author: McWILLIAMS, Circuit Judge. LEWIS, Chief Judge

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Dennis PENNICK, Defendant-Appellant.
    No. 73-1823.
    United States Court of Appeals, Tenth Circuit.
    Argued May 13, 1974.
    Decided July 30, 1974.

      Stephen K. Lester, Asst. U. S. Atty. (Robert J. Roch, U. S. Atty., and Benjamin L. Burgess, Jr., and Monti L. Belot, Asst. U. S. Attys., on the brief), for plaintiff-appellee.
    Lawrence E. Curfman, Wichita, Kan., (Dennis L. Gillen and Weigand, Curf-man, Brainerd, Harris & Kaufman, Wichita, Kan., on the brief), for defendant-appellant.
    Before LEWIS, Chief Judge, and McWILLIAMS and BARRETT, Circuit Judges.
   McWILLIAMS, Circuit Judge.

In a two count indictment Dennis Pennick was charged with distributing heroin in Junction City, Kansas, on September 12 and 29, 1972. Count I pertained to the first named date, and Count II to the latter date. The indictment was not returned till March 21, 1973, and Pennick was thereafter arrested on March 25, 1973.

Prior to trial, Pennick’s counsel sought to compel the Government to identify the persons it intended to call as witnesses. In this regard Pennick’s counsel particularly requested that the Government identify any informer who was to be called as a Government witness. This request the trial court denied. In this general connection it should be noted that by order of the court the Government did specify the approximate time of day when each of the offenses charged was supposed to have been committed, and it also identified the place where the transactions occurred, which was Pennick’s residence.

Upon trial to a jury Pennick was convicted on both counts, and he now appeals. Two grounds are urged for reversal: (1) Refusal of the trial court to compel the Government to identify its witnesses prior to trial, including any witness who might be an informer, and (2) error by the trial court in admitting evidence of other transactions by Pen-nick which tended to show the commission of crimes other than those charged in the indictment, and in permitting counsel to comment on such evidence in his opening statement. In our view, neither of these matters requires a reversal, and we therefore affirm.

As indicated, Pennick was not charged with a sale, as such, of heroin, but in each count, based on a separate and distinct transaction, he was charged with knowingly and intentionally distributing heroin in violation of 21 U.S.C. § 841(a) (1.). The one to whom the heroin was allegedly “distributed” was not identified in the indictment, not even by a “John Doe” designation.

The Government’s evidence showed that a Government drug agent, and his informer, went to Pennick’s home in Junction City, Kansas, on two separate occasions in September 1972. On each occasion the informer was searched and, after being given money by the agent, the informer proceeded to gain admission to Pennick’s house, the informer and Pennick being friends. The informer was called as a Government witness and his testimony was that on each occasion he bought heroin from Pennick which he later turned over to the Government agent.

As above mentioned, Pennick first contends that the judgment should be reversed because of the refusal of the trial court to compel the Government to identify its witnesses by way of pretrial discovery, particularly as concerns any witness who was also an informer. In thus arguing counsel relies primarily on Roviaro v. United States, 353 U.S. 53, 77 S.Ct. 623, 1 L.Ed.2d 639 (1957). We believe Roviaro to be distinguishable on the facts, and under the circumstances here disclosed we find no error in the refusal of the trial court to compel the Government to disclose in pre-trial discovery its witnesses, including the identity of an informer who ultimately did testify upon trial.

Section 3432, 18 U.S.C., provides that a person charged with treason or other capital offense shall be furnished at least three days prior to trial with a list of the witnesses to be produced at the trial for proving the indictment. The statute has been construed as meaning that in a noncapital case a defendant is not entitled as a matter of right to a list of the Government’s witnesses in advance of trial. United States v. Eagleston, 417 F.2d 11 (10th Cir. 1969); United States v. Gleeson, 411 F.2d 1091 (10th Cir. 1969), and Edmondson v. United States, 402 F.2d 809 (10th Cir. 1968). In the instant ease the informer was a Government witness and did appear and testify upon trial, submitting himself to examination and cross-examination, a fact which we deem to be significant. In other words, we are not here concerned with an informer who does not appear on trial as a Government witness, and who conceivably could be helpful to the defendant in his defense. So, the informer in the instant case being himself a Government witness, under the general rule cited above Pennick was not entitled to learn the identity of the informer, or any other Government witness, prior to trial.

Counsel argues that while Pennick may have no right to such disclosure prior to trial, the trial court in the exercise of its discretion could nonetheless order, and under the circumstances should have ordered, such disclosure, particularly when we are dealing with an informant. We do not agree with such reasoning and in our view the fact that une of the Government’s witnesses was an informer weakens, rather than strengthens, Pennick’s argument that he was entitled in advance of trial to a list of the Government’s witnesses. As the trial court noted, informers whose identity is revealed prior to trial are often among the missing when the trial date rolls around. Let us now look at the Roviaro ease.

In Roviaro the Government successfully resisted the repeated efforts of the defendant to learn the identity of the informer both before and during trial. In other words, in Roviaro the informer did not appear as a Government witness, as did the informer in the instant case. In Roviaro the Supreme Court held that under the circumstances there disclosed the trial court committed prejudicial error “in permitting the Government to withhold the identity of its undercover employee in the face of repeated demands by the accused for his disclosure.” In so holding the Supreme Court nonetheless recognized a limited privilege inuring primarily to the Government, and only secondarily to the informer, to withhold the identity of a true informer in “the furtherance and protection of the public interest in effective law enforcement.”

The Supreme Court in Roviaro stated that no fixed rule with respect to disclosure or nondisclosure could be laid down, and that the problem called for a “balancing of the public interest in protecting the flow of information against the individual’s right to prepare his defense.” In the instant case the trial court applied the “balancing test” referred to in Roviaro and took into consideration the various factors mentioned in that case, and then in the exercise of' its discretion refused to require the Government to reveal the identity of its informer who all knew was to testify upon trial. In so doing the trial court did not err.

The significant difference between Roviaro and the instant case is that in the former the informer did not testify at trial, and in our case he did. Such ruled out the possibility that the informer’s testimony could somehow be helpful to Pennick. And there is nothing in the record to indicate prejudice resulting from the failure of defense counsel to be earlier apprised of the informer’s identity. Government counsel in his opening statement identified by name his witnesses, revealing at that time the name of the informant. The informant then was called as the Government’s first witness and was cross-examined in great detail. There is nothing in the record to indicate that counsel was in anywise taken by surprise. There was no request for any continuance. Under such circumstances, we find no persuasive reason to depart from the aforementioned general rule that in a case of this type the Government need not disclose prior to trial the identity of any of its witnesses.

Pennick also urges as grounds for reversal the reference made by the prosecuting attorney in his opening statement to other transactions which, according to counsel, tended to show the commission by Pennick of crimes other than the two with which he was charged in the indictment. In this same connection counsel also assigns as error the subsequent reception into evidence, over objection, of the testimony pertaining to such other transactions. In connection therewith the trial court gave the usual precautionary instruction that Pennick was only on trial for the crimes charged in the indictment and that evidence of other transactions was being received only for the purpose of showing intent, motive, absence of mistake, and the like. Let us now examine the particular testimony which Pennick claims was inadmissible.

The Government showed that some four months subsequent to September 1972, the month when Pennick was alleged to have committed the offenses described in the indictment, the Government agent accompanied by another and different informant again went to Pen-nick’s residence where a sale of heroin was effected. The trial court held that the lapse of four months was insufficient to render the testimony inadmissible. We find no error in this ruling. Evidence of another transaction involving a similar distribution of heroin from Pennick’s home only four months after the date of the crimes charged in the indictment comes well within such cases as United States v. Parker, 469 F.2d 884 (10th Cir. 1973); United States v. Hampton, 458 F.2d 29 (10th Cir. 1972), and United States v. Burkhart, 458 F.2d 201 (10th Cir. 1972).

The other testimony relating to so-called other transactions came from the informer who, as indicated, testified that he bought heroin from Pennick on two occasions in September 1972. This informer also testified, over objections, concerning his relationship with Pen-nick, stating, among other things, that he had known Pennick for some two years, had visited Pennick’s home some forty to fifty times, and that on numerous occasions they had “passed around” and “shot” heroin. We are of the view that the relationship between the informant and Pennick was a proper subject of inquiry, whether it be on direct or cross-examination. Such evidence is really of little import in view of the nature of Pennick’s defense, which was that he was a heroin addict, but was not a “distributor” of heroin. There is no error here.

Judgment affirmed.

LEWIS, Chief Judge

(dissenting).

The compulsion of Roviaro is very clearly set out: The government’s privilege to withhold disclosure of ah informer’s identity must give way when such disclosure is essential to a fair trial. So, too, the discretionary pretrial ruling of the trial court must probe the proper “balancing of the public interest in protecting the flow of information against the individual’s right to prepare his defense.” The majority opinion recognizes this test but with repeated emphasis upon the fact that Roviaro was concerned with a nontestifying informer and that we are presently concerned with an informer-witness completely distinguishes Roviaro from the case at bar and states, in effect, that the trial judge properly exercised his discretion. I submit that the government gave the trial judge no opportunity to exercise a considered judgment through its adamant refusal to disclose, with no explanation, the identity of the informer. The Assistant United States Attorney at the pretrial hearing stated:

With regard to the informant, I point out that we would claim the privilege of nondisclosure as to the informant. However, I believe that— Well, I am not going to say this, because I got in trouble last time. So, I will just say that we will say that we will claim privilege of nondisclosure as to the informant.

At the time this statement was made the prosecution knew and the trial court and defense did not know each of the enumerated facts:

1. That the cover, if any, and the identity of the informer were revealed by the government in a narcotics trial held some two months earlier wherein the informer testified.

2. That the informer was the government’s only witness to the charged distribution of heroin.

3. That the informer had visited with the defendant in his home at least forty or fifty times other than the dates charged in the indictment.

4. That the informer was a user and had on numerous occasions shot heroin with the defendant.

Other pertinent facts are set out in the main opinion but the net result was that the government had seven months to prepare the prosecution and the defense was limited to an unprepared and exploratory cross-examination of the informer. Roviaro is not limited to disclosure of the identity of a potential favorable witness to the defense. Fairness, under the circumstances here considered, would seem to require disclosure of an unfavorable informant-witness upon whose credibility the case is solely dependent as to result.

I would so hold.

      . The court expressed deep concern about the safety of informers stating, “For instance, in the Southern District of California I heard a judge say that there is hardly any witnesses alive after their identity is divulged.”

      . Nos. 2, 3 and 4 were potentially relevant to a claim of defendant to possible entrapment.


source: Caselaw Access Project

author: McWILLIAMS, Circuit Judge.

license: Public Domain

text:
    IRON ORE COMPANY OF CANADA, a corporation, and Ireco Chemicals, a corporation, Plaintiffs-Appellants, v. The DOW CHEMICAL COMPANY, a corporation, Defendant-Appellee, and University of Utah, a body politic and corporate under Utah law, Intervenor-Appellee. IRON ORE COMPANY OF CANADA, a corporation, Plaintiff-Appellant, v. UNIVERSITY OF UTAH, a body politic and corporate under Utah law, Defendant-Appellee, v. Henry E. FARNAM, Jr., Defendant-Appellant by Joinder.
    Nos. 73-1490 and 73-1491.
    United States Court of Appeals, Tenth Circuit.
    Argued March 22, 1974.
    Decided July 18, 1974.

      William A. Marshall, Chicago, 111. (Charles J. Merriam, Alvin D. Shulman, Merriam, Marshall, Shapiro & Klose, Chicago, 111., Donald C. McKinlay, Holme, Roberts & Owen, Denver, Colo., on the brief), for plaintiff-appellant Ireco Chemicals.
    Richard R. Trexler, Chicago, 111. (Richard Bushnell, Olson, Trexler, Wolters, Bushnell & Fosse, Ltd., Chicago, 111., and Hugh C. Garner, Salt Lake City, Utah, of counsel, on the brief), for defendant-appellee The Dow Chemical Co.
    Before LEWIS, Chief Judge, and PICKETT and McWILLIAMS, Circuit Judges.
   McWILLIAMS, Circuit Judge.

This is a patent case involving an explosive in slurry form, i. e., an explosive in a mixture form wherein the solid material is suspended in a liquid. The particular slurry type explosive here involved is composed of ammonium nitrate plus aluminum plus water (AN+A1+H20) and is used in blasting operations in general, and in the mining industry in particular. In connection with its use in mining operations, a slurry explosive may be poured into a borehole and, being in a liquid form, it tends to fill the borehole fully. Such gives the slurry explosive an advantage over the traditional solid and packaged explosive, which tends to get snagged and thus fails to get to the bottom of a given borehole, the interior walls of a typical borehold being jagged and uneven.

As we understand it, the only real parties to this appeal at the present time are Ireco Chemicals, a Utah corporation, and Dow Cehmical, a Delaware corporation. The University of Utah, a body politic and corporate under Utah law, was a party to the proceedings in the trial court and was designated as a party on appeal. However, the University did not file a brief nor has it otherwise participated in this appeal and we are advised that the University and Ire-co, and the latter’s assignor, the Iron Ore Company of Canada, a Delaware corporation with its principal offices in Canada, have now settled their differences to the end that the present appeal boils down to a patent dispute between Ireco and Dow.

The present controversy arises from the fact that both Ireco and Dow hold patents for an explosive slurry composed of ammonium nitrate plus aluminum plus water. Ireco’s United States Patent No. 25,695 (hereinafter referred to as the ’695 patent), being a reissue of United States Patent No. 3,121,036 (hereinafter referred to as the ’036 patent), is based on work done by Dr. Melvin A. Cook and one Henry E. Farnam. Dr. Cook was formerly employed in the research department of DuPont and more recently was employed by the University of Utah where he taught classes and directed an explosive research group. Farnam is a vice-president of the Iron Ore Company of Canada. The particular work of Cook and Farnam relied on by Ireco for its priority date was performed in 1957 and 1958. Dow’s Patent Application, Serial No. 784,881 (hereinafter referred to as patent application ’881) was based on work performed by two of its employees, Joseph R. Hra-del and Harold E. Staadt, in the early 1950’s and ending in 1955 and 1956. A bit of background concerning the patents here involved may be helpful.

Dr. Cook while teaching at the University of Utah performed certain experimental work under contract with the United States Navy beginning in the early 1950’s, which work involved many different explosive compositions, one of which was a composition of AN+A1+H20. This contract work was discontinued in about 1954. Sometime in the fall of 1956, Dr. Cook met Far-nam, who was at that time operations manager for the Iron Ore Company of Canada. Discussion ensued concerning an explosive slurry which could be used in the mining industry and more particularly for use in boreholes in the blasting of ore bodies. Dr. Cook, with suggestions from Farnam, performed experimental work along the lines thus indicated in 1957 and 1958. As a result of Cook’s and Farnam’s work, the Iron Ore Company of Canada, Ireco’s predecessor in interest, made application for a patent in October 1958. This application resulted in the issuance of patent ’036, which, as indicated, is the predecessor to patent ’695 upon which Ireco now relies.

Patent ’036 contained five claims, as we understand it, and sometime in 1964 Ireco complained by letter to Dow that the latter was infringing on its patent, and more particularly on claim 5 thereof. Dow in turn informed Ireco that its (Dow’s) explosive did not infringe on claim 5 because Dow’s explosive did not incorporate the particle sizes or the densities specified in claim 5 of patent ’036. Ireco apparently acquiesced in Dow’s explanation. At least no formal proceeding of any type was instituted against Dow at that time. Instead, Ire-co through Cook and Farnam sought a reissuance of its patent ’036. In their application for reissuance Cook and Far-nam claimed that through lack of communication between themselves and patent counsel, they had sought less in the original application than they had a right to claim. The patent thus reissued, here known as the ’695 patent, in addition to the claims 1-5 in the original patent, includes additional claims referred to as claims 6 through 12.

In the early 1950’s Dow had itself become interested in developing explosive compositions for a variety of earth moving and mining uses in addition to oil well uses. Dow’s employees Hradel and Staadt tested many compositions including AN+A1+H,0 during an experimental program which began in 1955 and was completed in October 1956. This testing program resulted in the discovery of a number of different explosive compositions which were subsequently covered by several patent applications. One of these is patent application ’881 which later became involved in the interference proceedings in the Patent Office.

After the reissuance of the ’695 patent to Ireco in 1964, Dow caused the United States Patent Office to institute an interference proceeding to determine whether the invention disclosed in the ’695 patent, and more particularly whether that disclosed by claim 9 thereof, was first developed by the aforesaid Cook and Farnam, or by the two Dow employees Hradel and Staadt. After hearing, the Board of Patent Interferences awarded priority of invention to Dow on the basis that there was a reduction to practice of the count of interference by Dow through the work of Hradel and Staadt by the fall of 1956, such antedating the work of Cook and Farnam. It was in this general setting that Ireco went to court.

Ireco’s complaint, containing two counts, named Dow as the sole defendant. The first count was an action brought pursuant to 35 U.S.C. § 146, which is basically a de novo action in effect appealing the decision by the Board of Patent Interferences, which, as indicated, held that Dow’s Hradel and Staadt were the prior inventors of certain explosive compositions claimed by Ireco in patent ’695. The second count in Ireco’s complaint charged Dow with infringement of claims 5 through 12 of patent ’695.

As indicated above, the University of Utah intervened in the proceeding brought by Ireco against Dow. The basis for such intervention was the University’s belief that the work done by Cook should have inured to the benefit of the University, and not Ireco, hence it made claim to the ownership of patent ’695. Also as indicated above, it is our understanding that the University and Ireco have resolved their differences and that the only disputants in this appeal at this time are Ireco and Dow.

Trial of this matter to the court extended some two weeks and culminated in a judgment in favor of Dow. Specifically, in elaborate findings and conclusions, the trial court concluded that Hra-del and Staadt were the first inventors of the subject matter of the patents here under consideration and affirmed the interference decision of the Patent Office awarding priority to Dow. In line with its resolution of count one of Ireco’s complaint, the trial court also found for Dow on the infringement issue raised in count two of the complaint. Ireco now appeals.

The findings, conclusions and judgments of the trial court are reported in 177 U.S.P.Q. at pages 34 to 76. The length of the trial of this case, over two weeks, and the detailed findings and conclusions of the trial court, some forty-two pages in printed form in the United States Patent Quarterly, are eloquent proof that the trial judge gave this entire matter his most careful attention. Accordingly, there is no need to here recite the factual background out of which this controversy arises, as such is set forth fully in the findings of the trial court. We shall here confine ourselves to the one or two matters which we believe to be decisive of the appeal and which require an affirmance of the judgment entered by the trial court.

In our view, perhaps the crucial issue in this appeal concerns just what Ireco invented through the efforts of Cook and Farnam, and whether such was the same as, or different from, that which Dow invented through the efforts of Hradel and Staadt. In other words, is the subject matter of patent ’695 the same as that of Dow’s patent application? If both were simply the invention of a detonable explosive in slurry form consisting of ammonium nitrate, aluminum, and water, then Dow has the earlier priority date.

It is Ireco’s position on appeal that the subject matter of its patent ’695 is different than Dow’s and that ’695 is not just any detonable explosive in slurry form consisting of ammonium nitrate, aluminum, and water, but that it is a particular slurry which has been made “water compatible” through what Ireco calls “complete water soaking.” Ireco asserts that the patent claims and specifications clearly indicate that its invention is narrower than, and different from, Dow’s invention because of this “completely water soaked” concept. Reference will now be made to the definition which Ireco seeks to give the phrase “completely water soaked.”

As indicated, according to Ireco its patent ’695 is not just any slurry of AN+A1+H,0, having solid particles of AN and Al in H20, but that it is a slurry containing just the right amount of H20, i. e., no more and no less than is required to render the slurry water compatible because of the fact that it is “completely water soaked.” Illustrations may help to point up what Ireco deems to be a completely water soaked explosive slurry.

In a completely water soaked AN+AI+H2O slurry, the solid particles are “blanketed,” i. e., completely water soaked, in the sense that there is just enough liquid to fill all the voids or spaces between the solid particles, no more and no less. If the amount of water used were less than that required to completely water soak the solid particles, then the upper portion of the mix would be relatively dry, composed of solid AN and Al particles with no liquid in the spaces between the particles. On the other hand, if one were to employ more water than required to completely water soak the solid particles, then there would be an upper layer or supernatant liquid of solution devoid of solid particles. The first of these examples is the only one which is “completely water soaked,” according to Ireco, and the latter two examples are not, even though water is used in the slurry.

It is on this basis that Ireco contends that theirs is not just any slurry consisting of AN+A1+H20, but a slurry which is “completely water soaked,” thus rendering it water compatible to the end that it is suitable for use in boreholes where water is present. A word about “water compatibility” is in order.

A typical borehole in a mining operation is ofttimes filled with water, and of course such water has an adverse affect on the solid type explosive. Because of this fact, Farnam, the vice-president in charge of the mining operations of the Iron Ore Company of Canada, encouraged Dr. Cook to invent a slurry type explosive which would be compatible with any water to be found in a borehole. According to Ireco, “this was the first time anyone had ever thought of using water to protect an explosive against water.” Furthermore, according to Ireco, it is only when a slurry explosive composed of AN+A1+H,0 is-“completely water soaked” that the explosive is “water compatible” and suitable for use in a wet borehole. It is on this general basis that Ireco claims that the subject matter of its invention is different from that of Dow’s, the latter being a slurry but not one which is necessarily “completely water soaked” and therefor Dow’s slurry is not “water compatible.”

It is Dow’s basic position that both inventions relate to the same subject matter, namely, a slurry explosive consisting of AN+A1+H20 and that Ireco’s claim that its invention is a special kind of slurry which is “completely water soaked” and therefor “water compatible” is but a play on words, representing only an afterthought on its part, and not the true subject matter of its patent ’695. As indicated, the trial court rejected the position advanced by Ireco and found that Ireco’s and Dow’s inventions concern the same subject matter. In this regard, we conclude from our study of the matter that the trial court’s findings are not clearly erroneous and accordingly on appeal should be upheld. Hinde v. Hot Sulphur Springs, Colorado, 482 F.2d 829 (10th Cir. 1973); Swanson v. Unarco Industries, Inc., 479 F.2d 664 (10th Cir. 1973), cert. denied, 414 U.S. 1076, 94 S. Ct. 593, 38 L.Ed.2d 483 (1973); Ma-loney-Crawford Tank Corp. v. Sauder Tank Co., 465 F.2d 1356 (10th Cir. 1972).

On this phase of the appeal Ireco first argues that as a matter of fact the trial court actually found that Ireco’s invention was not merely an AN+A1+H20 slurry, but was a slurry which was “completely water soaked.” Ireco then complains that the trial court thereafter failed to apply its finding on this particular matter to the issues in the case. This would perhaps be a valid argument if the trial court and Ireco used the same definition for the phrase “completely water soaked.” However, from the further findings of the trial court it is quite evident that they did not.

For example, in finding 36 it is qu.ite true that the trial court found that patent ’695 as a whole, and particularly as to claim 9 therein, is a combination of AN + Al + H20 in the form of a slurry of solid AN and A1 particles in a solution of AN which “completely soaks” the solid particles. However, the trial court then went on in that same finding to expressly negate that which Ireco now claims are the essentials of a “completely water soaked” solution when the trial court further found as follows:

“ * * * The court further finds that the patent does not disclose or teach as an essential or critical part of the invention, or at all, that all the spaces between the solid particles must be filled with the AN solution, that there can be no supernatant liquid or that the slurry necessarily is homogeneous and stable even when not undergoing mixing.”

Accordingly, it is obvious to us that the trial court when it used the phrase in its findings that the solution “completely soaks” the solids was not thereby adopting Ireco’s definition of “completely water soaked.” In fact, the trial court rejected Ireco’s definition of that phrase as being the subject matter of its invention. Let us now examine patent ’695 in the light of its claim and specifications.

Ireco’s patent ’695 is entitled “Explosive Composition Comprising Ammonium Nitrate and Heat Producing Metal.” The phrase “completely water soaked” is not used in any of the twelve claims included in the ’695 patent. The phrase is, however, used once in the description of the invention in the patent specifications, although the phrase itself is not defined therein as it is now sought to be defined by Ireco in this court. We deem the testimony of those skilled in the art as to the meaning of the phrase to be inconclusive. On such state of the record the trial court understandably observed that a “question * * * naturally arises * * * why what is now contended as the very heart of the invention and its distinguishment from prior art was left unsaid or to depend on indirect, equivocal or arguable language.” We too share the same concern. It is strange that the phrase “completely water soaked” is not used in any of the twelve claims in patent ’695 and is but briefly mentioned in the specifications, and yet Ireco now claims that water compatibility through complete water soaking is the essence of the invention. Certainly it is a permissible inference that this concept of a “completely water soaked” slurry represents an afterthought on the part of Ireco advanced here in an effort to bolster its case against Dow, and was not at the time of the patent application really deemed to be an essential of the subject matter.

Without going into a detailed analysis of the record, which includes not only the written record as reflected by the several patents, including claims and specifications, but also includes extended testimony from all of the participants, our study convinces us that there is ample evidence to support the trial court’s determination that the subject matter of Ireco’s and Dow’s respective patents is the same, and that Dow is the first inventor. By no stretch of the imagination can the trial court’s findings be characterized as “clearly erroneous,” which we would have to do if we were to reverse. In sum, then, the record supports the trial court’s determination that Dow was the prior inventor.

In our view the trial court's finding that Dow was the prior inventor of the subject matter of Ireco’s patent ’695 applies not only to claim 9 in patent ’695, which was the only claim involved in the interference proceeding, but also applies to all claims in the patent, including claims 5 through 12, which are the basis for the infringement count. In one sense we need only be concerned here with claims 5 and 9 of ’695, which are representative of the others. As indicated, both the patent office and the trial court have concluded that as concerns claim 9, the subject matter of that claim was the same as that of Dow’s patent application based on earlier work. And we agree that for the same reason an infringement action based on claim 5 will not lie.

It is true that claim 5 in ’695 did contain certain limitations as to the density of the slurry and the percentage of water to be contained therein. In this regard Ireco argues that even though the phrase “completely water soaked” is not used in claim 5, still if the limitations concerning the percentage of water is set forth in the claim be followed, the result will be a slurry which is, in fact, completely water soaked. In this connection, however, Dow presented evidence which tended to show that a slurry made within the limitations set forth in claim 5 did not necessarily result in a slurry that was completely water soaked, even under Ireco’s narrow definition of that phrase. In turn, Ireco attempted to counter such evidence by showing that a slurry prepared in accord with the limitations set forth in claim 5 would be a completely water soaked slurry if the right combination of large and small particles were used. On this state of the record, with much of the evidence in conflict, it is not surprising to us that the trial court concluded that the subject matter of claim 5 was the same as that defined in the count of interference, and that claim 5 was not expressly or by implication limited to a completely water soaked slurry mixture under Ireco’s definition of that phrase. In sum, then, the record supports the trial court’s determination that none of the claims in patent ’695 describe a slurry of the type here argued for by Ireco and that the subject matter of ’695 was the same as Dow’s prior work. We agree with the trial court’s holding that claim 5 of the ’695 patent is obvious in view of, and unpat-entable over, the work of Hradel and Staadt in 1955 and 1956, and the Hradel and Staadt invention as defined in the interference count.

Ireco alternatively argues that Dow was itself guilty of inequitable conduct in connection with the preparation of its patent application to the end that such misconduct forecloses Dow from asserting its claim to any patent rights, including priority in an interference proceeding. In connection with this particular phase of the controversy the trial court found no such misconduct as would preclude Dow from asserting its rights under its several patents relative to a slurry type explosive compound of AN+A1+H20. Certainly the evidence pertaining to inequitable conduct on the part of Dow was conflicting and, accordingly, on appeal the trial court’s resolution of the matter should not be disturbed by us.

Dow by cross-appeal seeks reversal of that portion of the trial court’s judgment which refused to award attorney fees to Dow. Section 285, 35 U.S.C., does provide that in “exceptional eases” an award of reasonable attorney fees may be made to the prevailing party in a patent proceeding of this type. So, even if the instant case can in some way be described as “exceptional,” the trial court still cannot be reversed unless its refusal to award attorney’s fees constituted an abuse of its discretion. Hayes Spray Gun Company v. E. C. Brown Company, 291 F.2d 319 (9th Cir. 1961). We find no such abuse of discretion. In this general connection, see also Q-Panel Company v. Newfield, 482 F.2d 210 (10th Cir. 1973).

Judgment affirmed.

      . “While the claims of a patent limit the invention, and specifications cannot be utilized to expand the patent monopoly, * * * it is fundamental that claims are to be construed in the light of the specifications and both are to be read with a view to ascertaining the invention. * * United States v. Adams, 383 U.S. 39, 86 S.Ct. 708, 15 L.Ed.2d 572 (1966).


author: DYER, Circuit Judge:

text:
    Juventino BALDERAS, Plaintiff-Appellant-Cross Appellee, v. La CASITA FARMS, INC., Defendant-Appellee-Cross Appellant.
    No. 73-3699.
    United States Court of Appeals, Fifth Circuit.
    Aug. 30, 1974.

      David G. Hall, Am. Civ. Liberties Union Foundation, San Juan, Tex., Jim Heidelberg, San Antonio, Tex., for plaintiff-appellant-cross appellee.
    James A. Herrmann, Washington, D. C., for MLAP.
    Gary R. Gurwitz, McAllen, Tex., for defendant-appellee-cross appellant.
    Before TUTTLE, DYER and GEE, Circuit Judges.
   DYER, Circuit Judge:

The United Farmworkers Organizing Committee (UFWOC) is a labor organization, active in the Rio Grande Valley of South Texas, consisting primarily of Mexican-American farmworkers. The principal issue presented in this case is whether an employer’s discharge of a Mexican-American employee who is associated with the UFWOC contravenes Title VII of the 1964 Civil Rights Act, 42 U.S.C.A. § 2000e et seq., by virtue of the organization’s official involvement in civil rights-related activities. We hold that under the circumstances of this case, it does not.

I

Balderas, a UFWOC sympathizer, was discharged on November 10, 1970, from his post as a maintenance truck operator by his employer, La Casita Farms, a large agricultural enterprise located in the Rio Grande Valley of Texas. Prior to his dismissal, Balderas had been in La Casita’s employ as a seasonal field worker for about fifteen years. In 1969, his non-permanent status as a seasonal employee was changed with a promotion to the year-round position of maintenance truck operator. His tenure with the company was terminated a year later, however, ostensibly because of his inadequate work performance in servicing field machinery. Notwithstanding La Casita’s expressed reasons for his removal, Balderas was of the view that the actual cause of the discharge was his well-known association with the UFW-OC, which had been seeking periodically since 1966 to organize South Texas farmworkers. Accordingly, Balderas filed a written charge with the Equal Employment Opportunity Commission, alleging that a discharge stemming from anti-UFWOC animus was violative of Title VII, since the United Farmworkers union was seeking to promote the interests of an identifiable national group. Following the EEOC’s fruitless conciliatory efforts, Balderas timely filed suit in the court below, contending that his dismissal contravened three distinct statutes, namely Title VII, the 1866 Civil Rights Act, 42 U.S.C.A. § 1981, and the Texas Right-to-Work Law, Vernon’s Ann.Civ.St. art. 5154g.

Following a bench trial, the' district court concluded that Balderas was fired because of his union affiliation, even though his lengthy association with the organization had never been consummated in full membership. The court accordingly found the dismissal violative of Texas law, which proscribes denials of employment opportunities based on union membership or nonmembership, and awarded damages. On the other hand, Balderas’ request for reinstatement was denied because of the court’s conclusion that restoration would not be consistent with the former employee’s own interests. Other than the Right-to-Work violation, the court found no Title VII or section 1981 abridgement resulting from the dismissal, inasmuch as the court concluded that no evidence supported the allegation that Balderas was discriminated against by virtue of his national origin. We agree that the discharge ran afoul of neither federal measure invoked by Balderas, that his removal nonetheless did violate Texas law, but we conclude that reinstatement was improperly denied and that damages were inaccurately determined.

II

To come within the purview of Title VII, Balderas was obliged to demonstrate that his discharge resulted from La Casita’s discrimination against him on account of his Mexican ancestry. 42 U.S.C.A. § 2000e-2(a) (1). This burden was no small one, since the evidence demonstrated that La Casita’s employees were overwhelmingly Mexican-American in national origin and that Balderas’ own replacement was likewise of Mexican ancestry, two highly relevant, albeit nondispositive, factors. To counter these ostensibly discrimination-free hiring practices, Balderas argues that the UFWOC’s deep involvement in civil rights activities on behalf of Mexican-Americans creates a mantle of protection under Title VII benefiting any member of that organization who is fired because of his association with or membership in the group. To substantiate this thesis, Balderas invoked an EEOC Guideline which provides that the Commission, in its efforts to eradicate covert as well as overt discriminatory-practices, will examine with “particular concern” cases of equal opportunity denials “because of membership in lawful organizations identified with or seeking to promote the interests of national groups. . . .”29 C.F.R. § 1606.-1(b) (emphasis supplied). In his effort to trigger the Guideline’s applicability, Balderas successfully proved at trial that the UFWOC was indeed squarely within the literal language of the measure by virtue of the organization’s efforts on behalf of Mexican-Americans in the Rio Grande Valley, a showing which La Casita does not contest.

Despite this proof of the United Farmworkers’ endeavors pro bono publico, La Casita showed at trial, and the district court expressly found, that these efforts were essentially extracurricular, being incidental to UFWOC’s primary object as a labor organization of attempting to solicit the support of Mexican-Americans working in the Rio Grande Valley. Moreover, in testimony at trial La Casita officials freely admitted their disapproval of the UFWOC, but nonetheless testified that their aversion was based upon its alleged organizational tactics qua labor union which were directed specifically at La Casita, including picketing, threats of violence, and a generous use of epithets and verbal abuse heaped upon La Casita employees.

In response to this latter showing, Bal-deras attempted to prove that La Casita managers were in fact overtly prejudiced against their Mexican-American underlings, as evidenced by the paucity of Mexican-Americans occupying the few administrative positions at La Casi-ta, and by one Anglo foreman’s reference at trial to adult farmworkers as “boys.” Nothing was adduced, however, to show that La Casita in any way objected to the United Farmworkers’ non-labor activities in civil rights causes nor that Balderas himself had ever engaged in civil rights activities, whether sponsored by the UFWOC or not. At bottom, therefore, Balderas proffers a per se rule of Title VII violations: whenever an employee is discharged because of his association with or membership in a labor union which is deeply identified with promoting the interests of a national group, Title VII is violated even if the employee himself is not shown.to be engaged in civil rights activities and even though the employer’s disapprobation of the union is shown to spring strictly from that organization’s labor activities. We are convinced that Title VII, as construed by the Guideline, does not reach so far.

The language of Title VII indicates congressional concern with unlawful discrimination against individuals on specified, impermissible bases such as national origin. 42 U.S.C.A. § 2000e-2(a)(1). Federal protection is also extended to persons disparately treated because they have “opposed any practice made an unlawful employment practice. . .”, 42 U.S.C.A. § 2000e-3(a), even though their own race or national origin is not the basis of employer discrimination. In furtherance of these congressional policies and in recognition of the fact that not all unlawful practices are open or flagrant, the EEOC formulated the particular Guideline at issue in this case to focus on instances of covert discrimination against individual employees. It is toward this limited context that the Guideline is directed. It is not aimed at expanding Title VII’s applicability beyond the intended ambit of individuals who are subjected either covertly or overtly to discriminatory employment practices.

And it is this indispensable element of discrimination against an individual employee which was not proved in this case — either discrimination based upon the aggrieved person’s national origin or upon the employee’s opposition to unlawful practices, regardless of his own national origin. Balderas was not shown to be engaged at all in civil rights activities. In fact, his entire proof at trial established that he was associated with the UFWOC, which was itself actively engaged in civil rights work as part of its union organizational efforts. But whatever inference of illegality might have been raised by this showing in itself, the inference was dissipated by the uncontradicted evidence that La Casita discriminated against this UFWOC sympathizer because of its disapproval of the union’s traditionally labor-oriented activities. Under the evidence, La Casi-ta was strenuously objecting, and by improper means under Texas law, to the unionizing of its employees, not to anyone’s civil rights activities. This dispute therefore reduces to a conflict only in labor-management relations, a genus of disputes completely outside the compass of Title VII.

Ill

Balderas argues at great length that under the principles established in McDonnell Douglas Corp. v. Green, 1973, 411 U.S. 792, 93 S.Ct. 1817, 36 L.Ed.2d 668, with respect to the burden of proof in Title VII actions, he must inevitably prevail in light of the proof which was forthcoming at trial. His reasoning is as follows: that he established a prima facie case of unlawful discrimination by showing that he was discharged due to his association with an organization working toward the betterment of Mexican-Americans ; that this case was arguably rebutted by La Casita’s evidence of Balderas’ poor job performance; but that this purported justification was rebutted by proof that the employer’s excuse for dismissal was pretextual, and therefore that the original prima facie case is resuscitated and stands uncontra-dicted. This seemingly logical progression has, however, two fatal deficiencies: first, the purportedly prima facie case was never proved, because, as previously stated, it was not demonstrated that La Casita's retaliation against a UFWOC sympathizer was tied to either the employee’s or the union’s civil rights activities. Again, all Balderas showed was that the UFWOC was active in civil rights affairs, but no nexus was ever demonstrated between these protected activities and La Casita’s anti-union sentiments. Second, even though La Casita unsuccessfully protested that Balderas’ discharge was justified for business reasons, proof that this purported reason was simply pretextual did not resurrect any prior showing by Balderas of discriminatory conduct based on national origin, even assuming arguendo that a prima facie case had been established, because the proof at trial demonstrated that the unsuccessful justification for the firing was an attempted coverup of La Casita’s opposition to the union qua union. McDonnell Douglas is therefore not dispositive of this ease, as Balderas would now have it.

IV

Our conclusion that no proof was forthcoming to the effect that Balderas’ discharge resulted from discrimination on account of national origin similarly disposes of any possible claim under the 1866 Civil Rights Act. We therefore are not confronted with, and we do not address, the issue whether section 1981 encompasses such claims if proof of national-origin discrimination exists. See, e. g., Marshall v. Plumbers and Steamfitters Local Union 60, E.D.La.1972, 343 F.Supp. 70, 72; Schetter v. Heim, E.D. Wis.1969, 300 F.Supp. 1070, 1073.

V

We are also convinced that the district court correctly found Balderas’ discharge to be in violation of the Texas Right-to-Work law. The district court found, and its finding is not clearly erroneous, that La Casita fired Balderas because of the latter’s union affiliation. In response, La Casita argues strenuously that Balderas’ status with the union was insufficiently choate to warrant protection under Texas law, since the controlling state statute speaks of “membership” in unions. The employer contends that Balderas’ failure ever to pay UFWOC dues precludes the statute’s applicability, since Balderas was indisputably not a full-fledged member.

The district court properly rejected this restrictive interpretation of Texas law in light of the teaching of the Texas Supreme Court in Lunsford v. City of Bryan, 1957, 156 Tex. 520, 297 S.W.2d 115. Lunsford states in unmistakable language that the precise status of the employee is not dispositive of the statute's applicability; accordingly, the Court held in that case that an employee who was not a full, dues-paid union member at the time of his discharge was nonetheless protected under Texas law. “The reason [for the discharge] in the mind of the employer, and not the exact status of the employee, should govern.” Id. 297 S.W.2d at 117.

Here Balderas was a well-known UFWOC disciple. He had signed an authorization card, had actively proselytized the farm’s employees on behalf of the union, and had frequented the union’s headquarters to the chagrin of his superiors at La Casita. There was simply no question in the employer’s mind as to where Balderas stood in the La Casita-UFWOC struggle. Under these circumstances, the federal courts are Sne-bound to give effect to the authoritative statutory construction embodied in Lunsford, and we accordingly hold that this discharge contravened Texas law.

Although correctly determining the discharge to be invalid under state law, the court nonetheless denied Balder-as’ prayer for reinstatement, stating in conclusory language that reinstatement would not be in Balderas’ own interests. We cannot fathom any way in which the fired employee would be disadvantaged by restoration to his former position, wrongfully denied him now for almost four years. He has not succeeded in obtaining a permanent post elsewhere, and his continual search for employment is frequently unsuccessful, or else his temporary posts demand his traveling substantial distances. Since the district court clearly enjoyed power to reinstate Balderas, not being disabled from so doing under Texas law, we conclude that this remedy was improperly denied.

In addition, our review of the record indicates the necessity of a remand for recomputation of damages. The district court awarded $250 in damages for the brief period of Balderas’ unemployment extending from November 10 to November 30, 1970. Yet, the court found that while at La Casita, Balderas earned somewhere between $300 and $400 per month, while after his discharge he averaged $300 a month. From this finding alone, it is evident that Balderas sustained greater losses than those determined by the trial court. It is therefore necessary to remand for a precise computation of damages to compensate Balderas fully for the entire differential between pre- and post-discharge income.

In all other respects, including the grant and scope of injunctive relief, the district court’s judgment was proper.

Affirmed in part; reversed in part; and remanded.

      . 42 U.S.C.A. § 2000e-2(a) (1).

      . Balderas is an American citizen and is thus not precluded from success under Title VII by virtue of non-citizenship, a form of discrimination which, in itself, is not interdicted by Title VII. See Espinoza v. Farah Mfg. Co., 1973, 414 U.S. 86, 94 S.Ct. 334, 38 L.Ed.2d 287.

      . Espinoza, supra, teaches that favorable employment statistics “do not automatically shield an employer from a charge of unlawful discrimination . . . ”, id. at 93, 94 S.Ct. at 339, but the relevance of such statistics and the fact that the employee’s replacement was Spanish-surnamed cannot be doubted.

      . La Casita consistently maintained that the particular discharge which prompted this litigation was based on Balderas’ unsatisfactory work performance. Despite this protestation, the employer willingly confessed to anti-UFWOC sentiments.


author: ALFRED T. GOODWIN, Circuit Judge:

text:
    R. W. BRUBAKER, who is also known as Ronald W. Brubaker, et al., Appellants, v. Rogers C. B. MORTON, as Secretary of the Interior of the United States of America, Appellee.
    No. 73-2974.
    United States Court of Appeals, Ninth Circuit.
    June 27, 1974.

      John B. Lonergan, San Bernadino, Cal., for appellants.
    Edmund B. Clark, Chief, App. Section, Dept, of Justice, Land & Natural Resources Div., Washington, D. C., for ap-pellee.
    Before DUNIWAY and GOODWIN, Circuit Judges, and SKOPIL, District Judge.

       Tlie Honorable OTTO R. SKOPIL, United States District Judge for the District of Oregon, sitting by designation.

   OPINION

ALFRED T. GOODWIN, Circuit Judge:

The Secretary of the Interior invalidated appellants’ placer mining claims located on public lands. Appellants sued, contending that the Secretary erred in concluding that mineral deposits of colored stone, used for decorative roofing material, were “common varieties” of stone, not subject to claim and location under the federal mining laws. The district court agreed with the Secretary, and granted summary judgment. We affirm.

The Secretary’s decision was the culmination of administrative proceedings initiated by the filing of contests by the Bureau of Land Management in 1963, charging that the claims were of a “common variety” of stone, not locatable under the mining laws at the times the claims were located. After ten years of hearings and administrative appeals, the Interior Board of Land Appeals, acting pursuant to authority delegated to it by the Secretary, 43 C.F.R. § 4.1, held that appellants’ claims were void because their brightly colored stone, while selling for a higher price than gray stone, did not have a special and distinct value over that of other stone deposits in common supply in the same market area. Hence, their stone was a common variety within the meaning of section 3 of the Act of July 23, 1955, 69 Stat. 368, 30 U.S.C. § 611, and was not subject to mineral filing.

Title 30 U.S.C. § 611 states in pertinent part as follows:

“No deposit of common varieties of sand, stone, gravel, pumice, pumicite or cinders * * * shall be deemed a valuable mineral deposit within the meaning of the mining laws of the United States so as to give effective validity to any mining claim hereafter located, under such mining laws -» * *_ ‘Common varieties’ as used in sections 601, 603, and 611 to 615 of this title does not include deposits of such materials which are valuable because the deposit has some property giving it distinct and special value * * * *>

In United States v. Coleman, 390 U.S. 599, 88 S.Ct. 1327, 20 L.Ed.2d 170 (1968), the Supreme Court held that this section does apply to common varieties of building stone, but that 30 U.S.C. § 161, authorizing mining locations of lands chiefly valuable for building stone, remains viable and effective as to building stone that has some property giving it distinct and special value.

Appellants argue that the stone on their claims, which is used primarily for roofing-rock, has a property giving it distinct and special value — its bright color. Whereas their stone sells for from $10.50 to $13.00 per ton, normal gray stone, also used for roofing, sells for only $8.00 per ton. However, attractive colored stone like that on appellants’ claims can be found in many other locations in the same market area, and appellants’ stone sells for the same price as that from these other locations.

Relying upon the statute, 30 U.S.C. § 611, and his own interpretive regulation, 43 C.F.R. § 3711.1(b), the Secretary held that, since comparable colored stone was in common supply, appellants’ stone should be compared with other deposits of colored stone, not with deposits of gray stone, to determine whether it had some distinct and special value. So compared, it did not.

A court faced with a problem of statutory construction should give great deference to the interpretation of a statute by the officers or agency charged with its administration. Red Lion Broadcasting Co. v. FCC, 395 U.S. 367, 381, 89 S.Ct. 1794, 23 L.Ed.2d 371 (1969). When the construction of an administrative regulation, rather than the statute itself, is in issue, deference is even more clearly in order. Udall v. Tallman, 380 U.S. 1, 16, 85 S.Ct. 792, 13 L.Ed.2d 616 (1965).

Not only does the Secretary’s interpretation conform to the command of the statute and his own regulation, but also it is consistent with the Supreme Court’s opinion in United States v. Coleman, supra. The stone involved there was very common quartzite. The Supreme Court stated that the Secretary was correct in ruling that because of the immense quantities of identical stone in the area outside of Coleman’s claims the stone should be considered a common variety. The Court emphasized the fact that the same stone was in common supply; it did not ask whether there might have been lower-priced building stone also available for the same use as quartzite. The Court concluded that by enacting section 611, Congress intended to remove these common varieties of stone and gravel from the coverage of the mining laws and to place their disposition under the Materials Act of 1947, 61 Stat. 681, 30 U.S.C. § 601, which provides for the sale of such materials without disposing of the land on which they are found. See 390 U.S. at 603-605. See generally McClarty v. Secretary of Interior, 408 F.2d 907 (9th Cir. 1969).

The Secretary properly invalidated appellants’ placer mining claims. The common variety of building stone, on which these claims were based, is exactly what Congress had in mind when it eliminated “common varieties” from the coverage of the mining laws.

Affirmed.

      . Mandamus, pursuant to 28 U.S.C. § 1361, and administrative review, under 5 U.S.C. §§ 701-704, were sought in the district court.

      . All the claims were located after enactment of section 3 of the Act of July 23, 1955, 69 Stat. 368, 30 U.S.C. § 611.

      . The opinion of the Board may be found at 9 I.B.L.A. 281 (1973).

      . “ ‘Common varieties’ includes deposits which, although they may have value for use in trade, manufacture, the sciences, or in the mechanical or ornamental arts, do not possess a distinct, special economic value for such use over and above the normal uses of the general run of such deposits. Mineral materials which occur commonly shall not be deemed to be ‘common varieties’ if a particular deposit has distinct and special properties making it commercially valuable for use in a manufacturing, industrial, or processing operation. In the determination of commercial value, such factors may be considered as quality and quantity of the deposit, geographical location, proximity to market or point of utilization, accessibility to transportation, requirements for reasonable reserves consistent with usual industry practices to serve existing or proposed manufacturing, industrial, or processing facilities, and feasible methods for mining and removal of the material. Limestone suitable for use in the production of cement, metallurgical or chemical grade limestone, gypsum, and the like are not ‘common varieties.’ This subsection does not relieve a claimant from any requirements of the mining laws.” 43 C.F.R. § 3711.1 (b).


author: THORNBERRY, Circuit Judge:

text:
    Edward Branch GREEN, Plaintiff-Appellant, v. Caspar WEINBERGER, Secretary of Health, Education and Welfare, Defendant-Appellee.
    No. 73-3117.
    United States Court of Appeals, Fifth Circuit.
    Sept. 9, 1974.

      Fred J. Rafes, J. D. Rutland, Beaumont, Tex., for plaintiff-appellant.
    Roby Hadden, U. S. Atty., Tyler, Tex., Robert H. Nicholas, Jr., Asst. U. S. Atty., Beaumont, Tex., Kathryn H. Baldwin, Thomas G. Wilson, Atty. Dept, of Justice, Washington, D. C., for defendant-appellee. .
    Before GEWIN, THORNBERRY and SIMPSON, Circuit Judges.
   THORNBERRY, Circuit Judge:

Since 1960 appellant has filed six applications with the Social Security Administration asking for disability benefits. In each instance his application was denied. We must decide whether the District Court correctly dismissed appellant’s action seeking review of the denial of his sixth application. We affirm.

For purposes of this appeal, only two of appellant’s six applications require discussion. On October 9, 1963, Green filed his third application for disability benefits; it was denied initially and on reconsideration. A hearing was requested and held, and on August 23, 1965, the hearing examiner denied the application on the grounds that appellant was not under any disability as of June 30, 1963, the last day on which he met the special earnings requirements for disability purposes. The Appeals Council denied relief and so notified Green, as well as informing him of his right to seek judicial review of the denial. Despite this notice, Green took no action within the sixty days allowed for filing in District Court, and the hearing examiner’s decision thereby became final. 20 C.F.R. § 404.951.

On July 8, 1968, appellant filed his sixth application for benefits. Like the others, it was denied initially and on reconsideration. Green then sought a hearing on the application, but this request was dismissed on the grounds that the decision of August 23, 1965, was final and should not be l’eopened. The Appeals Council denied review. Appellant then brought this action in the court below seeking review of the Secretary’s disposition of his application.

20 C.F.R. § 404.937, enacted pursuant to Social Security Act § 205(a), 42 U.S.C. § 405(a) provides:

The hearing examiner may, on his own motion, dismiss a hearing request, either entirely or as to any stated issue, under any of the following circumstances:
(a) Res judicata. Where there has been a previous determination or decision by the Secretary with respect to the rights of the same party on the same facts pertinent to the same issue or issues which has become final, either by judicial affirmance or, without judicial consideration, upon the claimant’s failure timely to request reconsideration, hearing, or review, or to commence a civil action with respect to such determination or decision

Appellant does not attempt to avoid the effect of this regulation by claiming that his sixth application involved facts different from those involved in the decision of August 23, 1965. He urges instead that his failure- to seek review of the 1965 decision should be excused, for res judicata purposes, by his limited intellectual faculties and by his lack of counsel during and after the hearing on his third application.

Although mental illness may in some circumstances destroy the res judicata effect of a prior administrative determination, see Leviner v. Richardson, 443 F.2d 1338, 1343 (4th Cir. 1971), appellant alleges no disability that approaches the level of mental illness. Likewise, he has pointed out no material harm or prejudice arising from his lack of counsel at the earlier hearing. Several courts have noted the particular importance of the res judicata principle to the fair and efficient handling of claims under the Social Security Act. Stuckey v. Weinberger, 488 F.2d 904 (9th Cir. 1973); Easley v. Finch, supra. Congress’ concern for the finality of the agency’s decisions is evident from the Act itself. See 42 U.S.C. § 405(g), (h). Thus, the District Court’s refusal to consider the merits of appellant’s application must be affirmed.

As appellant notes, however, the strict requirements of res judicata have been modified in this administrative context by regulations that under some circumstances allow prior determinations to be reopened. 20 C.F.R. §§ 404.956-404.958. Accordingly, appellant asks us to consider his application as a request to reopen the hearing examiner’s decision on his October 1963 application and to reverse the District Court’s refusal to review the examiner’s denial of that request. The record affirmatively shows, however, that appellant’s petition for reopening was not timely filed under 20 C.F.R. § 404.957(b). Cf. Craig v. Finch, 416 F.2d 721 (5th Cir. 1969). Nevertheless, citing Torres v. Sec’y of Health, Educ. & Welfare, 475 F.2d 466 (1st Cir. 1973), appellant argues that the running of the four year limitation in § 404.957(b) should be tolled because his limited mental abilities prevented him from understanding the necessity of seeking reopening within the four year period. Here appellant alleges nothing like the major mental disability at issue in Torres, so we reject this contention while expressing no opinion on the holding in that case. We likewise find no basis for appellant’s assertion that the four year limitation in § 404.957(b) is “arbitrary.” The regulation represents a permissible resolution of the conflict between the need to give some finality to prior factual determinations and the desire to accord claimants all procedural rights consistent with reasonably efficient agency operation. Accord, Stuck-ey v. Weinberger, supra. Appellant thus offers no reason why we should find the limitations in § 404.957(b) inapplicable to him.

Appellant also claims that he is entitled to reopening of the 1965 decision under 20 C.F.R. § 404.957(c) (8), which allows reopening at any time “but only for the purpose of correcting clerical error or error on the face of the evidence on which such determination or decision was based.” See Craig v. Finch, supra. Appellant’s claim of new and material evidence patently is not the type of “error” with which this section was designed to deal. See Grose v. Cohen, 406 F.2d 823 (4th Cir. 1969) (arithmetical miscalculation in a prior decision is error on the face of the evidence). Accordingly, the District Court correctly refused to review the agency’s decision not to reopen the 1965 determination.

In light of the disposition we make of appellant’s contentions, we need not reach the question whether the District court lacked jurisdiction to review the agency’s decision not to reopen the 1965 decision. Compare Wallace v. Weinberger, 488 F.2d 606 (9th Cir. 1973), cert. denied, 417 U.S. 913, 94 S.Ct. 2612, 41 L.Ed.2d 217 (1974), and Stuckey v. Weinberger, supra, with Maddox v. Richardson, 464 F.2d 617 (6th Cir. 1972); Davis v. Richardson, 460 F.2d 772 (3d Cir. 1972); Cappadora v. Celebrezze, 356 F.2d 1 (2d Cir. 1966).

Judgment affirmed.

      . That is, appellant does not argue that he suffered under some disability whose existence was not litigated and decided in the 1963-65 proceedings. He bases his request for relief in part on alleged new evidence concerning the claimed disabilities that were the subject of the 1965 decision. Although going primarily to his claim of “good cause” for reopening the earlier decision, appellant’s new evidence argument obviously is also relevant to whether the decision should be given res judicata effect. Since the hearing examiner expressly found that the new evidence was merely cumulative of the evidence considered in the 1965 decision, however, it does not prevent the application of res judi-cata to his sixth'request for benefits.

      . The courts appear unanimous in holding that lack of counsel at the earlier hearing does not affect the validity of the resulting decision unless the claimant shows “clear prejudice or unfairness.” See, e. g., Davis v. Richardson, 460 F.2d 772 (3d Cir. 1972); Easley v. Finch, 431 F.2d 1351 (4th Cir. 1970); cf. Cross v. Finch, 427 F.2d 406 (5th Cir. 1970). Hearings before the agency are not adversary in nature, and the vast majority of claimants are not represented by counsel. Easley v. Finch, supra. Hence, appellant must meet a considerable burden to show prejudice or unfairness. Having shown no specific harm arising from his lack of counsel at the earlier hearing, as distinguished from general allegations of unfairness, appellant has failed to meet that burden.

      . 20 C.F.R. § 404.957 provides in relevant part:
      An initial or reconsidered determination of the Administration or a decision of a hearing examiner or of the Appeals Council which is otherwise final under § 404.-908, § 404.916,- § 404.940, or § 404.951 may be reopened:
      * * * * *
      (b) . within 4 years after the date of the notice of the initial determination (see § 404.907) to the party to such determination, upon a finding of good cause for reopening such determination or decision
      Notice of the initial determination of appellant’s October 1963 claim was sent to appellant on January 22, 1964. He did not file his sixth application until July 8, 1968.


author: AINSWORTH, Circuit Judge:

text:
    Harry Lee WILLIAMS, Petitioner-Appellant, v. W. J. ESTELLE, Director, Texas Department of Corrections, and C. V. Kern, Sheriff, Respondents-Appellees.
    No. 73-3854.
    United States Court of Appeals, Fifth Circuit.
    Sept. 6, 1974.

      Ben Aderholt, Houston, Tex. (Court-appointed), for petitioner-appellant.
    Joe Moss, Asst. Dist. A tty., Houston, Tex., for C. V. Kern.
    Dunklin Sullivan, Sarah Shirley, Asst. Attys. Gen., Austin, Tex., for W. J. Estelle.
    Before TUTTLE, COLEMAN and AINSWORTH, Circuit Judges.
   AINSWORTH, Circuit Judge:

Petitioner Harry Lee Williams appeals from denial of habeas corpus by the district court. He was convicted of assault with intent to kill with malice aforethought in a Texas state court in November 1970. The principal contention in this proceeding is that petitioner’s right to due process of law was violated when he was compelled to wear a prison uniform at his jury trial, despite his request for his readily available civilian clothes. We reverse and remand for a new trial.

I. The Due Process Implications of Trial in Prison Garb

In Brooks v. Texas, 5 Cir., 1967, 381 F.2d 619, 624, this Court characterized trial in prison garb as “inherently unfair.” Four years later, in Hernandez v. Beto, 5 Cir., 1971, 443 F.2d 634, we reaffirmed this language in Brooks and held the practice to be constitutional error — an impingement upon the presumption of innocence. We added, however, that “[a] defendant may not remain silent and willingly go to trial in prison garb and thereafter claim error.” 443 F.2d at 637.

Waiver of the objection cannot be inferred merely from failure to object if trial in prison garb is customary in the jurisdiction. It must be shown that the practice was not customary and might not be insisted upon if objected to, or that the defendant hoped to elicit sympathy by his appearance in such clothing. See Hernandez v. Beto, supra, 443 F.2d at 636-637; Hollins v. Beto, 5 Cir. 1972, 467 F.2d 951, 952; Goodspeed v. Beto, 5 Cir., 1972, 460 F.2d 398, 400. In the present case, as in Hernandez, the practice was customary, and there was no evidence that counsel used Williams’ appearance to evoke sympathy from the jury. Therefore, the district court correctly found there was no waiver, though no formal objection to prison garb was made by Williams' counsel at trial. 364 F.Supp. at 343.

II. Retroactive Application of Herrum-dez

Williams’ trial occurred before our decision in Hernandez, and so we must determine whether Hernandez is to be applied retroactively. In recent years the courts have abandoned the traditional practice of automatically giving retroactive effect to judicial decisions. See Norton v. County of Shelby, 118 U.S. 425, 6 S.Ct. 1121, 30 L.Ed. 178 (1886). In Linkletter v. Walker, 381 U.S. 618, 85 S.Ct. 1731, 14 L.Ed.2d 601 (1965), the Supreme Court consulted three criteria in holding that Mapp v. Ohio, 367 U.S. 643, 81 S.Ct. 1684, 6 L.Ed.2d 1081 (1961) (applying the Fourth Amendment exclusionary rule to the states) was not to apply retroactively: (1) the purpose of the newly announced rule; (2) the extent of reliance on the old rule by law enforcement officials; and (3) the probable effect of retroactive application on the administration of justice. See also Pruett v. State of Texas, 5 Cir., 1973, 470 F.2d 1182, 1184.

If a new rule serves a broad social policy — such as deterrence of unconstitutional actions by law enforcement officials — the courts have been reluctant to invoke retroactivity. See Williams v. United States, 401 U.S. 646, 91 S.Ct. 1148, 28 L.Ed.2d 388 (1971); Desist v. United States, 394 U.S. 244, 89 S.Ct. 1030, 22 L.Ed.2d 248 (1969); Tehan v. Shott, 382 U.S. 406, 86 S.Ct. 459, 15 L.Ed.2d 453 (1966); Linkletter v. Walker, supra; Mackey v. United States, 401 U.S. 667, 91 S.Ct. 1160, 28 L.Ed.2d 404 (1971); Fuller v. Alaska, 393 U.S. 80, 89 S.Ct. 61, 21 L.Ed.2d 212 (1968); Lyon v. United States, 5 Cir., 1969, 416 F.2d 91; Monroe v. United States, 5 Cir., 1970, 435 F.2d 160. On the other hand, rules designed to enhance the reliability of determinations of guilt or innocence are usually applied retroactively. See Witherspoon v. Illinois, 391 U.S. 510, 88 S.Ct. 1770, 20 L.Ed.2d 776 (1968); Jackson v. Denno, 378 U.S. 368, 84 S.Ct. 1774, 12 L.Ed.2d 908 (1964); Eskridge v. Washington State Prison Board, 357 U.S. 214, 78 S.Ct. 1061, 2 L.Ed.2d 1269 (1958); Arsenault v. Massachusetts, 393 U.S. 5, 89 S.Ct. 35, 21 L.Ed.2d 5 (1968); McConnell v. Rhay, 393 U.S. 2, 89 S.Ct. 32, 21 L.Ed.2d 2 (1968); Smith v. State of Texas, 5 Cir., 1968, 395 F.2d 958.

This criterion is not an automatic guide to whether retroactivity is jus-' tified. “[T]he question whether a constitutional rule of criminal procedure does or does not enhance the reliability of the fact-finding process at trial is necessarily a matter of degree.” Johnson v. New Jersey, 384 U.S. 719, 729, 86 S.Ct. 1772, 1778, 16 L.Ed.2d 882 (1966); Adams v. Illinois, 405 U.S. 278, 281, 92 S.Ct. 916, 918, 31 L.Ed.2d 202 (1972); Gosa v. Mayden, 413 U.S. 665, 680, 93 S.Ct. 2926, 2936, 37 L.Ed.3d 873 (1973); Michigan v. Payne, 412 U.S. 47, 55, 93 S.Ct. 1966, 1970, 36 L.Ed.2d 736 (1973); Bassett v. Smith, 5 Cir., 1972, 464 F.2d 347, 349. The “certainty and frequency” of the prejudice the new rule is designed to eliminate are important determinants of the appropriateness of retro-activity. Stovall v. Denno, 388 U.S. 293, 299, 87 S.Ct. 1967, 1971, 18 L.Ed.2d 1199 (1967); Juelich v. United States, 5 Cir., 1968, 403 F.2d 523. See DeStefano v. Woods, 392 U.S. 631, 634, 88 S.Ct. 2093, 2095, 20 L.Ed.2d 1308 (1968).

In the present case, the purpose of the new rule unquestionably is to enhance the reliability of the fact-finding process. Nothing could be more subversive of that process than a practice that compromises the presumption of innocence. Nor need we speculate about the certainty and frequency of the prejudice associated with this error.

In Brooks v. Texas, supra, we declared trial in prison garb to be “inherently unfair.” This conclusion is consistent with the vieW that whether a practice is, in a legal sense, prejudicial must be determined in light of both the individual’s interest in an accurate determination of guilt or innocence and the state’s interest in an efficient criminal justice system unburdened by excessive delay or complication.

For example, physical restraints on a defendant are permissible only when necessary to prevent injury to bystanders, escape, or disorder at trial. Odell v. Hudspeth, 10 Cir., 1951, 189 F.2d 300, 302. Like trial in prison garb, this practice adversely affects the accuracy of the fact-finding process, because it may prejudice the jury against the defendant. Odell v. Hudspeth, supra, 189 F.2d at 302. The use of restraints is not “inherently unfair,” however, because the adverse effect may be an unavoidable consequence of protecting an important state interest — such as safety in the courtroom. Therefore, the defendant must show that the practice was prejudicial in his case — that is, was not necessary to protect an important state interest. See Gregory v. United States, 8 Cir., 1966, 365 F.2d 203, 205; Way v. United States, 10. Cir., 1960, 285 F.2d 253, 254; Hardin v. Estelle, W.D.Tex., 1973, 365 F.Supp. 39, 46-47. See generally Lane v. Warden, 4 Cir., 1963, 320 F.2d 179, 186.

Trial in prison garb, in contrast to use of physical restraints, does not serve a legitimate state interest. The state has advanced no reason for denying a defendant’s request for his available civilian clothes. The certainty and frequency of the prejudice need not be measured. The practice in question is also prejudicial because it is unnecessary. Thus the purpose of the rule announced in Hernandez strongly supports retroactivity.

The second factor — the extent of reliance by law enforcement officials — also points toward retroactivity. In almost every case in which the Supreme Court, has refused to apply constitutional rules of criminal procedure retroactively, the new rule was announced in a case overruling clear, well-established precedent. See Williams v. United States, supra,, 401 U.S. at 648, 91 S.Ct. at 1150; Desist v. United States, supra, 394 U.S. at 250, 89 S.Ct. at 1034; DeStefano v. Woods, supra, 392 U.S. at 634, 88 S.Ct. at 2095; Stovall v. Denno, supra, 388 U.S. at 299, 87 S.Ct. at 1971; Johnson v. New Jersey, supra, 384 U.S. at 731, 86 S.Ct. at 1780; Tehan v. Shott, supra, 382 U.S. at 411, 86 S.Ct. at 462; Linkletter v. Walker, supra, 381 U.S. at 630, 85 S.Ct. at 1738; Pruett v. State of Texas, supra, 470 F.2d at 1184. The Court has never refused retroactive application where the condemned practice had not received at least substantial support from prior rulings. See Adams v. Illinois, 405 U.S. 278, 283-284, 92 S.Ct. 916, 920, 31 L.Ed.2d 202 (1972); Gosa v. Hayden, 413 U.S. 665, 682, 93 S.Ct. 2926, 2932, 37 L.Ed.2d 873 (1973) (plurality opinion); Michigan v. Payne, 412 U.S. 47, 56, 93 S.Ct. 1966, 1971, 36 L.Ed.2d 736 (1973). Reliance on a blank slate is not enough. But see Bassett v. Smith, 5 Cir., 1972, 464 F.2d 347, 351. Even where the condemned practice has found support in lower court decisions or Supreme Court dicta, new rules have been applied retroactively if their effect on trial accuracy is substantial and they do not greatly burden the administration of justice. See Witherspoon v. Illinois, supra, 391 U.S. at 523 n. 22, 88 S.Ct. at 1777; Roberts v. Russell, 392 U.S. 293, 295, 88 S.Ct. 1921, 1922, 20 L.Ed.2d 1100 (1968). See generally Robinson v. Neil, 409 U.S. 505, 510, 93 S.Ct. 876, 879, 35 L.Ed.2d 29 (1973).

Addressing the question of retroactivity in a more general context, the Supreme Court has concluded that to be applied prospectively only, a decision must “establish a new principle of law either by overruling clear past precedent on which litigants may have relied [citations omitted] or by deciding an issue of first impression whose resolution was not clearly foreshadowed. . . . ” [Citations omitted.] Chevron Oil Co. v. Huson, 404 U.S. 97, 106, 92 S.Ct. 349, 355, 30 L.Ed.2d 296 (1971). Even by this stricter standard, the case for retroactivity is strong. Hernandez overruled no precedents — clear or otherwise — and was unmistakably foreshadowed in Brooks v. Texas, supra. See Berger v. California, 393 U.S. 314, 315, 89 S.Ct. 540, 541, 21 L.Ed.2d 508 (1969).

The third factor, the effect retroactively might have on the administration of justice, was ably analyzed by the district court. Each case of trial in prison garb is to be evaluated on its own facts, Hollins v. Beto, supra, 467 F.2d at 952, and in habeas proceedings the petitioner bears the burden of proving the error occurred. Swain v. Alabama, 380 U.S. 202, 226-227, 85 S.Ct. 824, 839-840, 13 L.Ed.2d 759 (1965); Richardson v. State of Texas, 5 Cir., 1970, 425 F.2d 1372, 1373; Scott v. Walker, 5 Cir., 1966, 358 F.2d 561, 571. The number of new trials made necessary by the new rule must also be evaluated in light of the standard by which the error of presenting a defendant in prison garb is to be reviewed, as announced in Hernandez v. Beto, supra:

Before “a federal constitutional error can be held harmless the court must be able to declare a belief that it was harmless beyond a reasonable doubt.” [quoting Chapman v. California, 386 U.S. 18, 24, 87 S.Ct. 824, 828, 17 L.Ed.2d 705 (1967)].

Such a belief is warranted if the reviewing court finds overwhelming evidence in support of the verdict. Harrington v. California, 395, U.S. 250, 254, 89 S.Ct. 1726, 1728-1729, 23 L.Ed.2d 284 (1969).

III. Whether the Error Was Harmless

The jury could have found petitioner (1) not guilty, (2) guilty of assault with intent to kill with malice aforethought, or (3) guilty of assault with intent to kill without malice. We find the evidence of malice aforethought and of intent to kill insufficient to sustain the conviction under the standard promulgated in Chapman and Harrington, supra.

The record shows that petitioner Williams went to an apartment owned by his former landlord, Eay Neatherlin, intending to visit Kay Tolley, a tenant he had known there. The occupants of a neighboring apartment told Williams that Tolley was at Neatherlin’s apartment, and he said he would wait with them for her to return. The circumstances of his arrival thus do not suggest any malice or intent to kill on petitioner’s part at that point. Indeed, he appears to have tried to avoid any confrontation with Neatherlin by not going to his apartment.

The only evidence of any hostility between Williams and Neatherlin was the unelaborated hearsay statement of Kay Tolley, testified to by Neatherlin, that Williams had come there to cause trouble.

Neatherlin accompanied Kay Tolley to her apartment after asking Bill Stacy, a friend living in the neighboring apartment, to come along. Stacy picked up a pistol and joined the other two. When the three arrived, Williams, who had been chatting with the neighbors on their front porch, approached them. He said hello to Kay Tolley, and Neatherlin demanded compensation for some bad checks allegedly tendered as payment of rent Williams allegedly owed from his prior tenancy. Williams stated he owed nothing, and Neatherlin then demanded he pay the cost of cleaning up the apartment he had occupied, which Neatherlin claimed had been filthy. Williams refused, and Neatherlin ordered him off the property at once.

At this point there was no indication that Williams was about to participate in an affray. One witness testified he looked angry, and there was some indication he approached Tolley and Neath-erlin with his hand cupped, perhaps as if holding a knife. No one saw the knife, however, until the very end of the fight. Therefore, if malice and intent to kill are to be inferred, they can be inferred only from the circumstances of the fight.

Williams faced a heavier opponent who was accompanied by an armed ally. Although Stacy testified the pistol was stuck in the back of his trousers, Williams testified at the federal habeas hearing that it was in Stacy's front pocket and clearly visible to him. The fight itself lasted about three minutes. Neither man pressed an advantage. Each time Williams was knocked down, Neath-erlin, who never left his feet during the fight, waited for him to get back up. At trial Neatherlin referred to the incident as a “little run-in.”

Several plausible theories may explain Williams’ assault on Neatherlin: fear that Neatherlin and Stacy would resort to physical force to collect Neatherlin’s debt claim; anger at being accused of passing bad checks (Williams was not the maker of the checks) and accused of being filthy, and at being ordered to leave, embarrassed before his friends. However, a malicious intent to kill is also a plausible explanation for the assault — perhaps even the most plausible one. The evidence for that explanation is not so overwhelming that we can hold harmless the error of trying Williams in prison garb.

Another source of evidence of malice and intent to kill is the extent of Neath-erlin’s injuries. The principal testimony on this question was Neatherlin’s self-serving statements and a remark by the arresting officer, who arrived on the scene a few minutes after the fight ended and testified that Neatherlin had “several lacerations.” No medical records or physicians’ reports were introduced. Neatherlin himself claimed he had received a stab wound in the chest as deep as the length of the knife blade itself (several inches), several foot-long gashes, and a stomach wound so serious that his intestines' were hanging out. Yet he admitted he did not even know he had been cut until Stacy yelled that Williams had a knife and stepped in to stop the fight.

Our view of the evidence bears comparison with the facts in Hernandez v. Beto, supra. In that case the pivotal question was whether the defendant was intoxicated. Although three policemen, three children, and an adult testified that they could smell alcohol on the defendant, that he staggered, and that his eyes were blurred and misty, the Court concluded the evidence was insufficient to render harmless the error of trying the defendant in prison garb. Cf. Thomas v. Beto, 5 Cir., 1973, 474 F.2d 981, 983, with Smith v. Estelle, 5 Cir., 1974, 498 F.2d 631. The evidence in this case is not so strong as to warrant the conclusion that the constitutional error of trying Williams in prison garb was harmless.

The cause is remanded with directions to grant the writ of habeas corpus and to discharge petitioner, unless the State elects to retry him within a reasonable time.

Reversed and remanded.

      . It is undisputed that Williams’ clothing was immediately recognizable as prison garb. Cf. United States v. Whitaker, 10 Cir., 1970, 435 F.2d 1300; Klinger v. Erickson, D.S.D., 1971, 328 F.Supp. 674.

      . Cf. United States v. Social Services Dep’t, E.D.Pa., 1967, 263 F.Supp. 971, 975 (bench trial in prison garb held nonprejudicial).

      . Three other circuits have passed on this question. The Tenth Circuit has held that trial in prison garb is not inherently prejudicial, but has overturned one conviction because of the taint created by the practice. Anderson v. Watt, 10 Cir., 1973, 475 F.2d 881. Cf. Watt v. Page, 10 Cir., 1972, 452 F.2d 1174; McFalls v. Peyton, W.D.Va., 1967, 270 F.Supp. 577. The Ninth and Third Circuits have followed Hernandez. Bentley v. Crist, 9th Cir., 1972, 469 F.2d 854; Gaito v. Brierley, 3 Cir., 1973, 485 F.2d 86. A number of state courts have also found trial in prison garb to be constitutional error. Commonwealth v. Keeler, 216 Pa. Super. 193, 264 A.2d 407 (1970); Miller v. State, 249 Ark. 3, 457 S.W.2d 848 (1970); People v. Shaw, 381 Mich. 467, 164 N.W.2d 7 (1969); People v. Zapata, 220 Cal.App.2d 903, 34 Cal.Rptr. 171 (1963); Eaddy v. People, 115 Colo. 488, 174 P.2d 717 (1946); Collins v. State, 70 Okl.Cr. 340, 106 P.2d 273 (1940); Shultz v. State, 131 Fla. 757, 179 So. 764 (1934).

      . We find no discussion in any decision on the question whether this rule should be applied retroactively. Both the Ninth and Third Circuits, however, have given the rule retroactive effect, Bentley v. Crist, supra; Gaito v. Brierley, supra, by announcing it in a habeas appeal. See Jackson v. Denno, infra; Stovall v. Denno, infra, 388 U.S. at 298, 87 S.Ct. at 1970. A district court in the Fifth Circuit has also applied the rule retroactively via habeas corpus. Dennis v. Dees, E.D.La., 1968, 278 F.Supp. 354.

      . In this case, as in Hernandez, the defendant was presented in prison clothes because lie failed to post bond. A different result may be appropriate where the defendant is on trial for an offense allegedly committed while he was in prison, because the jury would learn of his incarceration in any event.

      . Since Hernandez, the district courts have not been hesitant to deny habeas petitions based on trial in prison garb where the evidence of guilt satisfied the harmless error test. See, e. g., Bates v. Estelle, S.D.Tex., 1973, 360 F.Supp. 1278.