author: RICH, Judge.

text:
    Application of Roger A. MacARTHUR and Anthony L. Garnero.
    Patent Appeal No. 8880.
    United States Court of Customs and Patent Appeals.
    Sept. 13, 1973.
    Keith V. Rockey, Herman Hersh, McDougall, Hersh & Scott, Chicago, 111., for appellants, George A. Degnan, Arlington, Va., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jack E. Armore, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the rejection of all 11 claims in appellants’ application, serial No. 657,917, filed August 2, 1967, for “Method for the Preparation of Composite Panels of Interfused Expanded Per-lite.” We affirm.

The Invention

Appellants’ invention is a method of making insulating structural panels of expanded perlite. Perlite is volcanic glass which contains silica, alumina, alkali metal oxides as well as small amounts of oxides of iron, calcium, and magnesium, and about 2 to 5% by weight of entrapped water. When per-lite particles are heated to a temperature of about 1600 to 2200° F., the water vaporizes and causes expansion of the perlite, leaving it in an expanded porous state. Interfusion of the expanded particles to form a rigid mass occurs when a mass of expanded particles is heated to a pyroplastic glassy state in the range 1200° F. to 2400° F. To preserve the porosity, appellants add a highly absorbent carrier that is soaked in an aqueous solution of inorganic flux such as sodium silicate. The specification discloses that this “makes a small amount of flux available at the surfaces of the perlite particles which are in contact one with another and in an amount sufficient merely to flux the adjacent surface portions of the perlite particles for interfusion at elevated temperature without collapse of the expanded perlite.” The fusion of the contacting surface portions of the particles concurrently with the expansion caused by vaporization of the entrapped water therein forms a rigid mass or panel with good insulating properties since the particle porosity is maintained. Claim 1, with reference numerals inserted and read in conjunction with Fig. 1 below, is representative of the claimed process:

1. The method of producing structural panels of expanded perlite inter-bonded by interfusion between the expanded perlite particles comprising the steps of continuously advancing a for-aminous support [22] in one direction, continuously feeding perlite particles admixed with a highly porous, highly absorbent carrier wet with a liquid composition containing a small amount of an inorganic flux, feeding said mixture [16] onto the support to form a substantially uniform endless layer [34] on the surface thereof, heating [by furnace 14] the layer of perlite particles from the top side to a temperature in excess of 1200° F. but below 2400° F., drawing [by fan 40] a draft [38] through the layer from the bottom side to draw the heat substantially uniformly and quickly through the layer of perlite particles, continuing to heat the perlite particles for a time sufficient to reduce the perlite par-tides to a glassy pyroplastic state concurrently with the expansion of the perlite particles by release of combined water and to agglomerate the adjacent surfaces of the expanded perlite particles by interfusion between the surfaces of the perlite particles in contact one with the other while in their pyroplastic state whereby the expanded perlite particles become interbond-ed by interfusion into a composite structure [slab 18] of expanded per-lite.

Appellants do not separately argue the patentability of dependent claims 2-11 other than by commenting that:

Best results can be obtained when the carrier is a cellulosic material as set forth in claim 5, such as sawdust as set forth in claim 6, which generates the controllable amount of heat to provide uniform temperatures throughout the perlite layer and which, when burned from the perlite layer, leaves voids in the perlite layer, further contributing porosity to the continuous expanded perlite panel.
The Prior Art
The references are:
Greenawalt 1,786,714 Dec. 30, 1930
Parsons 2,341,059 Feb. 8, 1944
Stafford et al.
(Stafford) 2,521,190 Sept. 5, 1950
Perlite, The Wonder Material, Page Converter Company (referred to as "Perlite Article"), Sept. 23, 1949

Greenawalt relates to an apparatus and process for making a lightweight porous mass of fused clay balls that are “approximately the size of a pea.” The process involves coating the moist particles of the mass with a “pulverized fuel” and placing the mass on the grate of a sintering pan. The fuel is ignited and air is drawn through the mass by fans to support the combustion of the fuel. The heat hardens the particles and results in the loss of occluded gases in the balls leaving them “highly porous” while simultaneous fusion occurs at the surface of the balls, causing them to be cemented together in the mass. The resulting mass is crushed and used as an artificial concrete or mortar material in place of crushed stone, gravel, and sand.

We described Parsons in an earlier opinion, In re Garnero, 345 F.2d 589, 590, 52 CCPA 1370, 1371, a case involving one of the present appellants, as follows:

Parsons discloses the production of lightweight, porous, ceramic materials for insulating by passing ceramic particles through a high temperature zone and then fusing the particles in a collecting zone to form a composite structure. Ceramic material such as clay is ground into particles and passed through a furnace. According to the reference:
“The temperature of the furnace and the time allowed for the particles to remain therein are calculated to allow the surfaces of the individual particles to come into a fused or molten state. * * * The particles are collected in a zone of the furnace in a mass, each particle adhering to one or more of the others by virtue of their respective fused surfaces.”
Porosity may be obtained by expansion of gas within the particles. Thus,
“ * * * a combustible material such as sawdust, naphthalene, or other organic material is incorporated into the molded clay mass. The combustible material is then burned out during the firing, and voids are left in the product. Gas-liberating substances are also sometimes incorporated with the clay in order to lend porosity to the resulting product. * * * ”

Parson further states:

“In order further to increase the space between the particles, the addition of fluffing agents such as asbestos or mineral wool, cyanite, and the like is also within the scope of this invention. The fluffing agents may act to further separate the particles either by holding the particles apart mechanically or by liberating gas during the formation of the porous mass, thus increasing the size of the voids between the particles. * * * For low temperature work, asbestos or mineral wool works very satisfactorily. * * * Other suitable mineral fluffing agents are vermiculite * * * and silica, the latter preferably at or above 500° C., at which temperature it has an expanding effect. Gas-producing or gas-liberating materials such as gypsum may be incorporated into the dry mix which, when exposed to the high temperature, will volatilize and form cellular structures within the mass.
“Furthermore, to accelerate the softening of the surfaces and subsequent bonding action, a flux which is easily vaporizable, such as sodium chloride, may be introduced into the furnace * * * ”

Stafford and the Perlite Article— which article is also discussed in In re Garnero, supra — relate to two types of furnaces for expanding perlite particles. These two references disclose that per-lite can be expanded when heated in the temperature range 1500° F. to 2100° F. and 1500° F. to 2200° F., respectively. Stafford discloses the use of a thin layer of fused and expanded perlite particles on the furnace wall to serve as an insulating lining. A water-cooled scraper limits build up of the layer on the wall.

The Rejection

The board’s characterization of the differences between Greenawalt and the invention defined by claim 1, with which appellants agreed, reads as follows:

The principal claim * * * differs from Greenawalt essentially in the use of perlite instead of the various “ar-gillaceous materials” of the reference. It also differs in specifying a temperature range, which is that in which the perlite particles are expanded and plasticized, and in requiring the use of “an inorganic flux” in the preliminary wetting of the perlite particles.

The board held that notwithstanding these differences, Parsons, Stafford, and the Perlite Article, considered with Greenawalt, would have made the claimed subject matter obvious within the meaning of 35 USC 103.

OPINION

Appellants argue that the treatment of the non-expansible clay balls of Greenawalt is “clearly dissimilar and unrelated to the treatment of expansible perlite.” They further contend the use of flux and sawdust by Parsons “does not suggest the use of a carrier wet with a liquid containing flux to facilitate uniform expansion of a layer of particles over the cross-section of the layer.”

With regard to appellants’ first argument, Stafford discloses that:

The temperatures and rate of perlite feed within the combustion chamber are controlled to effect heat softening and rapid expansion or puffing of the softened perlite particles while they are in suspension in the combustion gases. The apparatus is further designed to effect rapid removal of the gas suspension of expanded perlite from the high temperature zone and cooling thereof to harden the expanded cellular product.
Whenever flash heat expansion of perlite takes place while the particles are suspended in a flowing stream of hot gas within a furnace, some of the expanded particles are thrown into contact with the wall lining of the furnace while in heat softened condition, and such particles tend to adhere to the lining and to build up thereon so long as the heat expanding operation proceeds.

The insulating lining on the furnace wall is further described as “consisting of low density heat expanded perlite.” Greenawalt is likewise concerned with forming a composite of interfused particles having voids between the particles which are “highly porous” due to the escape of occluded gases at the same time fusion occurs. Greenawalt also discloses the step of drawing a blast of air through his mass of clay particles to facilitate fusion throughout the mass. It is thus apparant that the similarities between the two materials for the purpose of making a lightweight porous insulator of fused particles would have been recognized by one of ordinary skill in the art, and we agree with the board that any differences between clay and perlite, such as the concurrent expansion and fusion of the perlite, would not have been sufficient to make appellants’ claimed process unobvious.

We also think that the disclosure of Parsons would suggest use of sawdust along with flux to facilitate fusion of the particles in the modified Greenawalt process. Appellants’ method of using the flux and “carrier” (sawdust) apparently differs from that of Parsons in that the reference does not disclose using the flux in an aqueous solution. This arguable difference appears to involve no more than an obvious matter of choice in the manner of using the flux and is not demonstrated to provide any unexpected result or advantage..

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

Affirmed.

      . This application is stated to be a continuation-in-part of application serial No. 524,926, filed February 3, 1966, which was a continuation-in-part of application serial No. 57,171, filed September 20, 1960.


source: Caselaw Access Project

author: ALMOND, Senior Judge.

license: Public Domain

text:
    Application of Lloyd Crosser FELTON.
    Patent Appeal No. 8973.
    United States Court of Customs and Patent Appeals.
    Sept. 20, 1973.

      Pierce, Scheffler & Parker, Washington, D. C., attorneys of record, for appellant; Ralph E. Parker, Washington, D. C., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; R. V. Lupo, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Associate Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Patent Office Board of Appeals sustaining the examiner’s rejection of claims 5 and 8-10 of appellant’s application entitled “Dropper and Stirrer Dispensing A Single Drop.” We reverse.

Invention

Appellant’s invention is depicted in Figs. 1 and 2 of the drawings:

The invention is described in the specification as follows:

In particular, the one-piece article [10] is formed from a tube of resilient, essentially unplasticized, plastic material having hydrophobic properties and being inert to blood or other liquid to be dispensed thereby. One end of the tube is open and is cleanly cut at right angles to the major axis of the tube. It is this open ended part of the tubular piece which constitutes the dropper of the combined dropper-stirrer article. The opposite end is closed, being sealed shut a short distance (e. g., two-thirds to one-third of an inch) from the terminus of the tubular piece; the sealed flat end portion [12], which may lie in the same plane as that in which lies the major axis of the tube, constitutes a paddle-like stirrer for distributing a drop of liquid which has been provided through use of the remote end of the combined dropper-stirrer article.
As mentioned above, the tube is formed, by extrusion, from a resilient, hydrophobic, essentially unplasticized plastic material. Preferably, the specific plastic material used in forming the aforesaid tube is pure virgin polypropylene, but other plastic materials, such for example as polyethylene, and even polyethylene-coated paper, have been found to be operable. Relatively ' hydrophyllie materials, such for example as cellulose acetate or polyvinyl chloride or polyvinyl acetate, are least desirable. The plastic material should be transparent and may be lightly colored or be colorless. The tube has an internal diameter and a wall thickness which — in conjunction with the resiliency of the material itself — conspire to make the tube readily squeezed shut by pressure between a thumb and a forefinger of a technician and to promptly return to original tubular cross-sectional configuration when pressure on opposite sides thereof is released. In the case of one specific formulation of polypropylene, the tube formed therefrom is 5.0 inches in length and has an internal diameter of 0.152 ± 0.0025 inch and a wall thickness of 0.0065± 0.0005 inch, and is adapted to dispense a volume of approximately 0.05 ml. of plasma or serum.

Claim 9 is the broadest claim in the case and reads as follows (subparagra-phing ours)

9. A disposable liquid dispensing device for delivering a single drop of liquid of accurate volume, said dropper
consisting of a unitary cylindrical tube having a uniform wall thickness throughout and formed of a resilient material which is inert to and substantially hydrophobic towards the liquid to be dispensed, which tube is collapsed and sealed shut for a short distance at one end thereof and is open at its opposite end,
the wall of the tube being at its open end cleanly cut across at right angles to the major axis of the tube, said open end part of the tube providing a dropper so sized in relation to the viscosity of the liquid to be dispensed that when the empty tube is squeezed shut intermediate its ends by compression between a thumb and a finger and the open end dipped into a body of the liquid to be dispensed and then the pressure released so as to create a sub-atmospheric pressure within the tube sufficient to draw into the' tube slightly in excess of a single drop of the liquid to be dispensed, and, when the tube has then been withdrawn from the body of liquid and held vertically over a test area and the tube again is squeezed between thumb and finger one single drop of the liquid can be dispensed from the tube.

Claim 8 which depends from claim 9 requires that the article be made of polypropylene and have the dimensions set forth above in the description of the invention. Claim 5 depends from claim 8 and. requires that the article’s collapsed end be shaped so that it can function as a spreader for the dispensed drop.

Claim 10 is an independent claim which reads substantially the same as claim 9 but for the additional limitation that the collapsed end be shaped to function as a spreader.

The article which is primarily intended to be an aid in serological testing can be used, according to the specification, as follows:

In use, the dropper is compressed between thumb and forefinger of the technician, about one or two inches from its sealed end, and is squeezed shut while it is lowered (open end down) into a vertically held blood-collecting tube and the open end immersed in a pool of liquid (e. g., blood plasma) in the lower end of the liquid specimen in the blood-collecting tube. Then, release of pressure on the wall of the dropper creates a sub-atmospheric pressure within the dropper sufficient to draw into the dropper slightly in excess of a single drop of the liquid under test. The dropper is then withdrawn from the collecting tube and is held vertically (open end down) over (but spaced from) a designated test area on a test card, and one drop of test liquid is expressed from the dropper onto such test area by suitably squeezing the control portion of the dropper. Thereupon, the technician turns the dropper about in his hand and, with the paddle-like sealed end of the article, he distributes the drop over the test area. Thereafter, the dropper-stirrer article is discarded.

According to appellant’s specification, serological testing requiring an accurately dispensed drop was formerly carried out by the following process generally known to the prior art:

For delivering a single drop of plasma or serum to the test area of a test card * * *, it heretofore had been conventional to use a glass capillary tube equipped with a rubber bulb for sucking liquid into the capillary. By skilled use of this device it was possible to draw up a small amount of plasma or serum from a blood collecting tube and to deliver a single drop of the liquid to a test spot, whereupon the liquid drop could be distributed over the area of the test spot by stirring it about with a conventional flat-ended toothpick. The rubber bulb could then be drawn off of the used capillary tube and used toothpick could be discarded.

The Rejection

The board affirmed the rejection of the claims under 35 U.S.C. § 103 as obvious over Sands et al. (Sands) in view of Wolman and Gross.

Sands discloses a dispensing device for introducing medicaments into body cavities. The following figure from the patent is illustrative of that device:

In the figure, 1 is an elongated cylindrical tube which, according to the specification, can be made from “* * * any well known material such as paper of various types, rubber, ‘Cellophane,’ thin molded plastics, metal foil and the like.” The specification also indicates that it is desirable that the material be moisture proof and be capable of yielding a fuzzy edge when torn.

The tube is closed by flattening at one end forming end portion 6, filled with a medicament 4 and then provided with a seal 7 of wax or other suitable material. A slide 3 is placed on the flattened end. In use, the sealed end of the tube is torn off, alone score line 8 if provided. The opened tube is inserted into the body cavity and the slide advanced to extrude the contents into the body.

Wolman discloses a bulb of compressible material having the capability of dispensing a predetermined volume of liquid. In its simplest form, the bulb is provided with means which limit the extent to which it can be compressed. Since the bulb is filled with enough fluid for several measured discharges, it is this limitation which determines the volume to be dispensed by the bulb.

Gross describes a fluid dispenser made up of a flexible bottle for a reservoir, a closure plug for the bottle and a tube extending through the plug into the bottle. The fluid is dispensed by squeezing the bottle which forces the fluid out through the tube. There is no provision which would adapt the dispenser to discharge a predetermined amount with accuracy.

Although the board affirmed a rejection under section 103, its opinion also indicates that the invention was considered as anticipated by the structure in Sands within the meaning of 35 U.S.C. § 102. The opinion states:

The structure of Sands et al. before the scoring at 8 and before the introduction of closure material 7 is the same as that recited in the claims on appeal.
In claims 9 and 10 appellant attempts to define the size of his tube in terms of function and with respect to the viscosity of the dispensed liquid. The liquid is properly not set forth as a positive element of the claims. The viscosities of various liquids may differ greatly from each other. Recitation of the size of the open end part of the tube in relation to the viscosity of the not positively claimed liquid is at best a limitation of questionable definiteness. Cf. In re Law, 49 CCPA 1157, 303 F.2d 951, 782 O.G. 286, 1962 C.D. 395, 133 USPQ 653. Characteristics which are identifiable only in the use of the structure constitute no definite distinction of the structure per se over the reference. Claims 9 and 10 clearly are readable on tubes of various diameters within the scope of the disclosure of Sands et al. [Emphasis added.]

We do not agree that the limitation in the claims expressed as a relationship between the size of the opening and the viscosity of the liquid to be dispensed is of “questionable definiteness.” Assuming, as apparently did the board, that there is a relationship between the viscosity of any specific liquid to be dispensed and the size of the opening required if a single drop is to be dispensed, appellant’s claims in our view are not indefinite in the sense that the scope of protection sought cannot be ascertained. In any event, the issue is not the definiteness of the limitation but whether the limitation is sufficient to distinguish the claimed structure from the reference. It was about the latter question that the outcome in Law actually revolved.

In our view, the limitation in claims 9 and 10 does distinguish them from the Sands’ structure. In this regard we do not disagree with the board’s apparent conclusion that an intermediate structure made for the Sands’ device could possess the characteristics called for in' these claims. However, in view of the purpose for which the Sands’ device is intended, it is apparent that it requires no critical dimension which would lead to a structure inherently having those characteristics. Therefore, it would be mere happenstance if any structure made according to Sands met the limitations of the claims. An accidental or unwitting duplication of an invention cannot constitute an anticipation. Tilghman v. Proctor, 102 U.S. 707, 26 L.Ed. 279 (1880); Eibel Process Co. v. Minnesota and Ontario Paper Co., 261 U.S. 45, 43 S.Ct. 322, 67 L.Ed. 523 (1923). For this reason, we do not believe that Sands has “identically disclosed or described” the invention as required of an anticipatory reference applied under section 102. The disclosure as a whole cannot be considered to sufficiently direct one skilled in the art to the invention which is a single drop dispenser requiring critical dimensions.

The board’s opinion is not devoid of reasoning that would support a rejection under section 103. It states:

In our opinion, to one ordinarily skilled in the art the Sands et al. disclosure and well known plastic materials would suggest the structure, size, and material of appellant’s claimed tube for use in the Sands et al. method of making their final product, namely a dispensing device. Where, as here, the substance of the claimed device is obvious for some significant purpose, it is immaterial as to patent-ability under 35 U.S.C. § 103 that appellant has disclosed another obvious or unobvious purpose. In re Mod, 56 CCPA 1041, 408 F.2d 1055, 161 USPQ 281 [other citations omitted].

We do not agree that it would be obvious to make a structure having all the limitations of the claims on appeal merely because it can also be used as the intermediate structure called for by Sands. Certainly that intermediate does not demand the critical dimensions set forth in the claims. We have also concluded that the claims are not obvious over Sands in view of Wolman and Gross. The board did not feel that it was necessary to rely upon the latter two references to sustain the rejection. We agree that they add little to Sands as none of the art of record is directed to single-drop dispensers and does not suggest the criterion that would be demanded of a tubular structure having that capability.

Appellant made of record below several affidavits alleging commercial success flowing from his invention. We think this evidence is of such a character that it convincingly supports the patentability of the claims over the prior art of record. However, the board treated this evidence in the following manner:

We have considered all the affida- • vits filed under Rule 132 relating to commercial success. As to rejections under 35 U.S.C. § 103, such affidavits are significant only when close questions of obviousness exist. That is not the case here. Furthermore, there is no evidence that the success indicated by affidavits is attributable to the structure per se of the appealed claims rather than to appellant’s not claimed method of using the structure.

Despite the board’s comment on the significance of evidence of commercial success and its view of the “closeness” of the obviousness question in this case, it would appear that it did consider the affidavits on their merits but found no connection between the alleged success and the claimed invention. Recently we have set forth our view of the manner of evaluating evidence of commercial success relative to the question of whether an invention would have been obvious within the meaning of section 103. See In re Fielder, 471 F.2d 640 (CCPA 1973) and cases cited therein. It is not necessary for us to repeat that discussion here.

Directing our attention now to the merits of the evidence of record here, we do not agree with the position implicitly held by the board to the effect that the evidence may be insufficient if the commercial success in question is attributable to the unclaimed method of use rather than the structure of the device itself. We think it would be fair to say that the commercial success of any invention grows out of the fact that it is purchased to be used in some way.

A nexus between the merits of the invention and the evidence offered must be established before that evidence becomes relevant to the question of obviousness. In re Caveney, 386 F.2d 917, 55 CCPA 721 (1967). The important question is whether the invention’s commercial success is related to advantages flowing from its use which were not available to the purchasing public before the invention was made. If the commercial success is unrelated to the merits of the invention, e. g., if demand is a product solely of advertising, then it cannot be persuasive of nonobviousness.

The evidence of commercial success offered in this case is for the most part embodied in three affidavits. These affidavits were executed by officials of the health departments of Maryland, Pennsylvania and Utah. The thrust of their averments is that their organizations have adopted the claimed device, marketed under the trademark “Dispen-stir” as a part of a serological testing kit, in preference to the rubber bulb-capillary tube technique. The affidavits allege that the new device is more rapid (about twice as fast) and more accurate than the procedure they had been using. This meant that labor costs were significantly reduced.

Two other affidavits were executed by an employee of the distributor of Dis-penstirs. These affidavits indicate that the health departments of New York City and the State of Colorado, the Provincial Laboratory in Edmonton, Alberta and two Army hospitals have also switched to Dispenstirs. The affidavits also indicate that there is significant demand for Dispenstirs sold separately from the kits. In them it is also alleged that more than 11,000,000 Dispenstirs were sold between September 1, 1969 and October 19, 1970, most as part of a serological kit, and that sales for that period exceeded $490,000. We are convinced that appellant has demonstrated that the success achieved by his invention has grown out of the advantages flowing from its use as recognized by those skilled in the art and is, therefore, relevant to the question of obviousness.

We conclude that the invention would not have been obvious in view of the art of record which, as we have already indicated, is not directed to single-drop dispensers, especially in view of the evidence of commercial success. Accordingly, the board’s decision is reversed.

Reversed.

      . Serial No. 721,299 filed April 15, 1968.

      . U.S. 2,129,627 issued September 6, 1938.

      . U.S. 2,579,718 issued December 25, 1951.

      . U.S. 2,770,399 issued November 13, 1956.


author: CHRISTENSEN, Judge.

text:
    John T. MANNING and all similarly situated and affected, Plaintiffs-Appellants, v. The UNIVERSITY OF NOTRE DAME DU LAC, Defendant-Appellee.
    No. 7-7.
    Temporary Emergency Court of Appeals.
    Sept. 19, 1973.

      M. Daniel Friedland, Eskenazi, Mitchell & Yosha, Indianapolis, Ind., for plaintiff s-appellants.
    Philip J. Faccenda, Notre Dame, Ind., Louis C. Chapleau, Chapleau, Roper, Mclnerny & Farabaugh, South Bend, Ind., for defendant-appellee.
    Before TAMM, Chief Judge, and CHRISTENSEN and ESTES, Judges.
   CHRISTENSEN, Judge.

This case presents a procedural question related to, but not reached in, our treatment of substantive problems in University of Southern Cal. v. Cost of Living Council, 472 F.2d 1065 (Em. App.1972), cert, denied, 410 U.S. 928, 93 S.Ct. 1364, 35 L.Ed.2d 590 (1973).

The action now before us was commenced by the appellant John T. Manning for himself, “and all others similarly situated and affected”, against the University of Notre Dame Du Lac, ap-pellee, by the filing of a complaint in the United States District Court for the Northern District of Indiana, South Bend Division, in reliance upon the Economic Stabilization Act Amendments of 1971 § 210, 85 Stat. 743 (1971), 12 U.S. C.A. § 1904 note (1973 Supp.), to recover overcharges on football tickets that violated Executive Order No. 11615 of August 15, 1971, 3 C.F.R. 199 (1971), establishing a 90 day price “freeze”. The University moved for dismissal pursuant to Rule 12(b) (6) Fed.R.Civ.P., for alleged failure of plaintiff to state a claim upon which relief could be granted. The district court granted this motion by reason of the failure of the complaint, and apparent inability of the plaintiff, to factually allege that the “overcharge” by the University had been “willful”, or, in the alternative, that he had made demand upon the University for refund. The theory of the appellant is that having alleged the failure to refund the overcharge to be willful, and that an order by the Cost of Living Council for return of the overcharge remained uncomplied with, the conduct of the appellee was shown to have been sufficiently “willful” to meet statutory requirements for enforcement of a refund.

Jurisdiction and liability depend upon the framework of § 210:

“§ 210. Suits for damages or other relief.
“(a) Any person suffering legal wrong because of any act or practice arising out of this title, or any order or regulation issued pursuant thereto, may bring an action in a district court of the United States, without regard to the amount in controversy, for appropriate relief, including an action for a declaratory judgment, writ of injunction (subject to the limitations in Section 211), and/or damages.
“(b) In any action brought under Subsection (a) against any person renting property or selling goods or services who is found to have overcharged the plaintiff, the court may, in its discretion, award the plaintiff reasonable attorney’s fees and costs, plus whichever of the following sums is greater:
“(1) an amount not more than three times the amount of the overcharges upon which the action is based, or
“(2) not less than $100 or more than $1,000;
except that in any case where the defendant establishes that the overcharge was not intentional and resulted from a bona fide error notwithstanding the maintenance of procedures reasonably adapted to the avoidance of such error the liability of the defendant shall be limited to the amount of the overcharge: Provided, That where the overcharge is not willful within the meaning of Section 208(a) of this title, no action for an overcharge may be brought by or on behalf of any person unless such person has first presented to the seller or renter a bona fide claim for refund of the overcharge and has not received repayment of such overcharge within ninety days from the date of the presentation of such claim.
“(c) For the purposes of this section, the term ‘overcharge’ means the amount by which the consideration for the rental of property or the sale of goods or services exceeds the applicable ceiling under regulations or orders issued under this title.”

In University of Southern Cal. v. Cost of Living Council, supra, this court held in substance that the price of a ticket to a college football game played within the ninety day freeze period was subject thereto even though the advance sale may have occurred prior to its announcement, since the playing of the game constituted the “transaction” referred to in the Executive Order and the analogous “service” mentioned in agency regulations. But appellant was entitled to recovery of any overcharge not “willful” within the meaning of the Act if, and only if, he made a showing that he had first presented to the seller a bona fide claim for refund and had not received payment of such overcharge within ninety days from the date of presentation. „

Appellant argues that since advance sale prices of the tickets were controlled even though collected before the freeze, a willful failure to refund the excess collected could be deemed unlawful; that the failure to refund was willful and that therefore the “overcharge” should be deemed so for the purposes of § 210(b), and that, in any event, appellee’s failure to comply with the alleged order of the Cost of Living Council that refunds. be made was a “legal wrong” for which appellant was authorized to institute suit by the terms of Section 210(a). Such contentions, however, ignore the clear language of the statute, its legislative history, and its obvious purpose. In our opinion the trial court was correct in rejecting them.

While the “service” within the contemplation of University of Southern Cal. was rendered as of the time the game was played, the “overcharge” was made by Notre Dame before the freeze. Even though it were considered that the overcharge; were made at the time the game was played, it would have occurred long before the filing of our opinion in University of Southern Cal. when the University officials were concededly acting in good faith, no allegation appearing in the complaint to the contrary. This good faith would not have protected them had a request for refund been made, but did render mandatory such a request by a buyer, and the expiration of the prescribed time without repayment of the overcharge, before he could enforce return of the excess or related relief through individual suit.

The Act clearly reveals in this context that the term “willful overcharge” must be construed in the criminal sense. The overcharge not having been made in that sense, a request for refund was an essential condition to recovery, not rendered any less so by the University’s suggestion that its “loyal alumni” should request a refund if they did not desire to make a “contribution”. failure to make a refund without request could not be parlayed into a “willful overcharge” when the overcharge was not in fact willful without destroying the differentiation which the Act clearly draws.

We find less than convincing the argument, finally pressed in appellant’s reply brief, that we should overlook the wording of Section 210(b)(2) on the theory that having “suffered legal wrong” appellant can recover by virtue of Section 210(a). But this latter provision, which afforded the lower court jurisdiction to consider the claim, did not abrogate the requirements for that claim’s validity and, indeed, explicitly limits relief to that which was “appropriate”. Nor does University of Southern Cal. in any way militate against this construction. The opinion does refer, 472 F.2d at 1070, to “(t)he power of the district court to order a refund in the proper situation” as being evident. The situation here is that the complaint simply did not invoke the exercise of such power, appellant conceding that at the time of the overcharge the appellee was acting in good faith, and the agency not having brought the action.

Affirmed.

      . Section 210(b)(2), supra, among other things, states that “ . . . where the overcharge is not willful within the meaning of Section 208(a) of this Act, no action for an overcharge may be brought by or on behalf of any person unless such person has first presented ... a bona fide claim for refund. . . . ” Section 208 reads:
      “§ 208. Sanctions; criminal fine and civil penalty
      “(a) Whoever willfully violates any order or regulation under this title shall be fined not more than $5000 for each violation.
      “(b) Whoever violates any order or regulation under this title shall be subject to a civil penalty of not more than $2,500.00 for each violation.”
      In view of this language, resort to legislative history seems unnecessary; but for further clarification to the same effect see Conference Report No. 92-753, Ninety-Second Congress, First Session, U.S.Code Cong. & Adm.News, pp. 2307, 2310.

      . We gather from Ms trial brief that in appellant’s view cause for indignation was superimposed upon sensed deprivation by the University’s letter inviting loyal alumni to make the amount they would be entitled to receive by refund a contribution to the University, stating “if you desire a refund please write the football ticket committee, University of Notre Dame, Notre Dame, Indiana, 46556, prior to December 15, 1971 . . . ” and that “unless you request a refund prior to December 15, 1971, we will assume that you have elected to make a contribution to the University.”

      . “Section 205 of the Act, in addition to providing for a permanent or temporary injunction or restraining order, also stated that ‘(u)pon application of the agency, any such court may also issue mandatory injunctions commanding any person to comply with any regulation or order under this title’. The power to issue mandatory injunctions includes the power to order restitution or refund. .” [Emphasis added] University of Southern Cal., 472 F.2d at 1070.


author: COFFIN, Chief Judge.

text:
    UNITED STATES of America, Appellee, v. Frederick John DONATELLI, Defendant-Appellant.
    No. 72-1172.
    United States Court of Appeals, First Circuit.
    Submitted July 30, 1973.
    Decided Sept. 20, 1973.
    Joseph F. Flynn, Rockland, Mass., on brief, for appellant.
    James N. Gabriel, U. S. Atty., and Henry H. Hammond, Asst. U. S. Atty., on brief, for appellee.

      Before COFFIN, Chief Judge, Mc-ENTEE and CAMPBELL, Circuit Judges.
   COFFIN, Chief Judge.

Defendant, Frederick Donatelli, was convicted of one count of possession of counterfeit obligations of the United States, 18 U.S.C. § 472, and was sentenced to a term of imprisonment of six years. On this appeal we have considered both the brief submitted by his counsel and defendant’s pro se memorandum which was incorporated by reference into counsel’s brief. We find no merit to any of the points advanced and therefore affirm.

At trial the government relied heavily upon the testimony of two witnesses, Raymond Scarino and John Scaduto. Scarino testified that sometime in the spring of 1970 Donatelli approached him with a scheme to print counterfeit money. By June of that year Scarino, a professional printer, had agreed, and proceeded to print in the basement of his home seven to eight hundred sheets, each containing three twenty dollar bills. He testified that upon completion of the printing he put the uncut sheets in a box and handed them to Donatelli. Sca-duto testified that Donatelli gave him a box and asked him to keep it, then deliver it to one Walzik. Scaduto hid the box in his yard and gave it to Walzik when the latter drove up to his house that night. Scaduto also testified that a couple of nights later Donatelli told him that Walzik and another man had been arrested and “the stuff was lost”. Other testimony showed that Walzik and two 6ther men had been apprehended by the Secret Service on June 26, 1970 in possession of a box of counterfeit money, which Scarino identified as the one he had given to Donatelli.

At the commencement of trial the government announced for the first time that it intended to call Scaduto as a witness. Defendant’s trial counsel protested to the judge that this placed him in a difficult position because he had had a lawyer-client relationship with Scaduto. The court treated that statement as a request for a continuance .and denied it. Trial counsel made no further mention of this fact and conducted a cross-examination of Scaduto without indicating any difficulty caused by the prior relationship. After trial this counsel was allowed to withdraw from the case and new counsel was appointed for the purpose of prosecuting an appeal.

Defendant makes a number of attacks upon the fairness of his trial but only two of his arguments require any extended discussion. The first of these is his contention that he was denied effective assistance of counsel, by virtue of the inhibiting effect which his trial counsel felt from a prior lawyer-client relationship with the witness Scaduto. We can perceive two aspects of this argument : first, that his trial counsel was subject to a conflict of interest which reduced his effectiveness; and second, that defendant’s counsel was prevented from conducting a vigorous cross-examination of Scaduto because of the fact that Scaduto had had confidential communications with him.

As to the possibility that there existed a conflict of interest which affected the ability of defendant’s trial counsel to vigorously defend his interests, the key question is whether any such conflict existed. We must be peculiarly sensitive to such allegations, Marxuach v. United States, 398 F.2d 548, 552 (1st Cir.), cert, denied, 393 U.S. 982, 89 S.Ct. 454, 21 L.Ed.2d 443 (1968). But we must also recognize that it is up to the defendant to establish that such a conflict existed at his trial. Here the only fact shown is that on two occasions, before Donatelli’s trial, Scaduto came to Donatelli’s attorney and sought legal representation. By the time of defendant’s trial Scaduto had retained a different attorney and had apparently severed all legal relationship with Donatelli’s lawyer. There is no hint that at the time of trial defendant’s counsel had any divided loyalties. Such cases as Glasser v. United States, 315 U.S. 60, 62 S.Ct. 457, 86 L.Ed. 680 (1942); Craig v. United States, 217 F. 2d 355 (6th Cir. 1954) ; Taylor v. United States, 96 U.S.App.D.C. 379, 226 F.2d 337 (1955), and United States ex rel. Williamson v. LaVallee, 282 F.Supp. 968 (E.D.N.Y.1968) are therefore distinguishable because in all of them the defendant’s counsel was also involved in a present legal representation relationship with either a co-defendant or a government witness. We are unwilling, in the absence of any showing of additional facts indicating a conflict of loyalties, to assume that an attorney who has severed his attorney-client relationship with a government witness retains a conflict of interest at trial. We therefore conclude that defendant has failed to establish that his trial counsel had a conflict of interest at trial.

Defendant’s contention that his attorney did not conduct as effective a cross-examination of Scaduto as he could have because he was in possession of privileged information gathered in the course of his prior lawyer-client relationship with Scaduto, also lacks merit. The trial transcript reveals that defendant’s attorney conducted an apparently vigorous cross-examination of Scaduto. While this alone would not be determinative, it takes on added significance when combined with the fact that defendant’s attorney at no time indicated that a particular avenue of interrogation was closed to him or that he was deterred in any way from adequately representing his client by virtue of privileged information in his possession. Defendant made no effort at trial to seek a determination of whether the witness Scaduto had waived his privilege either by permitting defendant’s presence at one of the sessions which he had had with counsel prior to the trial, or by his taking the stand. Presumably such a ruling was not sought because it was not felt needed. In light of the total absence of any indication of prejudice, defendant cannot rely on speculative harm caused by speculative confidential information to show that he was deprived of his constitutional rights at trial.

The second argument advanced by defendant concerns the possibility that the government negligently or deliberately failed to truthfully answer all of defendant’s requests in the government’s bill of particulars. Defendant sought, inter alia, “a description of each place in Massachusetts where the defendant is alleged to have possessed the counterfeited obligations” and similarly sought this information as to places where defendant was alleged to have concealed counterfeit obligations. The government replied that the location where the bills were possessed and concealed by defendant after they left Searino’s basement and before they were seized by the Secret Service was “unknown”. Defendant urges that the government knew or should have known that Scaduto would testify that the money was concealed at his house during this period, pointing to Scaduto’s testimony on cross-examination where he indicated in a general way that he had told special agents of the Secret Service information to this effect in August, 1971, several months before the government filed its bill of particulars, and long before trial. The government assures the court that the bill of particulars was completed in good faith.

Even assuming that the bill of particulars was improperly completed, we find no reason to disturb the judgment below. A defendant in a criminal trial has the right to a fair trial, and as one aspect of this right he must be supplied by the prosecution all evidence which may be materially favorable to him, Brady v. Maryland, 373 U.S. 83, 83 S.Ct. 1194, 10 L.Ed.2d 215 (1963), including evidence which would have a material effect upon trial preparation, United States v. Polisi, 416 F.2d 573 (2d Cir. 1969). The suppression of evidence by the prosecution which is not “materially favorable” to the accused may be reprehensible, but unless defendant is prejudiced it is not cause for reversal. See United States v. DeLeo, 422 F.2d 487 (1st Cir.), cert, denied, 397 U.S. 1037, 90 S.Ct. 1355, 25 L.Ed.2d 648 (1970). Here we can see no substantial possibility that the information omitted from the bill of particulars could have been of a nature that its suppression worked material harm upon the defendant. We note that defendant’s trial counsel was supplied information concerning the August statements made by Scaduto to the Secret Service, including the fact that Scaduto had hidden the counterfeit currency at his house, prior to the cross-examination of that witness. We are fully cognizant of the remaining possibility that ignorance of this particular information prior to this time may have hampered trial preparation and thus that its revelation during trial, while reducing somewhat the chance of prejudice, does not eliminate it. But we must have more than vague allegations of prejudice such as those made by defendant. Since we can find no specific prejudice to the defendant under the circumstances of this case, we conclude that the government’s omission, if there was one, was essentially harmless.

Defendant’s remaining contentions can be disposed of without extended discussion. Defendant urges that the testimony of Scarino in the trial of William McGovern, et al., which trial took place a few months after the Donatelli trial, demonstrates that the government suppressed evidence in Donatelli’s trial. Careful review of Scarino’s testimony in the McGovern trial, however, convinces us that there was no substantial conflict between his testimony in that trial and his testimony in Donatelli’s trial. Defendant also urges that he was prejudiced by a statement made by the prosecutor to the jury during his closing statement. Assuming defendant’s version of the statement to be true, we find the incident to be too trivial to merit reversal. Similarly we find no merit to defendant’s vague allegation that surprise over the government’s use of Scaduto as a witness denied defendant a fair trial. It is clear that both defendant and his trial counsel were aware of Scaduto’s involvement in the case since they had met with him before trial precisely because, in the words of trial counsel, “It was my judgment at that time that these matters, as far as Mr. Scaduto and Mr. Donatelli were concerned, were intertwined.” Lack of objection at trial to Scaduto’s testimony supports our conviction that defendant was not prejudiced by the government’s use of this witness. Defendant’s allegations of subornation of perjury and of inadequacy of counsel are patently frivolous.

Affirmed.

      . Defendant also urges that the trial judge abused his discretion by refusing to order a continuance when defendant’s counsel informed him of his prior relationship with Scaduto. Because we have found that no prejudice to defendant flowed from tbis relationship, it is clear that failure to order a continuance was not error.

      . We are disturbed by the possibility that the government may have failed to exercise due diligence in completing its bill of particulars. Proper fulfillment of this type of task by the government is crucial both to fairness to individual defendants and to the integrity of the judicial process. Should it appear at any time that government misbehavior in this regard has become a recurring problem, we would contemplate the establishment of a rule creating a presumption of prejudice whenever information is deliberately or negligently withheld from a defendant by the government after specific request therefor.


author: RONEY, Circuit Judge: THORNBERRY, Circuit Judge

text:
    UNITED STATES of America, Plaintiff-Appellant, v. Donald A. CYZEWSKI, a/k/a J. Scalzi, and James Peter Herbert, a/k/a J. Daly, Defendants-Appellees.
    No. 72-3368.
    United States Court of Appeals, Fifth Circuit.
    Aug. 29, 1973.

      John L. Briggs, U. S. Atty., Jacksonville, Fla., Claude H. Tison, Jr., Asst. U. S. Atty., Tampa, Fla., for plaintiff-appellant.
    Thomas E. Henderson, Tampa, Fla., court-appointed, for Herbert.
    W. DeHart Ayala, Jr., Tampa, Fla., for Cyzewski.
    Before THORNBERRY, AINS-WORTH and RONEY, Circuit Judges.
   RONEY, Circuit Judge:

In this case, an airport security search goes one step further than any to which this Court has previously given constitutional approbation. We are asked to discern any constitutional defects in the removal and warrantless search of checked luggage as part of the investigation of potential hijackers. The Government appeals, under the authority of 18 U.S.C.A. § 3731, from the District Court’s suppression as evidence of five pounds of marijuana discovered by the search. We reverse.

On October 5, 1971, at Tampa International Airport, James P. Herbert and Donald A. Cyzewski, traveling on a group ticket under the names of J. Daly and J. Scalzi, respectively, sought to board Eastern Air Lines Flight No. 114 to Atlanta. At the boarding area, ticket attendants pointed them out to deputy United States marshals as potential hijackers, or “selectees,” according to characteristics described in the confidential Federal Aviation Agency’s Behavior Pattern Profile.

Deputies Charles Johnston and John Hardman accosted the defendants and requested them to furnish identification. The airline tickets with the false names were presented, and the defendants explained that all their identification papers were inside their luggage, which had been checked. To confirm the identification, the deputies gave the baggage checks to an airlines’ employee with instructions to retrieve the luggage from the plane and then escorted the defendants to the marshal’s office near the boarding area.

As the luggage was brought to the office, both Herbert and Cyzewski removed from their pockets and presented to the marshals identification with their real names. The defendants made no explanation regarding the false names on the tickets. Upon requests, they refused to open their luggage for inspection, but did agree to be subjected to the magnetometer test for metal objects.

The magnetometer indicated, when Herbert stepped through it, that he had no metal on his person. Deputy Johnston next requested Herbert to pass through the device with his bag, a small, plaid, zippered suitcase. This time the magnetometer detected metal.

Deputy Johnston placed the bag on a desk, explained the results of the magnetometer test to Herbert, and requested to see the metal object. At first refusing to open the bag, Herbert stated that the only metal objects in it were buckles on a pair of shoes and volunteered to be subjected to the magnetometer test again if he could remove the shoes from the suitcase. Without receiving a reply from the marshals, Herbert unzippered one side of the bag and placed his hand inside and out of view. At that point, Deputy Hardman, exclaiming, “I’ll take over from here,” grabbed the bag.

Deputy Hardman opened the suitcase, began to search it, and found an aerosol can. He then removed a five-pound bag and asked Herbert about its contents. It was laundry, replied the defendant. Unconvinced, the deputy opened the bag and discovered five pounds of marijuana.

The defendants were immediately arrested and transported to jail. The motion to suppress was granted after the defendants were charged with possession with intent to distribute marijuana, in violation of 21 U.S.C.A. § 844.

This Court’s task is to determine any constitutional infirmity in the search of Herbert’s luggage. In the context of the exigent circumstances of this case and the plight of American aviation, we deem the search to have been reasonable.

Airplane hijacking, the unlawful seizure and diversion of aircraft to unscheduled destinations, is a contemporary phenomenon with potentially catastrophic consequences. The high incidence of air piracy — jeopardizing passengers’ lives, threatening commercial airlines’ personnel and property, wreaking substantial economic loss upon both, and inhibiting citizens’ exercise of the constitutional right to travel — has demonstrated civil aviation’s urgent need for security measures.

In response to this ubiquitous hijacking menace, the Federal Aviation Agency has established an elaborate pre-flight passenger surveillance system. With deterrence as their fundamental objective, a series of obstacles has been posed for potential hijackers: an identifying behavioral profile, an electronic examination, interrogation, and a physical search. Although all passengers today are subjected to the magnetometer and search of hand luggage, there seems to have been no mandatory procedure for screening passengers at the time of the subject incident. Generally, airlines’ personnel would designate an individual as a “selectee” on the basis of the profile and would request identification. If there were any confusion regarding the selectee’s identity, he would be interrogated and subjected to the magnetometer test by the airline’s officer or an air marshal. If metallic objects were detected on his person, he probably would be frisked for weapons.

Recently, our Court in United States v. Moreno, 475 F.2d 44, 45 (5th Cir. 1973), performed the “difficult and sensitive task of balancing the individual rights protected by the fourth amendment against the overwhelming, public interest in effective protection from the threat posed by air piracy” and sustained a search which revealed heroin, rather than weapons. We held that, where Moreno appeared evasive and hesitant and lied about his destination when confronted by police, security officials had a legitimate interest in making a conclusive determination regarding the subject’s conduct and presence at the airport. Expressing the belief that the sheer urgency of the current air piracy problem alone is insufficient justification for a warrantless airport search, we recognized, nevertheless, that reasonableness is the ultimate standard to guide the constitutional propriety of the war-rantless airport search.

Two other airport security searches have subsequently been considered by this Court. In United States v. Skipwith, 482 F.2d 1272 (5th Cir. 1973), we analogized the search of persons presenting themselves for boarding an air carrier to a border search and held that such searches may be based on mere or unsupported suspicion. Because Skipwith met the FAA anti-sky jack profile and stated he had no identification, a boarding agent detained him. The federal marshal discovered that the name on the defendant’s ticket was false, brought him into his office, and — suspecting that a bulge in the suspect’s pocket was a gun-— ordered him to empty his pockets, revealing a plastic bag of cocaine. The Court concluded that the marshal

was justified in undertaking a search with sufficient scope to reveal any object or instrumentality that Skipwith could reasonably have used to effect an act of air piracy.

Skipwith, supra, 482 F.2d at 1277. Thus, the Fourth Amendment does not require suppression of narcotics found when the airline ticketholder is searched for weapons on the basis of mere suspicion by a federal marshal at the boarding gate.

The rationale of Moreno was the basis of this Court’s decision in United States v. Legato, 480 F.2d 408 (5th Cir. 1973). There, the FBI had received an anonymous tip, Legato’s conduct and hand baggage matched the information, and he and his companion departed from the terminal building to the airport parking lot when it was announced that their flight had been delayed because of a bomb threat. Approached by security officers, Legato, who was using an assumed name, denied both ever possessing the subject bag and being acquainted with his companion, who was carrying the bag and who consented to the search in the parking lot. We held that the tip and deceit provided a sufficient factual basis for the federal agent’s fear of a hijack.

Although some searches in the vicinity of air terminals, thereby generally regarded as “airport searches,” have been found unlawful, see, e. g., United States v. Soriano, 482 F.2d 469 (5th Cir. 1973); United States v. Garay and Torres, 477 F.2d 1306 (5th Cir. 1973); and Gold v. United States, 378 F.2d 588 (9th Cir. 1967), these are unrelated to the security problem. The courts have consistently held airport security measures constitutionally justified as a limited and relatively insignificant intrusion of privacy balanced against the need to protect aircraft and its passengers. United States v. Bell, 464 F.2d 667 (2d Cir. 1972); United States v. Slocum, 464 F.2d 1180 (3rd Cir. 1972); United States v. Ep-person, 454 F.2d 769 (4th Cir.), cert, denied, 406 U.S. 947, 92 S.Ct. 2050, 32 L.Ed.2d 334 (1972).

In Bell, the magnetometer’s use was found to be constitutionally sound. Defendant Bell matched the behavioral profile, activated the magnetometer, and identified himself for the federal marshal at the airport as having recently been released from prison on bail. The marshal searched him, requested that he remove a hard object which proved to be a brown paper sack, and found heroin therein. Defendant’s motion to suppress the evidence as the product of an unlawful search was denied.

Although expressing some reservations had the search been based solely on the magnetometer test since that device is sensitive to common items carried by a large proportion of airlines passengers, the District Court approved the use of the magnetometer as “only one of a series of screening procedures-; a procedure that serves as much as a deterrent to air piracy as it does a detector.” United States v. Bell, 335 F.Supp. 797, 802 (E.D.N.Y.1971). The Second Circuit, noting the magnitude of the crime sought to be prevented and the time limitations which precluded the warrant procedure, affirmed the constitutionality of the magnetometer test as a reasonable precaution.

Slocum rests upon the same rationale. There, the defendant met the profile, activated the magnetometer, and was unable to produce identification. When a frisk disclosed nothing which would have activated the magnetometer, the marshal searched defendant’s hand luggage and found a sock containing cocaine. Upholding Slocum’s conviction for possession of the narcotics, the Third Circuit found the search to be reasonable in the light of the defendant’s lack of identification and failure to explain the activation of the magnetometer.

In Epperson, the defendant was not a “selectee,” but triggered the magnetometer through which all passengers on his flight were required to walk, and a marshal’s search of his person revealed a pistol. The Fourth Circuit held that, once the device detected metal, the frisk was lawful because of the marshal’s reasonable fear that other passengers might be endangered:

Since the use of the magnetometer was justified at its inception, and since the subsequent physical frisk was justified by the information developed by the magnetometer, and since the search was limited in scope to the circumstances which justified the interference in the first place, we hold the search and seizure not unreasonable under the Fourth Amendment.

454 F.2d at 772.

Even holdings apparently contrary to this line of authority were decided on grounds not affecting our decision. United States v. Ruiz-Estrella, 481 F.2d 723 (2d Cir. 1973), held illegal a marshal’s search of the bag of a passenger who fit the profile, but who had done nothing suspicious and had not been subjected to the magnetometer test. The ground for the decision was not the unconstitutionality of the security procedures, but the failure of the marshal to subject the bag to the magnetometer test before the search. If the bag had not activated the magnetometer, reasoned the Court, no search would be necessary to satisfy the demands of the .airport security measures. The search in United States v. Lopez, 328 F.Supp. 1077 (E.D.N.Y.1971), was found violative of the Fourth Amendment because the defendant was possibly singled out for search by an airline official’s application of an unauthorized, revised profile. Yet the Court unproved use of the behavioral profile-magnetometer-interrogation-frisk procedure. In United States v. Kroll, 351 F.Supp. 158 (W.D. Mo. 1973), the Court held that — although the airport security agents acted legally in searching the carry-on luggage of a passenger who fit the hijacker profile, activated the magnetometer and, during inspection, failed to open the file section of his briefcase — the agents exceeded the bounds of reasonableness by opening a small envelope found in the file section. The ten grams of “speed” found in the 10" x 4" envelope, consequently, were inadmissible at the passenger’s trial. Even these decisions, therefore, though holding the particular searches illegal, sustain airport security procedures.

Airport security measures are reasonable, therefore, insofar as they permit government agents to determine whether a suspect presents an immediate danger to air commerce. The search may continue until the law enforcement official satisfies himself that no harm would come from the passenger’s boarding the plane. To be effective, the security efforts must focus not on a single aircraft or tangible item, but on the suspect himself, his demeanor and possessions during the entire course of his airport presence. The marshal’s duty is to make a trained judgment, as expeditiously as possible, regarding the threat posed by an individual identified by the behavioral profile. Only when it becomes unreasonable for the suspect’s innocence to be further questioned does the security search itself become unreasonable.

The question is whether the retrieval of checked baggage and the warrantless search of it over protest is consistent with this principle.

We sustain the search because at no point in the authorized security procedure did defendants’ innocence become clear to the marshals. To the contrary, Herbert and Cyzewski suspended themselves in a quagmire of suspicion. Both were selectees subject to close scrutiny and interrogation. At first, they offered no identification and subsequently revealed that they had lied about both their identities and their nonpossession of identification. This reversal, coupled with initial refusals to permit inspection of the bags, focused attention on the luggage. When the magnetometer registered positive, the marshal reasonably surmised that the selectee’s bag contained a metallic object, possibly a weapon.' Having already jeopardized his credibility, Herbert could hardly have allayed the marshal’s suspicion by stating that the device was activated by shoe buckles. Herbert opened the luggage only enough to reach his hand inside. The marshals could not determine what he might have removed. Apprehensive, Deputy Hard-man reached for the suitcase unzipped it, and found a bag, which Herbert claimed to contain laundry.

It may be argued that, had the marshals subjected defendants to the magnetometer test — presumably with negative results — before ordering the removal of the luggage, there would have been no reason for the removal because, notwithstanding the confusion regarding identities, no metallic weapon would have been accessible to defendants. This theory, however, misreads the prophylactic purpose of the security system: not simply to single out those individuals who carry aboard instruments dangerous to the aircraft, personnel and passengers, but to thwart potential hijackings by deterrence. Requiring positive identification of individuals who match the hijacker behavioral profile is an instrumental part of the deterrence system; and the airborne passenger’s inability to fetch any weapon that might be concealed in his checked baggage does not gainsay the deterrent effect of removing luggage which allegedly contains the only means of identifying selectees.

Central to the District Court’s holding was its conviction that the removal of the luggage was “not within the scope of the deputy’s ordinary instructions under the anti-hi jacking program” and was “without authority and in contradiction of the deputies’ instructions.” Deputy Johnston testified that his instructions sanctioned the demand of identification from and a magnetometer test of any persons fitting the profile. The limits of a constitutional search are not necessarily defined by the perimeter of a particular security system. The marshals’ specified authority should not bar further investigation if, in the exercise of their professional judgment, their reasonable suspicions had not been allayed by the routine security check.

To test a law enforcement official’s investigation in every context by the limits of his instructions seems to us an inappropriate, mechanistic approach. The District Court’s reliance on Lopez, supra, to this end is misplaced. In Lopez, the deviation from the standard security procedure was in the application of the profile which triggered the investigation in the first place. There was, consequently, no objective basis for Lopez’ designation as a selectee because the approved profile had not been used. Thus, the Lopez search was illegal not merely because of a deviation in procedure, but because the interference was not justified in the first place. Here, the designation of Herbert and Cyzewski as selectees, the legal impetus for the investigation, is not challenged.

Other alleged deviations from the prescribed security procedures have been dismissed as insubstantial. In Bell, supra, it was charged that the magetometer had been improperly reset to an excessively high sensitivity level, and in Slocum, supra, the defendant had not been required to pass through the magnetometer without his hand luggage before the frisk was conducted. Neither means of accomplishing the approved security tests was found to affect their validity. The same result is appropriate to the removal of a selectee’s checked luggage when the identification papers which may clear him for passage are supposed to be found therein. As in Slocum, the marshals were simply seeking, within the ambit, if not the letter, of the anti-hijacking system, explanations for the apparent deception.

A separate foundation for the District Court’s holding was its decision that the defendants’ conduct suggested not violent designs against others, but only efforts to evade detection of the contraband. This conclusion, however, results from viewing the marshals’ actions from the defendants’ subjective, contemporaneous position and from the retrospective knowledge that they were unarmed. The facts must be viewed from the standpoint of the marshals, in light of their information at the time. See Moreno, supra 475 F.2d at 50. In Ruiz-Estrella, supra, for example, where the defendant fit the profile, but provided no reason for suspicion and was not subjected to the magnetometer test, the Court viewed the facts through the eyes of the marshal in finding that the rationale of Terry v. State, 392 U.S. 1, 88 S.Ct. 1868, 20 L.Ed.2d 889 (1968), would not support the search.

The District Court further thought it unreasonable for the marshal to open the brown bag of marijuana without first ascertaining whether it contained a hard substance. Such a test would serve little purpose in airport security searches because explosives can be soft as well as hard. The “pat down” is not an inflexible preliminary requirement for a search. See Adams v. Williams, 407 U.S. 143, 92 S.Ct. 1921, 32 L.Ed.2d 612 (1972); Terry, supra. Similar to the search of the rolled sock in Slocum, supra, the examination of this bag was justified by the claim of lies and suspicious circumstances. There was even more reason here than in Moreno, supra, given the defendants’ designation as selectees and their obvious duplicity, for the “[ajirport security officials [to make] a conclusive determination with respect to . [the defendants’] conduct and presence in the airport.” 475 F.2d at 52.

Only after every line of inquiry had failed to eliminate the probability of danger did the marshals examine the contents of Herbert’s suitcase. To underscore the marshals’ observance of defendants’ rights, it must be noted that— after learning the nature of the concealed goods in Herbert’s luggage and the true reason for the defendants’ conduct, which apparently established their innocence as hijackers — the marshals left the two remaining bags untouched for warrant procedures.

Having concluded that this evidence was improperly suppressed, we reverse.

Reversed.

THORNBERRY, Circuit Judge

(dissenting) :

The exigencies of skyjacking and bombing, however real and dire, should not leave an airport and its environs an enclave where the Fourth Amendment has taken its leave. It is passing strange that most of these airport searches find narcotics and not bombs, which might cause us to pause in our rush toward malleating the Fourth Amendment in order to keep the bombs from exploding.

United States v. Legato, 5th Cir. 1973, 480 F.2d 408, 414 (Judge Goldberg, concurring). The majority recognize that the airport security search at issue in this case goes a step further than any we have previously approved. Specifically, that step is the retrieval of checked luggage well beyond the reach of the suspected skyjacker for the purpose of searching it. With deference, I cannot agree that the danger of air piracy warrants or authorizes upholding this search under Fourth Amendment standards.

Terry v. Ohio, 1968, 392 U.S. 1, 88 S.Ct. 1868, 20 L.Ed.2d 889 has served as the foundation of the airport security search cases. Under Terry a policy officer with facts giving rise to a reasonable suspicion of criminal activity, but not supplying probable cause to arrest, may make a forcible “stop” for investigative purposes. See also Adams v. Williams, 1972, 407 U.S. 143, 92 S.Ct. 1921, 32 L.Ed.2d 612. Further, the officer may make a pat-down search of the suspect’s outer clothing if he reasonably apprehends that the suspect may be armed and dangerous to the officer or others. Though probable cause is not required to legitimate the investigative stop or the protective search, the Court in Terry stressed that the policeman’s suspicion of criminal activity and apprehension of danger must arise from “specific and ar-ticulable facts.” 392 U.S. at 21, 88 S.Ct. at 1830. Additionally, the Court emphasized that, .“The scope of the search must be ‘strictly tied to and justified by’ ” its protective purpose. 392 U.S. at 18, 88 S.Ct. at 1878.

In United States v. Moreno, 5th Cir. 1973, 475 F.2d 44 our court applied the Terry holding to an airport search and extended it slightly. We concluded there that the facts available to the law enforcement officers — including unexplained comings and goings at the airport, a false explanation to investigating officers, visible nervousness, changing lines at the ticket counter and later changing airlines, and a bulge in the suspect’s pocket — reasonably warranted the suspicion that he was armed and dangerous and was engaged in criminal activity, even though the facts did not supply probable cause. Further, we held that the great danger which each individual passenger represents to fellow passengers and flight crews as a potential skyjacker made reasonable under the Fourth Amendment a more intrusive search in the airport setting than Terry would authorize for on-the-street encounters. We said:

Due to the gravity of the air piracy problem, we think that the airport is a critical zone in which special considerations apply . In applying Terry were we to hold that airport officials must always confine themselves to a “pat down” search where there is a proper basis for an air piracy investigation, we think that such a per se restriction in the final analysis would be self-defeating.

United States v. Moreno, supra at 51. The intrusion which was upheld was the removal of the suspect’s coat and an inspection of the contents of his pockets-— somewhat more than a pat-down search. Again, the rationale for this extension was the great danger which skyjacking represents.

The Moreno principles were applied straightforwardly in United States v. Legato, 5th Cir. 1973, 480 F.2d 408 to uphold the search of a package carried by a suspect in an airport. Similarly, United States v. Slocum, 3d Cir. 1972, 464 F.2d 1180 upheld an extensive search of carry-on luggage with less than probable cause.

Prior to the majority’s decision today, no case has gone so far as to authorize the seizure and search of a passenger’s checked luggage — I emphasize that we are not dealing here with a search of carry-on luggage — on the basis of suspicious conduct, i. e., less than probable cause. Terry, Moreno, Legato, and Slocum all dealt with a search of the suspect’s person, or of his clothing or packages in his immediate possession. None of them authorized retrieval and search of a distant piece of luggage or other distant property on the basis of facts creating only suspicion of wrongdoing. Even a probable-cause arrest of a suspect would not legitimate a search of his checked luggage as incident to the arrest. Chimel v. California, 1969, 395 U. S. 752, 89 S.Ct. 2034, 23 L.Ed.2d 685. Nothing less than probable cause to believe that the checked bag contained something subject to seizure — contraband or fruits, instrumentality, or evidence of a crime — would authorize a valid search, even if a warrant were not required under the circumstances. See Warden v. Hayden, 1967, 387 U.S. 294, 87 S.Ct. 1642, 18 L.Ed.2d 782. Thus, in extending Terry to sustain a search of distant property in this ease the majority go significantly beyond existing precedent.

Just as Moreno and Legato relied on the danger factor to uphold more intrusive searches in an airport setting than would be allowed outside an airport, contemplation of the “ubiquitous hijacking menace” and the “potentially catastrophic consequences of hijacking” has led the majority to approve the checked luggage search in this case. The day is past for questioning the soundness of the Moreno and Legato holdings, but we are not bound to, and should not, apply and extend their rationale uncritically to approve every search sought to be justified in the name of the skyjacking menace. Without minimizing the urgency of the air piracy problem, we must recognize limits to the extent of intrusion it can legitimate.

There can be no doubt that traditional Fourth Amendment principles and values are altered and ultimately inverted as we increase our reliance on the danger factor and the need for “security” to justify greater and greater intrusions. Traditionally, privacy has been regarded as the norm, and special justification has been required to permit a search. Probable cause is the traditional mechanism for balancing the individual interest in privacy against the public interest in detecting and preventing crime, even dangerous crime. Terry modified the equation only slightly by permitting a limited pat-down search of a suspect’s person on reasonable suspicion of criminal activity plus reasonable apprehension of danger. As we accord greater weight and importance to the danger factor, whether as justification for the initiation of a search, e. g., United States v. Skipworth, supra, or for enlarging its permissible scope, e. g., United States v. Moreno, supra, search becomes more the norm and privacy more the exception. This drastic inversion of values is apparent in the majority opinion in this case.

Airport security measures are reasonable, therefore, insofar as they permit government agents to determine whether a suspect presents an immediate danger to air commerce. The search may continue until the law enforcement official satisfies himself that no harm would come from the passenger’s boarding the plane. . Only when it becomes unreasonable for the suspect’s innocence to be further questioned does the security search itself become unreasonable.

Reasonable suspicion, a vague and minimal standard at best, permits the initiation of the investigation. The individual, “the suspect,” must then submit to an unlimited search until the search demonstrates or he can otherwise convince the official that further intrusion is not warranted. We should be slow to increase our emphasis on the danger factor in Fourth Amendment analysis in the name of reasonableness, when the result will be to invert the fundamental values the Amendment represents.

In this case, I must conclude that the majority improperly allow a “protective” search to extend beyond the scope reasonably necessary to neutralize the threat of harm from appellants, as suspected skyjackers, to police officials and others. The scope of the search must be strictly tied to and justified by the circumstances which give rise to its initiation. In Terry the search was limited to a pat-down search of the suspect because weapons on the person of suspects represent a high risk to police and others. The Court observed:

American criminals have a long tradition of armed violence, and every year in this country many law enforcement officers are killed in the line of duty, and thousands more are wounded. Virtually all of these deaths and a substantial portion of the injuries are inflicted with guns and knives.

Terry v. Ohio, supra, 392 U.S. at 23-24, 88 S.Ct. at 1881. Elaborate, technically complex weapons not located on the suspect’s person may be imagined which would also endanger police, but the search was limited to the suspect’s person, the area which according to experience involves a high risk. To use the Terry-Moreno rationale to approve a checked luggage search we should be able to declare that would-be skyjackers commonly do, or at least reasonably could, use weapons or devices in checked luggage to commit air piracy. But the primary danger in the airport setting seems to be that the skyjacker will carry some weapon on board the aircraft with him. The screening procedues prescribed by the Federal Aviation Administration are designed to thwart the carry-on threat and do not provide for searching or magnetometer testing of checked luggage. See United States v. Slocum, supra. This seems to indicate that the FAA does not consider checked luggage to present a significant skyjacking danger. The record does not show that skyjackers commonly use devices in checked luggage, and I do not believe we may properly take judicial notice of the danger presented by any such hypothetical mo-dus operandi. Unless the nexus between the checked luggage and the danger of air piracy is established, the “protective search” rationale cannot properly be used to uphold a checked luggage search. Being unpersuaded that checked luggage does represent a substantial skyjacking threat, I think the search went beyond its legitimate “protective” scope.

There is a second reason why the search in this case should not be upheld. Even if law enforcement officers could properly seize the checked bag or remove it from the aircraft for protective reasons, they had no authority to search it without a warrant. We have recently held in United States v. Soriano, 5th Cir. 1973, 482 F.2d 469 that police officers with probable cause to believe that a suitcase contained contraband were justified by exigent circumstances in seizing it without a warrant, but that they were obligated to secure a warrant before inspecting its contents. See also United States v. Garay, 5th Cir. 1973, 477 F.2d 1306. Yet the majority holds that the law enforcement officials in this case, who had only suspicion, and not probable cause to believe the bag contained any item subject to seizure, could seize and search the bag without a warrant. Surely, if a warrant is required for a probable cause search, no less can be required for a “reasonable suspicion” search. To decide this case consistently with Soriano and Garay we should reject the warrantless search of the checked bag.

I would affirm the ruling of the district court suppressing the marijuana found in the bag.

      . See Abramovsky, “The Constitutionality of the Anti-Hijacking Security System,” 22 Buff.L.Rev. 123 (1972) ; Note, “Airport Security Searches and the Fourth Amendment,” 71 Colum.L.Rev. 1039 (1971) ; McGinley and Downs, “Airport Searches and Seizures,” 41 Ford.L.Rev. 293 (1972).

      . The right to travel was early recognized as one of the privileges and immunities enjoyed by American citizens. See Corfield v. Coryell, 6 Fed.Cas. p. 546 (No. 3230) (C.C.E.D.Pa. 1825) ; see also Edwards v. California, 314 U.S. 160, 62 S.Ct. 164, 86 L.Ed. 119 (1941) (Douglas and Jackson, JJ., concurring) ; and Twining v. New Jersey, 211 U.S. 78, 29 S.Ct. 14, 53 L.Ed. 97 (1908). Recent constitutional jurisprudence has established that the right to travel emanates from the Due Process clause of the Fifth Amendment to the United States Constitution. See Shapiro v. Thompson, 394 U.S. 618, 89 S.Ct. 1322, 22 L.Ed.2d 600 (1969) ; Zemel v. Rusk, 381 U.S. 1, 85 S.Ct. 1271, 14 L.Ed.2d 179 (1965) ; Aptheker v. Sec’y of State, 378 U.S. 500, 84 S.Ct. 1659, 12 L.Ed.2d 992 (1964) ; Kent v. Dulles, 357 U.S. 116, 78 S.Ct. 1113, 2 L.Ed.2d 1204 (1958).

      . Although the magnetometer, a passive device which merely senses the deflections which ferrous metal causes in the earth’s magnetic field, does not penetrate the individual or his property, Fourth Amendment problems are raised because “the reach of that Amendment cannot turn upon the presence or absence of a physical intrusion into any given enclosure.” Katz v. United States, 389 U.S. 347, 353, 88 S.Ct. 507, 512, 19 L.Ed.2d 576 (1967).

      . This Court has made clear that an investigation need not be curtailed simply because a suspect decides not to take a particular flight. See Shipicith, supra; Legato, supra. We have expressly decided to reject the right-to-leave argument followed in United States v. Meulener, 351 F.Supp. 1284 (C.D.Cal. 1972). As Judge Bailey Aldrich stated in his dissent in Skipwith, a point with which the majority of that panel fully concurred,
      “The reasoning in Meulener, that if he then changed his mind, and elected to leave, ‘lie would pose no danger to the passengers and crew on the aircraft,’ 351 F.Supp. at 1289, greatly damages the prophylactic purpose of the search procedure. Such an option would constitute a one-way street for the benefit of a party planning airplane mischief, since there is no guarantee that if he were allowed to leave he might not return and be more successful. Of greater importance, the very fact that a safe exit is available if apprehension is threatened, would, by diminishing the risk, encourage attempts.”

        Skiptcith, 482 F.2d at p. 1281.

      . Although Judge Aldrich has proposed an ex-elusionary rule to control overzealous searches, the suggestion has been rejected by this Court, Skipwith, supra.

      . In our Circuit not even reasonable suspicion is required to search passengers in the preboarding area. In United States v. Skipwith, 5th Cir. 1973, 482 F.2d 1272 we held that “those who actually present themselves for boarding on an air carrier . . ■ . are subject to a search based on mere or unsupported suspicion.” Id. at 1276. Consent is not required ; the individual has no right to leave to avoid the search. Id. at 1277. But see United States v. Anderson, 9th Cir. 1973 [13 Crim. L.Rptr. 2395, June 29, 1973] (passenger searches are “administrative searches” whose validity depends on consent or obtaining a warrant). As in Moreno the reason given for the paring back of the individual’s right of privacy in Skipwith was “the magnitude of the perils created by air piracy.” Skipwith, supra at 1275.