNITURE PRODUCTS, INC., Appellant, v. The UNITED STATES, Appellee.
    Customs Appeal No. 5518.
    United States Court of Customs and Patent Appeals.
    Nov. 15, 1973.

      Leonard M. Fertman, Stein & Shos-tak, Los Angeles, Cal., Attys. of record, for appellant.
    Irving Jaffe, Acting Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, Velta A. Melnbrencis, New York City, for United States.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   .MARKEY, Chief Judge.

This appeal is from the decision and judgment of the United States Customs Court, First Division, 68 Cust.Ct. 204, 343 F.Supp. 1372, C.D. 4362 (1972) overruling appellant’s protest to the classification of imported pieces of wooden bunk beds as parts of furniture under TSUS item 727.40, as modified. Appellant, relying on General Interpretative Rule 10(h), claims the proper classification to be as furniture other than chairs under item 727.35, as modified.

The merchandise consists of wooden headboards, footboards, posts, ladders and guardrails in unassembled condition. We agree with the lower court that the record establishes that siderails, which are not imported, are necessary to make the bunk bed units usable to the ultimate consumer. The issue lies in whether the absence of these siderails necessitates classification of the imported pieces as parts of furniture.

We find no error in the lower court’s holding that parts of an article may be classified as the unfinished article itself only when the imported pieces constitute a substantially complete article, albeit in unassembled condition. We fully agree that the definition of “unfinished’' found in American Import Co. v. United States, 26 CCPA 72, T.D. 49612 (1938) and carried over to the TSUS in Finn Bros., Inc. v. United States, 454 F.2d 1404, 59 CCPA 72, C.A.D. 1042 (1972) can be, and has been, employed only to distinguish, in the sense of the tariff schedules, the status of an unfinished article from the material of manufacture. The so-called “dedication to use” test found in those cases makes no distinction whatsoever between the unfinished article and parts thereof.

Appellant argues before us that the “substantially complete” test of the lower court fails to provide sufficient guidelines for determining proper classification and proposes in its stead a “dedication to use” test applied “with reason.” Recognizing that adoption of a naked “dedication to use” test would effectively eliminate competing parts provisions, appellant advances a modified version, namely, dedication to use in conjunction with an evaluation of the quantum, utilitarian function, and other relevant characteristics of the imported pieces.

We cannot, however, agree that such a test is more definitive than that set forth by the lower court. Nor can we find any support for this interpretation of the import of Rule 10(h), in particular with respect to the classification of furniture, in the cases cited by appellant. Both Hurricane Import Co. v. United States, 58 Cust.Ct. 541, C.D. 3046 (1967) and Abercrombie & Fitch Co. v. United States, 10 Cust.Ct. 382, Abs. 47958 (1943) were cases involving classification under the Tariff Act of 1930. There was no counterpart to Rule 10(h). The furniture provision itself drew the distinction between “wholly or - partly finished” furniture and “parts thereof” rather than between “finished or not finished” and “parts.”

Appellant’s final contention is that, even if the “substantially complete” test be the proper criterion, the imported merchandise meets that standard in that the major and most significant parts have been imported and are sold as imported. It is emphasized that the side-rails necessary to hold the bed upright are often offered for sale separately or even supplied by the consumer himself and a comparison is drawn with the incomplete furniture classified as “partly finished” in the Abercrombie and Hurricane cases.

Considering as we must, however, the goods in their imported form, we find the missing siderails to be an essential item. We thus find no basis for overturning the lower court’s finding that the imported pieces constituted less than a substantially complete bunk bed. We consider the application of the test, whereby the absence of a substantial or essential part precludes classification as the unfinished article itself, to be well founded in the case law so ably discussed by the lower court and aptly followed in the present case.

The decision and judgment of the Customs Court is affirmed.

Affirmed.

MILLER, Judge, dissenting, with whom RICH, J., joins.

I believe the majority opinion not only misstates the test to be applied in determining when parts of an article cannot be classified as the unfinished article itself, but misapplies the test it states.

The test is not, as the majority opinion states, the absence of a substantial or essential part, but, rather, the absence of a substantial and essential part. Twin Pin Co. of U. S. A., Inc. v. United States, 24 Cust.Ct. 430, Abstract No. 54254 (1950).

The issue is well stated by the majority opinion, namely: whether the absence of the side rails necessitates classification of the imported merchandise as “parts of furniture.” However, in applying the test, it proposes to consider the word “essential” only in the functional rather than the commercial sense, namely: that without the side rails the merchandise in question is not “usable” as bunk beds to the ultimate consumers.

Following this approach, nuts and bolts to hold the parts of a bed together to make it “usable” would be considered “essential,” so that their absence

would preclude classification of such parts as “furniture” rather than “parts of furniture” — a result that I cannot perceive this court permitting. The side rails here, as pointed out by appellant, act as the hardware holding the merchandise together and are analogous to nuts and bolts. Moreover, it appears from the record that in the ease of many consumers the merchandise was “usable” (in the “commercial sense”) because they already had side rails. Thus, on cross-examination, a sales representative for appellant (and former buyer in the bedding department of Macy’s, California) testified:

Q. Are you saying that an ordinary bed is sold without side rails?
A. It could be sold either way. It can be sold with side rails; it can be sold without. Many times we have customers that come in who have side rails, and we sell them without side rails. .

The case of Abercrombie & Fitch Co. v. United States, 10 Cust.Ct. 382, Abstract No. 47958 (1943) is clearly in point. There the articles, each of which comprised only the base of a table, were held by the Customs Court to be dutiable as “partly finished tables rather than parts of tables.” The court pointed out “that the greater part by far of the table to be finished is incorporated in each of the imported articles” and that the addition of a glass top after importation made the articles “suitable for use as tables.”

The majority opinion apparently seeks to distinguish the Abercrombie case by noting that it involved the Tariff Act of 1930, wherein the furniture provision itself drew the distinction between “wholly or partly finished” furniture and “parts thereof”; whereas this case involves the distinction under the Tariff Schedules, including Rule 10(h), between “finished or not finished” furniture and “Parts of furniture.” But the Abercrombie case cannot be so distinguished. The court there held that the articles were not parts, but partly finished tables, even though the tops were obviously essential (in the functional sense) to make them usable as tables. So, too, this court should hold that the merchandise in question is not parts, but furniture (finished or not finished), even though side rails are essential (in the functional sense) to make it usable as bunk beds.

Perhaps my chief difficulty with the majority opinion is that it simply ignores the clear, corroborated, and uncon-troverted evidence before the Customs Court regarding practice in the furniture trade which, in the absence of a contrary indication by the Congress, is controlling. Nylos Trading Company v. United States, 37 CCPA 71, C.A.D. 422 (1949) and cases cited therein. That practice was to market the merchandise as substantially complete bunk beds. Thus, appellants’ sales representative, again on cross-examination, further testified :

Judge Watson: Are you familiar with how beds are offered for sale to the ultimate consumer?
The Witness: Yes, I am.
******
Judge Watson: Are side rails offered separately with bunk beds — and when I say, “are they offered separately”: are they sold separately?
The Witness: Yes, sir.
Judge Watson: Is there any additional price over and above that of the bed that is sold ?
The Witness: Yes, there is.
This same witness, on cross-examination by government’s counsel, then testified:
Q. In your opinion, it is a complete bed without a side rail ?
A. Using the terminology of the word “bed” in the trade, yes.

No witnesses were produced by the government.

Pages from a Sears & Roebuck catalog (appellant’s Exhibit 1) fully corroborate the above testimony. On one page is the designation:

BUNK BEDS TO SUIT YOUR EVERY NEED

On the same page appears the following:

Bunk Beds include head and foot-boards, guardrail ladders.
Bunk Outfits include above items plus steel link springs and your choice of 152-coil inner spring, or 4-inch Sero-foam polyurethane mattress. With cotton and rayon covers.

The distinction between “beds” and “outfits” appears throughout the price list. Three different “Bunk Beds” (without rails) are listed: a double-decker at $54.95; a triple-decker at $69.95; and another double-decker at $99.95. Each listing refers to the following item:

Rails for Bunk Beds without springs

These are priced at $4.99 per set of two, with the notation that 1 set is needed for each bed.

From the standpoint of price relationships alone, honest differences might arise over whether the rails constitute a “substantial part.” But from the standpoint of the furniture trade, which is controlling, they are not so substantial as to preclude marketing the merchandise in question to dealers and the ultimate consumer as “Furniture” rather than “Parts of furniture.”

In view of the foregoing, I conclude that appellant has sustained its burden of proving that classification of the merchandise in question as “Parts of furniture,” under 727.40 of the Tariff Schedules, is erroneous and that classification as “Furniture other than chairs,” whether finished or unfinished, under item 727.35 of the Tariff Schedules and Rule 10(h), is proper.

I would reverse.

      . 10. General Interpretative Rules. For the purposes of these schedules
      * * * **
      (h) unless the context requires otherwise, a tariff description for an article covers such article, whether assembled or not assembled, and whether finished or not finished ;
      * * * * *


author: ALMOND, Senior Judge.

text:
    Application of Wilhelm Johann MENIG.
    Patent Appeal No. 8996.
    United States Court of Customs and Patent Appeals.
    Sept. 13, 1973.
    Linton & Linton, Washington, D. C., attorneys of record, for appellant; Ulle C. Linton, Washington, D. C., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; John W. Dewhirst, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the rejection of claims 15-18 of appellant’s application for patent entitled “Nail Plate for Joining Articles, Especially Wooden Components.” We affirm.

The invention will be apparent from Figs. 1 and 2 of the drawing, sectional and plan views, respectively, taken in connection with claim 15, which is reproduced with reference characters inserted :

15. A nail plate for joining articles, in particular for joining wooden components, said nail plate comprising an anchor plate [1] of foamed synthetic resin and a fibreglass mat, both impregnated with synthetic resin and a plurality of pointed nails [2] rigidly embedded in the synthetic resin in said anchor plate, the points of said nails projecting perpendicularly on both sides of said plate.

In use, the nail plate is placed between two articles, such as wooden components, and the articles are pressed together forcing the pointed ends of the nails into both articles.

Claims 16, 17 and 18 are dependent on claim 15, adding, respectively, that the foamed synthetic resin is a polyester, that the rows of nails are staggered and that the nails are of round section and are made of steel.

The references are:

Smith (Canada) 711,849, June 22, 1965, and DeGruyter (Great Britain) 313,962, February 13, 1930.

The Canadian patent discloses a nail plate connector illustrated in Fig. 1 below:

The plate comprises a relatively thin sheet metal plate 12, through which a plurality of pointed nails extend on both sides of the plate. The connector may be coated with suitable resins for the purpose of locking the nails in position in the plate and protecting against rust. The patent teaches that the plate itself does not carry any of the load imposed on the joint with the result that the strength of the joint does not depend on the thickness of the plate.

The British patent also relates to a connector for wooden components. The connector comprises a metal plate having triangular teeth formed from portions of the plate bent to project alternately from opposite sides of the plate and shows the groups of teeth in staggered rows.

Claims 15, 16 and 18 were rejected by the examiner as obvious in view of the Canadian patent, noting that the only difference between the claimed plate and the reference plate was in the specific material from which the anchor plate was formed. Claim 17 was similarly rejected further in view of the British patent with its showing of the teeth arranged in staggered rows. In affirming the examiner’s rejection under 35 U.S.C. § 103, the board asserted that the claimed plate materials were known and held their use in lieu of the plate material of the reference to provide no un-obvious advantages or unexpected results.

Appellant does not contend that fiberglass-reinforced resin structural elements were not known, but argues that the use of the selected materials in his anchor plate offers advantages that (1) the nails can be driven through it without first making openings, (2) the plate cannot rust and acts to seal the joint between the wood members being joined against' moisture to prevent rusting of the nails, (3) plates of desired sizes may be cut from long lengths and widths, (4) retention of the nails is aided by the impregnation of the plate with resin, and (5) the plate can be compressed between the joined wood members. That argument appears to be essentially the same as was presented before the Patent Office and we find no error in the board’s conclusion that appellant has advanced no unobvious advantages or unexpected results.

We find that the Patent Office has established a case of prima facie obviousness in view of the Canadian patent. The advantages argued by appellant, to the extent they are not clearly suggested by the Canadian patent, appear to be attributable solely to known or expected characteristics of the substituted material. Beyond setting out these advantages, appellant has not advanced any argument in support of the conclusion that they are unobvious and there has been no evidence submitted probative of the criticality of appellant’s material which would rebut the case of prima facie obvious. See In re D’Ancicco, 439 F.2d 1244, 58 CCPA 1057 (1971).

The use of staggered rows of nails in the reference device, as presented in claim 17, would clearly have been obvious, particularly in view of the British patent. Claims 16 and 19 were not argued separately by appellant and plainly require no additional discussion.

The decision is affirmed.

Affirmed.

      . Serial No. 745,720 filed July 18, 1968, and claiming priority based on a Swiss application filed October 19, 1967.


text:
    Herward A. VOGEL, Appellant, v. Michael E. B. JONES, Appellee.
    Patent Appeal Nos. 8868, 8869.
    United States Court of Customs and Patent Appeals.
    Oct. 11, 1973.

      Stanley G. DeLaHunt, St. Paul, Minn., attorney of record, for appellant; Frank A. Steldt, William G. Ewert, Terryl K. Qualey, Alexander, Sell, Steldt & DeLa-Hunt, St. Paul, Minn., of counsel.
    Paul N. Kokulis, Edgar H. Martin, Willliam T. Bullinger, Cushman, Darby & Cushman, Washington, D. C., attorneys of record for appellee.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.
   ALMOND, Senior Judge.

These appeals are from decisions of the Patent Office Board of Patent Interferences awarding priority to appellee (Jones) as to all counts involved in two interferences, Nos. 95,807 and 95,80s. We affirm.

Appellant (Vogel) is involved in these interferences through his application serial No. 273,290 filed April 16, 1963. Jones became involved through his application serial No. 320,508 filed October 31, 1963 and claiming priority based on two earlier British provisional applications, No. 41,976 (Brit. 41976) filed November 6, 1962 and No. 10,592 (Brit. 10592) filed March 18, 1963.

The Subject Matter

Interference No. 95,807 involves a single count directed to a polymer. It reads as follows:

1. A substantially linear thermoplastic polyarylene polyether composed of recurring units having the formula

Interference No. 95,808 involves the following two counts:

1. A process for the production of polyarylsulfones which comprises heating, in the presence of a catalytic amount of a halide of iron, a mixture of a compound of the formula:

R(S02X)y

and a compound of the formula:

R'(S02 X)w

wherein R and R' are respectively y-valent and w-valent aromatic radicals, containing at least two aromatic rings, free from substituent- and hetero-nitrogen atoms, not more than one of the said valence bons being located on any one of said aromatic rings; y is an integer from 1 to 2, w is a digit from zero to 1, and when y is 2, w is zero, and when y is 1, w is 1; and X is a halogen of the group consisting of chlorine and bromine.

2. Thermoplastic, substantially linear polymers consisting essentially of units having the structure:

and units having the structure:

wherein Ar is a divalent radical formed by the removal of one hydrogen atom from each aromatic ring of one of the following:

the ratio of —O— linking groups to —S02 —linking groups in said polymer being between 1:9 and 1:1.

Originally interference 95,807 involved a third party who has not appealed the board’s decision relative to that interference. Therefore, pursuant to a motion by Vogel, the records in the two interferences were consolidated for purposes of appeal.

Proceedings Below

By virtue of his earlier United States filing date, Vogel was made senior party in each interference when it was declared. However, Jones, who claimed the benefit under 35 U.S.C. § 119 of the filing dates of the British applications for priority purposes, moved to shift the burden of proof to Vogel in each case.

These motions were opposed by Vogel on two grounds: one was that the British applications did not support the counts in issue. As an alternative ground, he argued that Jones was not entitled to rely upon these applications for priority purposes regardless of their content. In support of the latter ground, Vogel alleged that Imperial Chemical Industries Ltd. (ICl), the assignee of Jones’ United States and British applications involved in this case, also owned a British patent, naming John Dewing as inventor, that had an even earlier filing date than Jones’ British applications. According to Vogel, the Dewing patent disclosed the same subject matter as the counts and in such a circumstance Jones should be precluded from obtaining the benefit of the filing dates of the applications relied upon by him for priority purposes.

Vogel’s position necessarily revolved about the relationship between ICI and Jones vis-a-vis that between ICI and Dewing. In his oppositions to the motions to shift the burden of proof, Vogel argued that Jones must be considered to have had knowledge of the subject matter of the Dewing patent in view of these relationships. Therefore, in his view, Jones cannot be regarded as the first inventor of the subject matter of the counts nor entitled to claim the benefit of the British applications for priority purposes.

The- primary examiner concluded that Brit. 41976 did support the counts and granted Jones’ motions to shift the burden of proof. He made no comment on Vogel’s contention that the identity of ownership as to the Dewing patent and Brit. 41976 precluded Jones from relying upon it for priority.

Having failed in his efforts to oppose, the motions to shift the burden of proof, Vogel took testimony to establish a date of invention earlier than November 6, 1962, the filing date of Brit. 41976. It was in this posture that the two interferences went to final hearing before the board. The board subsequently made the following holdings:

1. Brit. 41976 discloses the subject matter of the counts in issue.
2. It is of no consequence that ICI owned the Dewing patent and Jones’ British applications. In its view the controlling point was that Dewing was not Jones rather than the identity of ownership.
3. Vogel did not sustain his burden of proof by showing an actual reduction to practice of the invention before November 6, 1962.
4. Vogel did not prove conception of his invention before November 6, 1962 coupled with diligence to the filing date of his application.

Issues on Appeal

In his brief before this court, Vogel summarizes that which he regards to be reversible error committed by the board in the following way:

1) In holding that ICI’s British provisional 41976 supports the polymer counts viz., the single count of interference ’807 and count 2 of interference ’808;
2) In holding that Jones is not barred under 35 U.S.C. § 119 from relying on British provisional 41976, even though Jones’ assign, ICI, theretofore, on May 4, 1960 filed British provisional 15717, and on May 4, 1961 filed complete application 15717;
3) In holding that Vogel’s evidence does not establish -conception prior to the November 6, 1962 filing date of said ICI British provisional 41976;
4) In holding that Vogel’s evidence does not establish diligence during the period of November 6, 1962 through April 16, 1963, because of “four periods of unexplained inactivity” totaling 23 days; and
5) In awarding priority to Jones.

Vogel also indicates in his brief that he does not contend that Brit. 41976 has inadequate support for the method count (count 1) of interference 95,808 and that he acquiesces in the board’s holding that he had not proven an actual reduction to practice prior to November 6, 1962.

Opinion

35 USC 119 Does Not Bar Reliance By Jones Upon Brit. 41976.

Vogel now contends that on its face 35 U.S.C. § 119 precludes Jones from relying upon Brit. 41976 for priority. In support of this contention, Vogel looks to the language of § 119 which reads, in pertinent part, as follows:

§ 119. Benefit of earlier filing date in foreign country; right of priority

An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this -country is filed within twelve months from the earliest date on which such foreign application was filed * * [Emphasis added.]

Vogel’s position is that Brit. 41976 is not the “first filed” application referred to in § 119. Instead, if one assumes that the Dewing patent discloses the subject matter of the counts, a point considered irrelevant to its decision by the board, the application underlying that patent was the “first filed.” According to him, ICI was, under British practice, not merely Jones’ and Dewing’s assignee but the actual applicant for patents on their inventions. Therefore, of necessity Brit. 41976 must be considered the second filed application by ICI, Jones’ as-signee, for the same invention covered by the counts and therefore cannot be relied upon for priority under § 119.

For his part, Jones argues that § 119 gives rise to a right of priority that is personal to the United States applicant. Therefore, an application made by an inventor’s assignee in a foreign country cannot be the basis for priority unless made on his behalf. Carrying this logic one step further, the existence of an application made by that assignee in a foreign country on behalf of one other than the United States inventor is irrelevant to his right of priority based on applications made on his behalf. We agree.

The predecessor statute (R.S. 4887) to § 119 was enacted on March 3, 1903 (32 Stat. 1225) to implement the Paris Convention to which the United States was an adherent. Unlike § 119, that statute did not expressly provide for a right of priority based on applications filed by “legal representatives or assigns” rather than the inventor himself. Nevertheless, it was early recognized that an application made by another could be the basis for a claim for priority by a United States applicant. See, for example, Steel v. Myers, 205 O.G. 1021, 1914 C. D. 74 and De Jahn v. Gaus, 57 App. D. C. 341, 23 F.2d 762 (1927).

This practice arose because it was recognized that in many foreign countries, unlike in the United States, the actual applicant for a patent can be other than the inventor, e. g., an assignee. In light of this, we regard the language in § 119 referring to legal representatives and assigns to merely represent a codification of the actual practice under R.S. 4887. Since under United States law an application for patent must be made by the inventor, that practice was based on the requirement that the foreign application, regardless of the identity of the applicant, must have been filed for an invention actually made by the inventive entity seeking to rely upon it for priority purposes. We think § 119 must be construed to the same end. Therefore, this means that an applicant for a United States patent can rely for priority on the “first filed” application by an assignee on his behalf.

In view of our holding, one caveat is in order. 35 U.S.C. § 115 requires that an applicant for a patent “ * * * shall make oath that he believes himself to be the original and first inventor * * * [of the subject matter] for which he solicits a patent * * *. Our holding in this case presumes that inasmuch as Jones made such an oath, he believed himself to be the first inventor of the subject matter. Certainly no attack has been made upon the validity of that oath.

Brit. 41976 Does Support The Counts.

As pointed out above, Vogel has conceded that Brit. 41976 adequately supports the method count (count 1) of interference 95,808. However, he makes no similar concession with regard to the two remaining counts, both of which are directed to polymers.

Of these two counts, the count of interference 95,807 is the narrower one. The structure of the polymer of that count might be better appreciated by considering the following representation of a polymer substructure, taken from Vo-gel’s brief, made up of two of the recurring units shown in the count:

It can be seen that each aromatic unit,

is linked to its neighbor by

an —O— substituent at one end, called an ether linkage, and an —S02— substit-uent at the other, called a sulfone linkage. Furthermore, it can also be seen that each substituent is separated by four carbon atoms of the aromatic unit. This pattern of substitution on an aromatic unit is known in the art as para substitution.

According to Vogel, a polymer conforming to the requirements of the count can be derived by polymerizing a mixture of diphenyl ether and para, para-diphenyl ether disulfonyl chloride in the presence of a suitable catalyst, usually ferric chloride, according to the following scheme:

The polymer chain can continue to grow in a similar manner, as shown below, wherein the perpendicular broken lines delineate the recurring units of the count:

From this scheme it will be seen that the polymer must arise by the formation of a sulfone linkage between an aromatic unit bearing a sulfonyl halide substitu-ent and the para position of another aromatic unit. This occurs by the removal of the corresponding hydrogen substit-uent of the latter.

By contrast, the polymer of the broader count does not require such a pattern of substitution. By analogy with the scheme shown above, that polymer can be derived by polymerizing para, para'-diphenyl ether disulfonyl chloride with any of the aromatic compounds allowed by the claim without regard to which hydrogen of a given aromatic ring is removed so long as only one from each is removed in the polymerization reaction.

Both counts call for a “substantially linear” polymer. The parties appear to define a linear polymer as one that is not “branched” or “crosslinked.” A “branched polymer” is one where one polymer chain has attached itself to another other than at the end of the latter.

For example, according to Vogel, the polymer of the count of interference 95,-807 may become branched in the manner shown:

Although the nature of a crosslinked polymer is not clearly shown by the parties, it is apparent from discussions in their briefs that such a polymer arises when the free end of one branch of a branched polymer attaches itself to yet another polymer chain at a site other than its end. Branching and crosslink-ing reduce or eliminate the desirable thermoplastic properties of the polymer.

With regard to the narrower count of interference 95,807, the board found support in Brit. 41976 for that count wherein a preferred polymer is described as “having repeating units of the structure

where P and P1 are each oxygen atoms * * *."

It will be seen that this substructure has the necessary para substitution pattern. The board’s opinion also alludes to statements in the specification to the effect that the polymers are thermoplastic and it points to examples wherein polymerization reactions are described using the same monomers and catalyst that Vogel has alleged to be precursors to the desired polymer.

Vogel relies heavily upon the language of the count, wherein it requires that the polymer be “substantially linear” and “composed of” the recited recurring unit, for the proposition that Brit. 41976 does not possess adequate support. In his view, the portion of that application relied upon by the board describing the polymer as “having” the recurring unit depicted above is broader than the “composed of” language of the count as it does not preclude other repeating units from being present in the polymer and does not limit the polymer to one that is substantially linear.

In particular, Vogel argues that the process used in the examples relied upon by the board in conjunction with the description of the preferred polymer does not rule out the possibility that the polymerization reaction occurred to give repeating units having ortho and meta rather than, or as well as, para substitution. In his reply brief, he explains this possibility in the following way:

But note from the following depiction of the two materials that five hydrogen atoms are available on each ring (for simplicity shown on one ring) of the second compound with which the chlorine may react to initiate polymerization—

Only if the chlorine of the first compound reacts with, and only with, the hydrogen located in the para position of the second compound (denoted by the dotted rectangular box), can the repeating unit of the polymer count result * * *.
Note, however, that four other hy-drogens on each ring of the second compound are available for reaction, two in the meta position (dotted circles) and two in the ortho position (dotted triangles). Should the chlorine of the first compound react with any of these other competing hydro-gens, the unit recited in the counts does not result. Instead, unwanted [ortho or meta] isomeric units are formed.

Vogel further argues that the portions of Brit. 41976 relied upon by the board do not preclude the occurrence of branched or crosslinked polymers.

This court recently held that a foreign application relied upon for priority purposes must satisfy the requirements of the first paragraph of 35 U.S.C. § 112. See Kawai v. Metlesics, 480 F.2d 880 (CCPA 1973). We view the attack on Brit. 41976 by Vogel as raising two separate issues regarding the adequacy of its disclosure within the meaning of that paragraph of § 112. These are (1) whether there is an adequate description of the invention, i. e., the polymer, and (2) whether there is an adequate description of how to make that polymer. See In re Ahlbrecht, 435 F.2d 908, 58 CCPA 848 (1971).

We have no doubt that Brit. 41976 contains an adequate description of the polymer called for by the count. As the board pointed out, that application describes the basic polymer unit of the count, the necessary monomers and their reaction by way of examples, to form a polymer. There is no suggestion in Brit. 41976, and this was noted by the board, that branching, crosslinking, or incorporation of recurring units into the polymer but that shown would occur.

We think it clear from those portions of Brit. 41976 relied upon by the Board that one skilled in the art would reasonably conclude that a polymer “composed of” the recurring units shown in the count was obtained by Jones. Such a polymer would, of necessity, be substantially linear. Therefore, the language of Brit. 41976 must be regarded as the legal equivalent of that of the count, though not ipsissimis verbis, since it is the “necessary and only reasonable construction” to be given it. See Wagoner v. Barger, 463 F.2d 1377, 59 CCPA 1213 (1972).

Vogel’s assertion that the- process described in Brit. 41976 as leading to the polymer of the count of interference 95,-807 will, in fact, result in a polymer of a different structure must be regarded as an attack on the adequacy of that application to describe how to make the invention. Clearly enough, Brit. 41976 does not actually set forth criteria by which it can be determined from that application itself that a polymer within the count was actually obtained. However, from its opinion we think it clear that the board felt that the process described by Jones in Brit. 41976, if followed, would inherently produce such a polymer. We agree with that conclusion.

The conditions for polymerization described in Brit. 41976 essentially duplicate those in Vogel’s own application but for one important particular. Reactions described by Jones in Brit. 41976 employed temperatures above 250° C., whereas Vogel’s application recommends that temperatures not exceeding 250° C. be used. However, experimental work described by Jones, partly in Brit. 10592 and partly in a publication co-authored by him appearing in Journal of Polymer Science, Part C, No. 16 (1967) at page 715, demonstrates that at a temperature above 250° C. branching and crosslink-ing reactions can occur during polymerization to an extent which increases as the temperature is increased.

Vogel relies on these descriptions as proof that a polymer conforming to that of the count would not be obtained if Jones’ procedure were followed. The board disagreed because Jones’ procedure included a treatment of the polymer product obtained with a solvent which, in the board’s view, would dissolve that portion which was substantially linear. The soluble portion is ultimately recovered from the solvent and it is this material which the board felt was within the scope of the count. The board supported its conclusion by pointing to Vo-gel’s own application wherein the point is made that solubility of the polymer is evidence that it is substantially linear and noncrosslinked.

Vogel strenuously objects to this use of his application to prove that Brit. 41976 would inherently support the count. One ground of objection is the propriety of doing so. On this objection, it is apt to point out that the party seeking to rely upon an earlier application for priority purposes has the burden of showing that the application supports the count in issue. See Wagoner v. Barger, supra, and cases cited therein. However, this does not mean that the party having that burden must affirmatively produce all the evidence necessary to carry it.

Assuming its relevancy, evidence introduced by one party is available to the other for the purpose of supporting elements of its case. Therefore, we see no impropriety in the board’s relying upon portions of Vogel’s application tending to show that Brit. 41976 inherently supports the count of interference 95,807.

Vogel also objects to reliance upon his application on the ground that it is not relevant. His position seems to be that, because his polymer-producing reactions are carried out below 250° C., the resulting polymer is so different from the polymer obtained by Jones, his solubility test is not applicable to show inherency in Brit. 41976. We find no merit to this.

Assuming for the moment that Jones does obtain the para oriented polymer of the count contaminated by the products of branching and crosslinking, it is difficult to see the logic of Vogel’s position. If solubility is the criterion by which he can conclude his polymer is substantially linear, the soluble portion of a polymer product containing some nonlinear polymer must also be substantially linear.

Vogel also contends that the board erred in relying upon the solubility test shown in his application for the reason that, in his view, the same test was not accepted by the board as proof of an actual reduction to practice by him. On this point we agree with appellee who points out that the board’s real objection was not the relevance of the test but the absence of corroboration.

In reaching our decision, we have not ignored that Vogel asserts that the procedure of Brit. 41976 does not preclude the formation of a linear polymer made up of units having either meta or ortho substitution. Such a polymer, though linear, would not be within the count. However, such polymer units are not mentioned by Vogel or Jones in their respective applications and from the record as a whole it would appear that their occurrence was not considered by either to be a serious possibility.

We do note that, although Brit. 41976 does suggest that substituents on the aromatic ring undergoing reaction do affect which hydrogen atom is substituted, and this is more than Vogel’s application does, from its context it would appear that an ether linkage such as is present in diphenyl ether would direct substitution at the para position.

So far we have addressed ourselves to the question of support in Brit. 41976 insofar as it relates to the narrower count of interference 95,807. Most of that discussion is also pertinent to the broader count of interference 95,808, and we conclude that Brit. 41976 possesses adequate support for it.

The specification of Brit. 41976 describes these polymers as thermoplastic materials. It also indicates that para, pcmP-diphenyl ether disulfonyl chloride can be reacted with one other monomer and such reactions are described in pertinent examples. The same solubility test applicable to the specific polymer of interference 95,807 appears to be adequate to show that polymers within the scope of this broader count would be obtained if the procedure of Brit. 41976 is followed. In view of these facts, we find that there is adequate support for a count calling for “Thermoplastic, substantially linear polymers consisting essentially of” the recited units.

Vogel Has Not Established Conception of His Invention Prior to November 6, 1962.

On this appeal, Vogel relies upon his Exhibit 9, introduced into evidence below, as establishing conception of the subject matter of the counts prior to November 6, 1962. That document entitled “Second Quarter Report, 1962,” bears the date it was received by the Central Records Unit of the Central Research Department of Vogel’s assignee, Minnesota Mining and Manufacturing Co., Inc. That date was September 13, 1962.

In his briefs before the board in these two interferences, Vogel listed Exhibit 9 with Exhibits 1, 8, and 10, testimony of Vogel and two others, and the entire

record as evidence of conception. In those briefs Exhibit 9 is not otherwise mentioned. Heaviest reliance was placed upon Exhibit 1 and corroborating testimony to establish conception.

The board’s opinions discussed Exhibit 1 and the corroborating testimony but did not refer to “Exhibit 9. Vogel did not petition the board to reconsider its decisions in view of Exhibit 9 and in 92 reasons for appeal in interference 95,-807 and 85 reasons for appeal in interference 95,808, Exhibit 9 is not specifically mentioned.

In view of these factors, we believe that the present attempt to have us reverse the board and hold that Exhibit 9 establishes conception by Vogel raises a new issue. Not having the benefit of the board’s views on this issue, we will not consider it now. Cf. In re Conrad, 439 F.2d 201, 58 CCPA 1013 (1971).

Because of our decision regarding Vo-gel’s evidence of conception, we need not consider whether diligence was exercised from the date of the alleged conception to the filing of his application.

For the foregoing reasons, the decision of the board is affirmed.

Affirmed.

      . Both interferences were declared February 17, 1967.

      . Brit. 927,822 filed May 4, 1960 (S.N. 15,-717), complete specification filed May 4, 1961 and published June 6, 1963.

      . Because of its issue date this patent could not be a reference under 35 U.S.C. § 102 against the Vogel application.

      . Convention of Paris for the Protection of Industrial Property 20th March 1883.

      . For pre-1953 law see Kennedy v. Hazelton, 128 U.S. 667, 9 S.Ct. 202, 32 L.Ed. 576 (1888). For the law after January 1, 1953, see 35 U.S.C. § 111 and the limited exceptions in 35 U.S.C. §§ 117 and 118.

      . See Footnote 7 on page 1074.

        7. By contrast, an aromatic unit having two substituents separated by 3 carbon atoms is meta substituted. An aromatic unit bearing substituents on adjacent carbon atoms is ortho substituted.

      . In the system used by organic chemists to depict the chemical structure of aromatic compounds, each corner of the hexagon represents a carbon atom unless otherwise indicated. Furthermore, unless another sub-stituent is shown, the presence of hydrogen (H — ) as a substituent on a carbon atom is inferred. The straight lines of the hexagon represent chemical bonds between elements. Thus benzene, the simplest aromatic compound, may be represented by the following equivalent chemical formulae: