author: NICHOLS, Judge: KUNZIG, Judge

text:
    Ludwig BLAHA et al. v. The UNITED STATES.
    No. 241-73.
    United States Court of Claims.
    Feb. 19, 1975.
    Stanley B. Gruber, New York City, for plaintiff. Abraham E. Freedman, New York City, attorney of record.
    Marc J. Fink, with whom was Asst. Atty. Gen. Carla A. Hills, for defendant. Paul A. Zoss, Washington, D. C., of counsel.
    Before DAVIS, NICHOLS and KUN-ZIG, Judges.
   ON DEFENDANT’S MOTION AND PLAINTIFFS’ CROSS MOTION FOR SUMMARY JUDGMENT.

NICHOLS, Judge:

Plaintiff seamen are members of the National Maritime Union of America (NMU) employed as unlicensed vessel employees of the National Oceanic and Atmospheric Administration (NOA), National Ocean Survey (NOS), Department of Commerce. This suit pits the Commerce Department against the NMU and the Navy Department, on the issue of whether 5 U.S.C. § 5348 requires the Commerce Department to pay a wage increase (denominated a “monthly leave supplement”) already agreed to by the NMU, the commercial operators, and the Navy. We have jurisdiction under 28 U.S.C. § 1491. Amell v. United States, 384 U.S. 158, 86 S.Ct. 1384, 16 L.Ed.2d 445 (1966), [Amell I]. We hold that on the peculiar facts and circumstances of this case the Commerce Department is required to pay the same wage increase as approved previously by the Navy for the reasons given below.

The wage agreement that is the cause of the dispute was originally effective between the NMU and the East Coast commercial shipowners on June 16, 1972. It provided, inter alia, as follows:

a) Seamen whose base monthly wages are $515.35 or less for the contract year effective June 16, 1972, shall have added to their base monthly wages for the purpose of computing vacation pay, $15.00 per month for work performed for the period from June 16, 1972 to June 15, 1973; $30.00 per month for work performed for the period June 16, 1973 to June 15, 1974 and $45.00 per month for work performed after June 16, 1974.
b) Seamen whose base monthly wages are between $515.36 and $631.53 for the contract year effective June 16, 1972, shall have added to their base monthly wages for the purposes of computing vacation pay, $25.00 per month for work performed for the period from June 16, 1972 to June 15, 1973; $50.00 per month for work performed for the period from June 16, 1973 to June 15, 1974 and $75.00 per month for work performed after June 16, 1974.
c) Seamen whose base monthly wages are over $631.53 for the contract year effective June 16, 1972, shall have added to their base monthly wages for the purposes of computing vacation pay, $35.00 per month for work performed for the period from June 16, 1972 to June 15, 1973; $70.00 per month for work performed from June 16, 19'73 to June 15, 1974 and $105.00 per month for work performed after June 16, 1974.

As is well known, commercial vessels are kept moving and spend considerable amounts of time at sea. The necessary posts on board must be manned day and night and throughout the week. Accordingly, the “base” wage for a 40-hour week has no reality in relation to the normal earnings of the seaman, which comprise the base pay plus, for watch standers, a normal and predictible amount of overtime which from the management point of view, is unavoidable, however economically it desires to operate the ship. Vacation pay consisting of “base” pay only would put the seaman in a lower earning level during his vacation period and it is the object of the quoted agreement to diminish the impact of this, without eliminating it entirely.

The Navy’s Military Sealift Command (MSC), in October 1972, agreed to pay the same wage increase, specified in the contract above, retroactively to June 16, 1972, with respect to Government owned, civilian manned vessels operating in the NMU Atlantic area.

However, NO A refused to pay the supplement (about $31,000 annually for approximately 468 NOS seamen) in any area. The Commerce Department approved this decision in a letter of the Director of Personnel on March 12, 1974. The problem does not occur with respect to Pacific operations for a reason that will appear.

Plaintiffs subsequently brought this suit as an apparent test case under 5 U.S.C. § 5348 (Supp. II, 1972), and 28 U.S.C. § 1491, alleging a non-discretionary duty on the part of the Secretary of Commerce to pay the prevailing commercial rates or, in the alternative, an abuse of discretion in refusing to pay the prevailing commercial rates.

I

Section 5348 (formerly Section 5342, prior to Pub.L. 92-392, § 1(a), August 19, 1972, 86 Stat. 572), provides as follows: § 5348. Crews of vessels

(a) Except as provided by subsections (b) and (c) of this section, the pay of officers and members of crews of vessels excepted from chapter 51 of this title by section 5102(c)(8) of this title shall be fixed and adjusted from time to time as nearly as is consistent with the public interest in accordance with prevailing rates and practices in the maritime industry.
(b) Vessel employees of the Panama Canal Company may be paid in accordance with the wage practices of the maritime industry.
* $ $ $ *

The operative words of Section 5348:

* * * shall be fixed and adjusted from time to time as .nearly as is consistent with the public interest in accordance with prevailing rates and practices in the maritime industry, * * *

have remained unchanged since their enactment as part of the Classification Act of 1949, Pub.L. 81-429.

The legislative history under the 1949 Act is very brief on this section:

The major prevailing-rate groups excluded from the bill are those mentioned in paragraphs (7), (8), and (9) of section 202. These are the trades, crafts, and labor employees, and officers and members of crews of vessels. (U.S.Code Cong. Serv., 81st Cong., 1st Sess., 1949, at 2368).

The legislative history under the 1972 amendments is equally brief:

Crews of vessels
Section 5347 is a restatement of existing law relating to crews of vessels of the United States who are paid in accordance with practices of the maritime industry. However section 5347(b) has been amended to make vessel employees of Panama Canal Company subject to wage practices of the maritime industry and not merely authorize such pay, as is the case under existing law. (U.S.Code Cong. & Admin.News, 92d Cong., 2d Sess., 1972, at 2985).

However, the Navy provides considerable additional background into the statute and its operation. See, Appendix One to this opinion. Counsel for defendant has annexed this Navy statement to his brief, following a policy which we believe is of long standing and commendable, to allow a Department to advise the court of its position when that is contrary to the one the Attorney General has decided to take. Another time, it might be better for the agency statement to be signed and dated. The one we have here affords ample internal evidence of its authority and authenticity, and we rely on it heavily for its history of operation under the statute to be construed.

II

This is not the first time that this statute has been before the court. In Benevento v. United States, 461 F.2d 1316, 198 Ct.Cl. 772, cert. denied, 409 U.S. 1038, 93 S.Ct. 516, 34 L.Ed.2d 486 (1972); Beatteay v. United States, 198 Ct.Cl. 989 (1972); Benham v. United States, 198 Ct.Cl. 990 (1972); Daniels v. United States, 407 F.2d 1345, 187 Ct.Cl. 38 (1969); and Amell v. United States, 390 F.2d 880, 182 Ct.Cl. 604, cert. denied, 393 U.S. 852, 89 S.Ct. 88, 21 L.Ed.2d 122 (1968), [Amell II], the broad Government discretion in fixing pay under Section 5348 was repeatedly upheld against seamen’s challenges. These cases, except the last, involved the selection of the segment of the maritime industry to be treated as the model for comparison.

Counsel for defendant suggested in oral argument a difference between Commerce Department and Navy vessels in that the former spent more time in port, relatively, when night and day, week in and week out, watch standing was not required. This, if true, might make a difference, but must be disregarded here for lack of documentary substantiation, and because it is not shown to have caused or been relevant to the difference in the position of the two agencies, as stated by their own representatives.

The Navy in Appendix One asserts that seamen on both coasts work normal 56-hour weeks if they are “watch standers” as opposed to “day workers.” However, despite similar working conditions, different terminologies and contracts have been used by the West Coast and East Coast unions. On the West Coast, pay rates are negotiated on the basis of a 56-hour week, and leave is paid accordingly. The East Coast, for unexplained reasons, adheres to the conception used for shoreside jobs, describing the 56-hour normal work week for seamen in terms of 40-hours “straight time” and 16-hours “overtime”. The effect of this variation in terminology was that until the 1972 contract, East Coast seamen received less vacation pay than West Coast seamen, for similar jobs with otherwise similar take-home pay. The former having their vacation pay computed on the basis of 40-hours weekly pay; the latter on the basis of a 56-hours weekly pay, that absorbed the overtime premium and distributed it over all the hours worked. The wage supplement granted the seamen on the East Coast by the contract helps realign their pay to be more nearly compatible with what West Coast seamen are paid for vacation pay. Both Government and commercial seamen take paid vacations of substantial length.

The Commerce Department does not tender any substantial issue as to relevant fact. It does not dispute the detailed submission by the Navy and by the NMU. It makes a semantic argument as to the statutes, which we have some difficulty in following, but will do our best to state. It seems to say that as used in Federal personnel law, “pay” means “base pay,” whereas a broader term is required when Congress alludes to overtime, night and holiday differentials, etc. See 5 U.S.C. § 6301 and ff. (leave); 5 U.S.C. § 5544 (Wage Board overtime). The statutory leave for seamen “on extended voyages” is two days for each thirty days “of that service”, 5 U.S.C. § 6305, plus regular leave accrual under § 6303. The inference seems to be that since the number of days on leave are fixed by statute, not by collective bargaining, the compensation per day must be statutory also, and the statute in default of express provisions, by implication selects the base pay as the statutory vacation rate.

NMU points to specific practice where NO A has paid for overtime hours less than § 5544 would require, although that section tells exactly how overtime pay shall be calculated in relation to base pay. By its own terms it does not apply to § 5348 employees. See below. On the other hand, NO A pays for non-overtime Sunday work, a bargained rate, better than § 5544 and § 5546 would require, 50% instead of 25% over base pay. It would appear, therefore, that Commerce has regarded “pay” under § 5348 as more than “base pay”, and we are given no clear consistent statement as to just what the “pay” under § 5348 does and does not include. We suggest the Commerce view that vacation pay is base pay only, really arises because that is what they are used to in the shoreside environment, and the semantics are but later rationalizations.

We think Congress meant to authorize Government agencies owning and operating ships, with civilian crews, to adopt private industry pay practices in their totality, as to differentials, overtime, premiums, or any other general pay practice that entered into and became a part of the seaman’s take-home pay, subject of course to the “public interest” exception to be discussed presently. A partial and selective adoption of some but not all of such practices simply does not make sense with reference to any objective the Congress could conceivably have been seeking to achieve. Adoption of the base pay alone, or the base pay plus regular overtime, would be worthless, because these terms have meaning, and are counters used in bargaining, in the relationship they bear to all the factors in the equation. Bargainers may accept a detriment in one part of the pay package in exchange for a benefit in another, i. e., they may take better premium pay for poorer base pay, or the reverse, as apparently happened in the Pacific. Interpretation of the statute to hold the seamen are bound by the concessions they made but don’t get the bonuses they bargained for, is not likely to obtain industrial peace on the sea lanes, or further any other purpose.

Commerce’s position is a classic instance of saying to Congress: “We see what you mean but you haven’t used the correct words to bring it about.” As we said in Anderson v. United States, 490 F.2d 921, 925, 203 Ct.Cl. 412, 420, cert. denied, 419 U.S. 827, 95 S.Ct. 47, 42 L.Ed.2d 52 (1974):

* * * In statutory construction, unless the language is compelling, as it signally here is not, it is well to avoid interpretations no one can believe the Congress could have intended.

Amell [II], supra, is not to the contrary. Union members had voted to put all of a bargained pay increase into their pension fund. The nearest Government equivalent, its retirement system, was outside the reach of § 5348, and we held the Government ship operating agencies were not required to pay the increase directly to the seamen. We considered that fringe benefits outside of take-home pay were not “compensation.” In this instance the construction of a perfect equivalent to industry practice is of course frustrated, but that does not warrant further and more extensive frustration imposed by semantic limitations upon the ordinary meaning of a simple word like “pay.”

We note also that § 5348 requires the pay involved to accord with “prevailing rates and practices in the maritime industry.” The Commerce view does not account for the word “practices” and allows it to add nothing to “rates.”

Further the Benevento, Beatteay and Benham cases, supra, which affirmed the Interior Department in using a pay scale that obtained in the fishing industry with no premium pay for overtime whatever, undercut the Commerce Department’s attempt to limit the application of § 5348 to base pay. By these cases § 5348 is also the source of any overtime rights the seamen have.

Ill

The Commerce Department’s main position, that it would be illegal for it to pay the vacation pay supplement here involved, would, if right, require the conclusion that the Navy is illegally paying the same supplement, absent any showing of relevant differences. Government counsel conceded this. To us, however, the Navy position appears to be a good faith effort to effectuate the policy of the statute, based on an informed and reasoned analysis of the underlying facts. If not the only possible position, it is at any rate well within the scope of discretion which, as our decisions recognize, the statute contemplates the employing agencies will exercise, not only as to the exclusion of practices it is not “consistent with the public interest” to conform to, but as to other questions as well. E. g., Daniels v. United States, supra. Commerce’s main position must be rejected.

IV

The Commerce Department retreat position is that it has determined the- payment is inconsistent with the public interest “on several counts.” It asserts, in effect, it has discretion and chooses to exercise it in a direction opposite to that of the Navy. This is perhaps only a little less cavalier towards a sister agency with longer experience with the kind of claim we have here, and greater involvement with it. Commerce says that use of two levels of “base pay” fouls up the computation of Government fringe benefits and various forms of employee contributions, i. e., deductions. Moreover, Commerce anticipates its acquiescence in paying the supplement would set a bad precedent for acquiescence in future agreements that may have an impact on Federal employee benefits, although industry practices may not be consonant. Moreover, it is asserted that commercial crewmen are required to use their leave, whereas for Government employees it is for the most part optional.

With regard to the last argument, we suppose if a Commerce Department seaman refuses to take leave, though his services are for the time not needed, he is at any rate hardly likely to be ordered to work overtime. He will, therefore, lose take-home pay and need the supplement just as much as his commercial counterpart.

The Congress in enacting § 5348 recognized the unique character of the pay practices in the maritime industry. It saw that the pay practices existing shoreside with respect to Government employees would be a Procrustes bed if applied to Government vessels and to civilians employed as seamen thereon, union members doing the same work as their commercial counterparts. Its solution was to authorize pay practices to conform “as nearly as is consistent with the public interest”, not to Government shoreside practice, but to private industry practice afloat:

* * * While it is common to defer to agency expertise in many matters, the agency charged with administering a statute may not adopt a position inconsistent with the enabling statute. * * * [Citing cases.] Farrell Lines, Inc. v. United States, 499 F.2d 587, 602, 204 Ct.Cl. 482, 506 (1974).

Commerce manages to create present conflicts between its pay practices and others in three directions: (a) between Commerce and Navy civilian seamen, (b) between Commerce and commercial seamen, and (e) apparently, though the point is not developed in the record, between Commerce’s own seamen on the East and West Coasts respectively. (We have shown that the involved supplement is needed to equalize Atlantic and Pacific vacation pay.)

We think the “public interest” exception was written to provide flexibility needed to eliminate anomalies and inequities that might arise from a too literal conformity to industry pay practices. It was not written to authorize a complete frustration of the Congressional scheme. Since Commerce relies so heavily on the imaginary horrible, let us too suggest one: if Commerce can do what it has done with the relatively minor vacation supplement, it can refuse to apply § 5348 in any part, declaring the entire wage scheme resulting from collective bargaining not to be “consistent with the public interest.”

This case has much in common with American Export Isbrandtsen Lines, Inc. v. United States, 499 F.2d 552, 583, 204 Ct.Cl. 424, 476 (1974), in which we held that the Maritime Administration, Department of Commerce, abused its discretion in refusing to include in allowable labor costs for subsidy purposes, certain so-called “severance pay” that was called for by a collective bargaining agreement similar to the one at bar. We quoted from the First Circuit as follows:

The process of collective bargaining involves a give-and-take, with one party making a concession on one subject in return for obtaining a concession on another subject. It is difficult, if not impossible, for the parties to make a meaningful judgment as to the kind of bargain they are negotiating if one or more of the key provisions on which agreement turns is subject to invalidation by the Commission. * * *

In view of this factor, we viewed the disallowance as an abuse of discretion in the absence of valid reasons that could be urged in its support.

Conflict with determinations of other agencies is a factor to be considered in review of agency determinations. Farrell Lines, Inc., supra.

NO A issued a wage schedule on November 1, 1972, with retroactive effect to June' 16, 1972. This was apparently its initial reaction to the new collective bargaining agreement of that date. On November 1, the Navy had already agreed to the vacation pay supplement. Counsel for defendant urges here that the first agency to act, perhaps precipitately, ought not to be able to bind the whole Government. We may agree with this, and yet hold the more dilatory agency may be required, to avoid abuse of discretion, to resolve the difference by discussion, or else obtain the decision of a common superior. If it just arbitrarily chooses to go a different way, the onus of abuse of discretion falls on it.

We should not be read as holding that there would have been no abuse of discretion if the Navy had taken the line that NO A subsequently did. Nor do we hold the contrary. The case is not before us and we express no opinion.

Commerce alleged nothing in its decision in support of its position on “public interest” that was not equally applicable to the Navy, nothing of any differences in the way their ships operate, or the amount of time they spend in port, for instance. Instead, e. g., they say they will, if they yield, have a terrible time computing payroll deductions and contributions, life insurance benefits and contributions, retirement benefits, and lump sum payments for accumulated annual leave, in face of two levels of basic pay. The Navy, with the valor of ignorance, apparently, steamed into these mine-strewn waters two and a half years ago, and by now should have been blown-up, if the mines were really there. No instance of this occurring is reported. In stating its position, March 12, 1974, Commerce made no reference to any effort by it to ascertain the Navy experience and see whether it supports the existence of these asserted perils.

Whether there are really two levels of basic pay and other questions if any, that are pertinent, are problems we are compelled to suppose and do suppose the Navy has solved. Should there be some it has not, there remain the Comptroller General, the Civil Service Commission, and this court. In the circumstances we think the reasons assigned for asserting the “public interest” exception are mere rhetoric. We are not required to conjure up reasons to support an exercise of discretion when the agency has supplied none. We hold that Commerce has abused its discretion in making the determination here involved.

Accordingly, the defendant’s motion for summary judgment is denied. The plaintiffs’ cross motion for summary judgment is granted. Judgment is entered for the plaintiffs and the cause is remanded to the Trial Division for further proceedings under Rule 131(c) to determine the amount, if any, to be awarded to each of the 41 plaintiffs, consistent with this opinion.

KUNZIG, Judge

(concurring):

Based on the facts of this case, I am compelled to concur. While it is possible that a factual distinction could be shown to justify different policy considerations for the Department of Commerce and the Navy, no such distinction has been asserted by the Secretary of Commerce here. Moreover, the mere raising of the possibility of such a factual distinction by Government counsel in the first instance at oral argument is too belated to require a trial at this time.

However, in an appropriate case on another day, this same result might not be mandated. If, as the Government has now asserted, these seamen employed by the National Oceanic and Atmospheric Administration (NOA), were at sea only 3 months of the year and did not, in fact, work overtime in a normal working week, then there would be no reason why this special wage supplement should be included in computing their vacation pay. Under such circumstances, were this supplement to be added, the vacation pay would then be higher than the normal weekly base pay received by NOA seamen instead of equal thereto.

On the facts timely presented for the purpose of deciding these cross-motions for summary judgment, no basis has been shown which would justify different policy considerations for the Department of Commerce and the Navy. Therefore, I concur in the opinion of the court.

APPENDIX ONE

NAVY STATEMENT

The Military Sea Transportation Service (now the Military Sealift Command) was established in 1949 as the single service manager for ocean transportation of the Department of Defense. M.S.C. provides logistic support to battle fleet elements and a system of seagoing transportation for personnel and cargo for all elements of the DOD. It also operates ships in support of scientific research projects and other programs of DOD components and other government agencies.

Almost coincidental with the formation of MSC (then MSTS) the Classification Act of 1949 (63 Stat. 955, October 28, 1949) was passed. Chapter 782, Section 202(8) provided in pertinent part:

This chapter * * * shall not apply to—
* * * !f¡ * *
(8) officers and members of crews of vessels, whose compensation shall be fixed and adjusted from time to time as nearly as consistent with the public interest in accordance with prevailing rates and practices in the maritime industry;

This provision was the successor to the provision contained in the 1945 Federal Employees Pay Act which stated, in pertinent part:

Employees of the Transportation Corps of the Army of the United States on vessels operated by the United States, * * * may be compensated in accordance with the wage practices of the maritime industry.

In 1966 the provisions were restated in 5 U.S.C. § 5342, and in 1972 in 5 U.S.C. § 5348. Thus, for all of its existence MSC has been mandated by Congress to compensate its seagoing employees * * as nearly as consistent with the public interest in accordance with prevailing rates and practices in the maritime industry.

From the very beginning of its existence MSC had difficulty in determining the “prevailing rates and practices” of the maritime industry for the simple reason that there was, and still is, no single uniform rate or practice in the industry. In 1949 MSC ships sailed in every ocean and sea in the world. MSC ship operating commands were located in New York, Honolulu, New Orleans, San Francisco and Seattle as well as in foreign countries such as Japan and Panama.

Rates of pay and practices in the U.S. geographical areas were established by negotiation between ship owners and the labor organizations dominent in that area. After much study and review it was determined that MSC compliance with the congressional mandate could best be accomplished by establishing two basic sets of rates and practices, one for the Pacific Ocean area and one for the Atlantic Ocean area. Inasmuch as at the time there were at least five and as many as seven unions negotiating with ship owners on the several coasts, this required establishing 10-14 wage schedules. Within each schedule there were variations due to the size and power of the ship. Later, when MSC began operating tankers, additional classifications of pay were required. Now, in 1974, the situation has become somewhat less complex. Most of the large international officer unions have eliminated geographical differences so that, for example, Engineer Officers and Deck Officers have, geographically, uniform rates of pay. On the other hand, since the dominant union of unlicensed seamen on the West Coast is different from the East Coast union, MSC still maintains separate Pacific and Atlantic schedule of wages for unlicensed personnel. That this program generates much more administrative problems is evident; the decision to maintain the different schedules is based on SECNAV’s policy to adhere as closely as possible to the Congressional mandate.

Apart from any consideration of MSC however, the differences in pay and practice between the East Coast and West Coast unions, although many and complex, in total result in approximately the same return for his labor to the seaman on each coast. That this is so is, of course, a fact of union life; no union leader can persevere for very long, if his membership can find greener pastures elsewhere.

The mechanics of complying with the statute are deceptively simple; i. e., every time there is a change in compensation or practice in the maritime industry, MSC reviews it, determines if it is in the public interest, and if so, recommends to the Secretary of the Navy that it be adopted. Unfortunately the process is more complicated. Changes in prevailing rates and practices require constant careful monitoring to assure timely reaction to changes in the industry. Not every change, however, is within the scope of the act. For example, a recent change in the agreement between the Marine Engineers Beneficial Association, representing the licensed engineers, and the ship owners, provided for extra compensation to engineers on tankers during the period that cargo (oil) was being transferred to another ship at sea. In the past few years MSC has been engaged in underway fuel replenishment of combat ships. In this program MSC civilian marine employees have replaced military personnel on what were commissioned ships, and perform all the refueling duties heretofore performed by the military. Simultaneously, a test program was conducted with one or two commercial tankers, wherein these ships on opportune occasions would also refuel a combat ship. Since the Navy ships engaged in this program were more numerous, and were engaged in the refueling operation, day in and day out, in ships especially configured for underway fuel replenishment, it was felt that there was no practice prevailing in industry; rather, what prevailing practice there was was within [the] Navy. Similarly, because of the unique nature of many MSC operations, there is no counterpart operation in the private sector of the maritime industry. In such cases MSC has had to recommend to the Secretary of the Navy and to the Department of Defense Wage Fixing Authority rates, and sometimes practices, interpolated from industry rates and practices.

In the matter under scrutiny, MSC in 1968 determined that a pay practice which had been negotiated in the private sector by the engineer and deck officers was within the scope of 5 U.S.C. § 5348 (then § 5342) and recommended its adoption to the Secretary of the Navy. It was approved by the Department of Defense on 8 November 1968 retroactively to 16 June 1968. To understand the ramifications of this change, some preliminary information is necessary.

a. Duty hours of deck or engineer officers in a ship at sea are eight in a spread of 24; usually worked 4 hours on duty, then 8 hours off. For example, an engineer on watch will work from midnight until 0400 (4 a. m.) and then be relieved. He returns to duty at 1200 (noon) and works until 1600 (4 p. m.). This pattern is repeated for all watch-standing officers and non-officers seven days a week, because obviously a ship at sea does not come to rest on weekends. Regardless of the time of the watch worked the weekday watches are on “regular” or “straight” time. That is, the first 40 hours which are served Monday through Friday are at the level of pay authorized for the position. The 16 hours worked on weekdays [weekends] are overtime hours and are so compensated. Thus, every watchstanding officer is, for all intent and purposes, guaranteed 16 hours of overtime a week while at sea. There are, however, some deck and engineers [engineer] officers who do not stand watches, and who therefore do not receive this weekend salary. These are usually the senior officers; the Master, First Officer, Chief Engineer and First Assistant Engineer. So that there would be a financial incentive to aspire to and to remain in these positions, the unions and the maritime industry, through negotiation over the years have compensated the incumbents of these non-watchstanding positions by including in their base pay a sum known in the industry as “non-watchstanding compensation”. The choice of this name is, perhaps, unfortunate. It does not represent payment for work not performed; it is an industry pay practice established in recognition of a need to insure that supervisors are paid at least as much as their subordinates, and in recognition, insofar as the Master and Chief Engineer are concerned, of the fact that they are on duty 24 hours a day. Another point which must be remembered is that the non-watchstanding compensation received by the officers described above does not represent their overtime rate multiplied by 16 hours a week. For example, the overtime rate of a Chief Engineer, Class A3, is $20.07 per hour. If he were to [be] paid this rate for 69V3 hours a month, his nonwatchstanding compensation would be $1,391.50. Instead it is less than half this figure, $649.19.

Prior to the 1968 changes in the industry practice, the differences in wages paid aboard ship and the wages paid during vacation periods were either negligible for those who received non-watch-standing compensation or exceedingly large for those who were accustomed to receive 16 hours of overtime a week. The first group, whose rate of pay for the position included the non-watch-standing compensation gave up only that additional premium pay that was forthcoming because of some unusual work performed; the other group were paid leave only at their regular Monday to Friday rate. This represented, over a month, a loss of approximately 40% of their regular earnings on ship. In the 1968 negotiations, therefore, the unions sought to equalize, to some extent, the “take home” pay of this group. It can also be assumed that the unions desired to make the vacation periods more desirable, as a mechanism to induce shipboard officers to go on leave and thus make work for their unemployed brethren. In any event, effective 16 June 1968, those officers who were accustomed to working weekend watches aboard ship were granted 2 benefits, among others. The first was an additional 15 days a year vacation; the second was an increase in their vacation rate of pay. This increase, although called non-watchstanding compensation, is not equivalent to their normal overtime earnings; again, it represents less than 50% of that amount.

In the case of the unlicensed personnel on the East Coast a somewhat similar set of facts obtained before June 1972. The unlicensed deck or engine seamen in a commercial ship are either watchstanders or day workers. The watchstanders are guaranteed 16 hours [a] week overtime; the day workers are not. Traditionally, therefore a day worker’s rate of pay is higher than that of watchstander. For example, the monthly rate of pay in 1972 of a Watchstanding Able Seaman was $544.88; the rate of pay of a day-working Able Seaman (Maintenance) (a rating which has the identical requirements and whose incumbents are interchangeable with ABs) was $619.77. In the real world of a ship at sea, however, practically every unlicensed crew member works some overtime, whether he is a day worker or not. Obviously, cooks and stewards must perform their duties every day of the week; the ship’s maintenance is rarely, if ever, up-to-date, etc. Thus, review of a ship’s payroll will show a considerable amount of earnings over and above the established rate for every officer and crew member. As in the case of the watch officers before 1968, these additional overtime wages were lost when the employee went on vacation.

So that this overview can be seen in the right perspective it is necessary to depart briefly from the narrative to discuss two pertinent aspects of the marine wage system. First, every maritime union in the American maritime picture has consistently and successfully sought to expand vacation benefits for its membership. At this time, for example a merchant seaman sailing in a commercial ship for 6 consecutive months will earn paid time off, depending upon his rating, as little as 8 weeks and 4 days, up to 19 weeks and 2 days! (Parenthetically, MSC crew members who earn leave based on years of service will accumulate annual, sick, and shore leave for the same period of between 5 weeks and 6 weeks IV2 days!). The pressure on the unions to seek additional vacation benefits stems from a desire to spread work among unemployed seamen and to make seagoing a more acceptable occupation. The old days of long in-port visits to glamorous cities in faraway places is fast disappearing. Ships earn profits only at sea. The tendency for modern ships is unload/load in the shortest time possible and then get back to sea. Some large tankers never actually dock in a port. They are loaded and unloaded by fuel lines stretching into an anchorage area. As a result, crewmembers are lucky to get a few hours if any, ashore during a long voyage.

The other aspect of the pay picture is the compensation practice on the West Coast. In that area, unions of unlicensed seamen and management have negotiated a wage rate based on a 56 hour week. This rate recognizes that shipboard employees usually work every day at sea; the important aspect of this pay rate, for the purpose of this discussion is that it is paid for all vacation time.

To return to the narrative, then, we see in the unlicensed crewmember situation, before 1972, on the East Coast, a picture of longer (and it must be said, mandatory) vacations at a • rate of pay far below the individual’s customary earnings. His counterpart on the West Coast, on the other hand enjoys a fairly constant rate of take home pay. Small wonder that in 1972, the dominant East Coast union negotiated what is called in their agreement with East Coast ship owners a “monthly base wage for vacation only”. This vacation base rate is calculated by adding an agreed upon sum, which in 1973 varied between $30 and $70 and in 1974 between $45 and $105, to the regular shipboard rate. In the case of the unlicensed unions as well as in the case of the officer unions, the negotiations with ship operators typically treat the matter of days of vacation apart and separately from rates of pay for vacation.

In 1968 MSC was given approval by SECNAV/DOD to increase the rate of leave pay of licensed deck and engineer officers by an amount reached by applying the industry non-watchstanding formula. In 1972, MSC was given approval to match the monthly base wage for vacations only, agreed upon between the shipping interests and the dominant East Coast unlicensed union. The approval related only to MSC ships operated by COMSCLANT.

******

[Legal argument omitted.]


source: Caselaw Access Project

author: RICH, Judge.

license: Public Domain

text:
    Application of Andre VARGA.
    Patent Appeal No. 74-517.
    United States Court of Customs and Patent Appeals.
    March 13, 1975.
    Stuart A. White, New York City, atty. of record, for appellant. Elliott I. Pollock, Washington, D. C., of counsel.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D. C., of counsel.

      Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   RICH, Judge.

This appeal is from the decision of the Board of Appeals of the Patent and Trademark Office (PTO) affirming the examiner’s rejection of claims 2, 3, 4, and 7 of application serial No. 871,494, filed Nov. 14, 1969, to reissue Patent No. 3,003,195 for “METHOD AND APPARATUS FOR THE TREATMENT OF COTTON FIBRES,” issued Oct. 10, 1961, to Andre Varga, assignor to Carding Specialists (Canada) Limited. We affirm in part .and reverse in part.

The Invention

Claims 2-4 define apparatus for treating cotton fibers preparatory to spinning. Claim 7 defines a method of treatment comprising certain sequential steps and includes spinning as the last step. Claim 3 will give a general idea of the invention when read in conjunction with Fig. 1 of the drawings, certain reference numerals from which we have inserted in the claim:

3. A cotton carding machine having a doffer [10], a pair of calender rollers [16, 18], a pair of smoothly ground ironing rollers [24, 26] between said doffer and said calender rollers adapted to receive a carded web [28] in substantially full width from the doffer, load means [33] pressing said ironing rollers together with sufficient force to crush small impurities in said web, drive means [30, 32, 34, 36] rotating said ironing rollers at a speed sufficient to take up slack in the web [28] between the doffer and said ironing rollers, and drive means [38, 42, 44] rotating said calender rollers [16, 18] at a sufficiently greater surface speed than said ironing rollers [24, 26] to cause relative longitudinal fiber movement in said web between said crushing and calender rollers.

A doffer is that part of a cotton carding machine which delivers the web to subsequent apparatus such as the calender rollers 16, 18, all of which is old in the art. Appellant’s invention has to do with the addition of the ironing rollers 24, 26 between the doffer and the calender rollers and the speeds at which these two sets of rollers are run relative to each other and to the doffer.

Appellant has stated two reasons for using the ironing rollers. According to his specification, the first is to smooth the cotton fibers; the second is to crush small “impurities” such as particles of cotton seeds and leaves to aid in their removal. It gives two reasons for the drafting (claimed as “relative longitudinal fiber movement”) caused by running the calender rolls at a higher speed than the ironing rollers. First, it assures getting the web away from the ironing rollers to which it tends to adhere because of stickiness or static; second, it tends to set free the crushed impurities so they will fall out of the web.

References and Rejections

The following references are reiied on to support various rejections of all appealed claims for obviousness under 35 U.S.C. § 103:

H arme I 318,730 May 26, 1885
Chantler 2,326,331 Aug. 10, 1943
Barron (British Patent) 616,815 Jan. 27, 1949
Marshall, G., “The 'Peralta' Machine in Woollen Carding," The Textile Manufacturer, November, 1948, pages 520-523.

The rejections under § 103 are as follows:

(1) Claims 2 and 3 on Barron in view of Chantler.
(2) Claim 4 on Barron in view of Chantler further in view of Harmel.
(3) Claim 7 on Barron in view of Marshall.

There is a further rejection of claims 2 and 3 only, referred to herein as the Blonder-Tongue rejection. It is predicated on the decision of the Supreme Court in Blonder-Tongue Laboratories, Inc. v. University of Illinois Foundation, 402 U.S. 313, 91 S.Ct. 1434, 28 L.Ed.2d 788 (1971), and a holding of invalidity of claims 2 and 3 in Carding Specialists (Canada) Ltd. v. Lummus Cotton Gin Co., 234 F.Supp. 444 (M.D.Ga.1964). The judgment in the latter case was not appealed. Claims 2 and 3 of this reissue application are claims of the original patent on which suit was brought against Lummus.

This Blonder-Tongue rejection was made, substantially at the request of the Board on an apparently sua sponte remand to the examiner, after appellant had filed a brief in reply to the Examiner’s Answer. Agreeable to the board’s request, in a second Examiner’s Answer, a new ground of rejection of claims 2 and 3 was made on the ground of estoppel by virtue of the invalidity holding in Lummus under the law of the Blonder-Tongue case.

Appellant reportedly responded by saying the PTO cannot make a Blonder-Tongue rejection. In a third Examiner’s Answer this was traversed, the examiner conceding that appellant must be given an opportunity to demonstrate, if he can, “ ‘ * * * that he did not have a fair opportunity procedurally, substantively and evidentially to pursue his claim the first time.’ Blonder-Tongue, supra at [169 USPQ] 521.” The examiner said that in the two months allowed to respond to the new ground of rejection appellant had made no effort to make any such showing.

The board then took up the merits of the case and sustained all of the above-noted rejections.

One further important item of background information shows why the present reissue application was filed and on what basis it has been prosecuted. The case of Abington Textile Machinery Works v. Carding Specialists (Canada) Ltd., 249 F.Supp. 823 (D.D.C., 1965), was an action for declaratory judgment of patent invalidity and noninfringement against the assignee of the patent here sought to be reissued, in which suit the defendant (the real party in interest on this appeal) counterclaimed for infringement of the patent. It was decided subsequent to the decision in the Lummus case, supra, by the late Judge Jackson, senior judge of this court, sitting by designation as a District Court judge. Judge Jackson, contrary to the judge in the earlier Lummus case in Georgia and after a full two-week trial, held claims 2-4 (which are the same as claims 2-4 here on appeal) to be valid but held claim 1 of the patent., the sole process claim, “unpatentable over Chantler in view of Marshall.” (These are the same references as listed above.) Appellant’s brief says, “the present application for reissue was filed for the purpose of securing a narrower method claim commensurate with applicant’s true invention as defined by Judge Jackson in the Abington case.” That claim is claim 7, which reads:

7. In the production of cotton yarns of improved quality and cleanliness by the cotton system, the method of treating the cotton fibres which comprises, in sequence:
(a) carding the fibres and forming them into a thin carded web;
(b) passing said web through crushing rollers adapted to crush small impurities in the web;
(c) subjecting said web on leaving said crushing rollers to a longitudinal drafting action sufficient to cause relative longitudinal fibre movement therein;
(d) condensing said web into a sliver; and
(e) processing the fibres of said sliver into yarn by steps comprising drafting and spinning.

We thus have before us method claim 7 which has never been litigated and three machine claims which have been twice litigated and held both valid and invalid. While the record and briefs contain copious references to and quotations from the prior lawsuits and the testimony and opinions therein, particularly from the Abington case, the records in those suits are not before us. Nor has any of the evidence in those suits been introduced as evidence by appellant into the record of this reissue application. Our task is merely to pass upon the examiner’s rejections which were affirmed by the board, and our decision must be based “on the evidence produced before the Patent Office.” 35 U.S.C. § 144. That evidence consists only of the references cited and relied on, and the judgments entered in the Lummus and Abington cases, not of the testimony from those trials gratuitously included in the printed record and briefs by appellant and the PTO. We will say, however, that our understanding of the references and of the claimed invention has unquestionably been improved by reading the unusually voluminous observations of others thereon presented in the record and briefs by way of argument.

OPINION

Obviousness of Claims 2-4

Appellant has conceded that if claim 3 is unpatentable, claim 4 could not be sustained, and he has treated claim 3 as exemplary. Claim 2 is somewhat broader than claim 3, set forth above, in not calling for “smoothly ground” ironing rollers or “load means.” Instead, it calls for “crushing rollers.” The rejection of both claims 2 and 3 is for obviousness in view of the Barron and Chantler patents.

Barron is relied on for its disclosure of cotton carding machines having the usual doffers and calender rollers, as called for in claims 2 and 3. Barron’s concern, however, was with his own method of processing wool on a variety of cotton machines. No crushing or ironing rollers of any kind are suggested.

Chantler is relied on for its disclosure of crushing rollers operating on a fleece delivered from a carding machine and taken by the calender rollers from the crushing rollers, although Chantler’s concern was with another aspect of the apparatus which assists in gathering the fleece into a sliver. Chantler did not invent the crushing rollers. The patent states:

As is known in the textile trade, crushing machines for crushing burrs, etc., employ heavy or heavily weighted rollers to act upon a passing fleece and it is known to interpose such a crushing machine between two woolen or two waste carding machines according to the class of material dealt with. We agree with appellant that although

Barron shows conventional cotton carding machines it shows no ironing or crushing rolls at all, but the examiner’s position was that there would be nothing unobvious in adding the well-known crushing rolls disclosed by Chantler to a cotton carding machine, such as shown-by Barron. It was further his position that Chantler discloses positioning crushing rolls just in advance of the calender rolls to receive a carded web and that adjusting the speeds to meet the terms of the claims would be “well within the realm of one skilled in the art.” The examiner quoted from Judge Jackson’s opinion in Abington with respect to speeds:

The Court discovers ample evidence in the record to find that determination of the optimum relative surface speeds of the doffer, crush rolls, and calender rolls would be well within the ordinary skill of a typical cotton mill card operator, who would vary the surface speeds according to prevailing conditions.

The board found the examiner’s rejection of claims 2 and 3 for obviousness in view of Barron and Chantler to be proper and so do we. The same is true of claim 4, as to which Harmel was additionally applied, but we need not discuss it in view of appellant’s concession.

We have carefully considered appellant’s arguments against the rejection of claims 2-4 under § 103 but find them unpersuasive. First, there is considerable argument based on Chantler’s disclosure of PERALTA crush rolls which, it is said, could not be used in a cotton carding machine such as shown in Barron; but Chantler nowhere refers to PERALTA rolls, which are of a special kind. As the Harmel reference shows, crushing rolls of various kinds have been known since 1885, PERALTA rolls only since 1937, according to appellant. Second, appellant argued from “Barron’s own failure to adapt the prior crushing principle described by Chantler * We think no logical deduction about what would be obvious can be drawn from what Barron did not disclose, especially in view of appellant’s characterization of Barron’s disclosure as “highly atypical and bizarre,” and as a “uniquely unusual and bizarre utilization of a cotton card.”

In determining obviousness of the subject matter of claims 2-4, we note that these claims are directed to “A cotton carding machine.” The location of the crushing or ironing rollers in that machine is specified as between the doffer and the calender rollers and the relative speeds of doffer, crusher, and calender are defined. But there is no limitation in these claims tying them to appellant’s system in which the alleged “many valuable advantages” are to be found, wherein, in the words of appellant’s own specification (emphasis ours),

After carding is finished the fibres are stripped from the card in the form of a thin carded web, which is then condensed into a round fibrous mass called a sliver. Without further carding the sliver of cotton fibres is thereafter drafted and spun.

In other words, the ironing or smoothing with its incidental crushing is at the end of the carding process. As indicated below in our discussion of claim 7, this was an unobvious contribution but claims 2-4 are broad enough to read on a carding' machine including the ironing or crushing rolls followed by a second. carding machine. Chantler shows this structure. The machine claims are therefore directed to obvious subject matter. We note the comment in appellant’s brief that “It is too bad that the Board gave such short shrift to claim 7 [the method claim], because in petitioner’s view his invention is much more a process than a machine.” (Emphasis ours.) We agree. We turn now to claim 7.

Unobviousness of Method Claim 7

With the benefit of hindsight derived from two lawsuits, appellant has drafted a new method claim, to replace the original method claim held invalid in both actions, which conforms to the description of his invention and which we do not find suggested by the prior art references. That invention, as the preamble of claim 7 points out, is a method of producing cotton yarns of improved quality and cleanliness by the “cotton system.” The description of the known cotton system is thus stated in the opening paragraph of the specification:

In the production of cotton yarns by the cotton system cotton fibres are carded by means of a cotton carding machine, which may be either a single cylinder cotton card or equivalently a tandem .cotton card. After carding is finished the fibres are stripped from the card in the form of a thin carded web, which is then condensed into a round fibrous mass called a sliver. Without further carding the sliver of cotton fibres is thereafter drafted and spun.

So much for what was known. Appellant then describes his inventive contribution:

I have found that this process will be facilitated and the product improved if the surface of the cotton fibres is smoothed. If this is done, then the fibres will slide over one another more readily and fewer neps will be formed during drafting and spinning.
# 4s * * * sft
According to this invention, the very thin carded web of cotton fibres is ironed to cause all or a substantial proportion of the individual fibres to be smoothed by passing it through ironing rollers and the web leaving the ironing rollers is subjected to a drafting action.

From the whole record it appears that carrying out this smoothing process by means of ironing rollers carries with it a bonus, as described in the next paragraph, which contributes greatly to the practical advantage and value of the process:

In addition to the smoothing of the fibres, the effect of the ironing process, if the pressure is adequate, is to crush small impurities such as particles of cotton seeds and leaves present in the web, and this assists in the subsequent removal of the impurities.
•k 4" * * * *
The ironing and drafting can most conveniently be effected on the web of cotton fibres as it leaves the doffer of a carding machine, and before it is condensed in width to form a sliver for transfer to a subsequent operation, e. g. spinning.

The foregoing is the essence of the disclosure against which claim 7 must be construed. More details are, of course, given.

The rejection of claim 7 under § 103 is on Barron in view of the Marshall article. We have carefully studied these references and fail to find in their disclosures, singly or collectively, any suggestion of the invention as above described. Barron does not disclose anything about the processing of cotton. He was concerned with the processing of wool on cotton processing machinery. Even as to the wool, there is no disclosure of any crushing or ironing at any point. The value of the reference is only in its disclosure of cotton carding machines which, of course, do no more than produce the known “thin carded web” referred to at “(a)” of Claim 7, to which appellant applies his invention.

The Marshall article, “The ‘Peralta’ Machine in Woolen Processing,” was a paper read to the Huddersfield Textile Society and published in a British journal describing uses of the PERALTA machine which, the article says, came into use in 1938 and was at the time of the article in widespread use. Its primary purpose is to crush impurities in a wool web. It is a separate machine, not a part of a carding machine. The illustration of its use shows it between two carding machines. We find these passages significant:

In the carder part of the machine, the crushed impurity should be lost, and for the most part it is * * *.
******
It has already been pointed out that the “Peralta” crushes impurities, but does not remove them. It is the work of the carder or the parts of the machine following the “Peralta.”

There is a passage in the article, relied on by the examiner, in which the author undertakes to dispel one or two “misconceptions,” one of which is that the PERALTA cannot be used with blends containing cotton. He says:

Actually “Peraltas” are running successfully on blends containing 100% cotton. Cotton fibre is not as resilient as wool and incorrect treatment might easily damage it, but if the web is sufficiently thin so that the impurities present are thicker than the web, and the pressure is correctly adjusted blends containing cotton can be treated with perfect success.

We fail to find in Marshall, however, anything to contradict appellant’s assertion that “In every known instance of prior art crushing[,] such crushing was followed by a carding operation to card the crushed matter out of the fibrous mass to obtain cleaner yarn and cloth.” This points up an important difference between the method of claim 7 and the prior art which we think makes appellant’s method unobvious.

The solicitor, arguing from claim 1 which was held invalid, says that adding steps (d) and (e) in claim 7 does not render it patentable because they are old, and he also argues that by use of the word “comprising” in the preamble, claim 7 does not preclude additional carding either between steps (c) and (d) or as a part of step (d). Reading claim 7 in the light of the disclosure, as well as the prior art it was consciously drafted to distinguish from, we disagree with these contentions. First of all, claim 7 is clearly limited to the “cotton system,” described in the specification, which claim 1 was not. The word “comprising” must be taken in context with the words, “in sequence,” which convey the clear meaning of a continuous, connected series precluding intervening steps. We do not see how carding can take place in the course of condensing step (d). The record shows that condensing a carded web into a sliver is the antithesis of carding. And, finally, even though steps (d) and (e) are old — even conventional— their presence in the claim, taken with the introductory clause, serves to show a distinction over the prior art, namely, that after the production of the web in steps (a)-(c) in an ironed and drafted condition it is immediately condensed into a sliver and processed into a yarn. It is proceeding in accordance with claim 7 that clearly appears to be appellant’s true contribution to the art and one which the prior art does not suggest. We therefore hold claim 7 to be unobvious.

CONCLUSION

Since we find the obviousness rejection of claims 2-4 to have been proper, it is unnecessary to consider the Blonder-Tongue rejection applicable only to claims 2 and 3, and in accordance with established policy we do not do so.

The decision of the board affirming the rejection of claims 2-4 is affirmed, and the decision affirming the rejection of claim 7 is reversed.

Modified.

      . There appears to have been an earlier reissue application serial No. 554,237, filed Apr. 22, 1966, which was abandoned.

      . Claim 1 of the patent, eliminated on this application, reads:
      A method of treating cotton fibres comprising the steps of forming the fibres into a thin carded web, passing said web through crushing rollers adapted to crush small impurities in the web and subjecting said web on leaving said crushing rollers to a longitudinal drafting action sufficient to cause relative longitudinal fiber [sic] movement in the web.

      . Webster’s Third New International Dictionary defines “sliver” in the sense here used as “2a(l): a loose soft untwisted strand or rope of textile fiber produced by a carding or combing machine and ready for drawing or roving (2): a similar strand of wool fiber delivered by a carding machine and ready to be spun into yarn.” “Roving” is defined as “la: a slightly twisted roll or strand of textile fibers b: material in an intermediate stage between sliver and yarn 2: the final process of reducing and drawing out sliver preliminary to spinning.”

      . PERALTA rolls are discussed in the Marshall reference. The record shows that a Spaniard named Antonio Peralta Albero patented pressure rolls in the United States in 1937, patent No. 2,075,156, not of record.

      . “Neps” are little knots of cotton fibers in this context.


author: MILLER, Judge.

text:
    Julius CIRIC, Appellant, v. Edith M. FLANIGEN et al., Appellees.
    Patent Appeal No. 74-604.
    United States Court of Customs and Patent Appeals.
    March 20, 1975.
    Claude E. Setliff, Atlanta, Ga., attorney of record, for appellant. Oswald G. Hayes, New York City, of counsel.
    Richard G. Miller, New York City, attorney of record, for appellees.
    Before MARKEY, Chief Judge, RICH, LANE and MILLER, Judges, and ALMOND, Senior Judge.
   MILLER, Judge.

This is an appeal by senior party-appellant from the decision of the Board of Patent Interferences awarding priority to junior party-appellees on the basis of their actual reduction to practice prior to appellant’s earliest filing date. The only element of the actual reduction to practice challenged by appellant is utility. We affirm.

The interference involves novel synthetic crystalline zeolites described in a count which does not specify any particular use. Consideration of the sole issue before us involves the properties of the known class of crystalline zeolites and the relationship between the new zeolites of the count and that known class. Appellant’s specification states:

Zeolitic materials, both natural and synthetic, have been demonstrated in the past to have catalytic capabilities for various types of hydrocarbon conversion reactions, especially catalytic cracking. Certain of these zeolitic materials comprise ordered, porous crystalline aluminosilicates having a definite crystalline structure, as determined by X-ray diffraction, within which there are a large number of small cavities which are interconnected by a series of still smaller channels or pores. These cavities and pores are precisely uniform in size within a specific zeolitic material. Since the dimensions of these pores are such as to accept for adsorption molecules of certain dimensions while rejecting those of larger dimensions, these materials have come to be known as “molecular sieves,” and are utilized in a variety of ways to take advantage of the adsorptive properties of these compositions.
These molecular sieves include a wide variety of positive ion-containing crystalline aluminosilicates, both natural and synthetic. . . . All can generally be described as having a rigid 3-dimensional network of SÍO4 and AIO4 in which the tetrahedra are cross-linked by the sharing of oxygen atoms whereby the ratio of the total aluminum and silicon atoms to oxygen atoms is 1:2. [Emphasis added.]

The specification also indicates that the new zeolites in sodium form are useful as adsorbents for gases and liquids, such as water and cyclohexane.

In a similar fashion, appellees’ specification states:

The openings [in the channels of the zeolite crystal lattice] limit the size and shape of the molecules that can be adsorbed. A separation of mixtures of molecules based upon molecular dimensions, wherein certain molecules are adsorbed by the zeolite while others are refused, is therefore possible. It is this characteristic property of many crystalline zeolites that has led to their designation as “molecular sieves.” .
In addition to the unique adsorption properties of zeolitic molecular sieves, certain of these materials, particularly when chemically modified, are excellent catalysts .
Over the past few years about 30 species of synthetic crystalline zeolites have been prepared. . . . The existence of a number of zeolites having similar but distinguishable properties advantageously permits the selection of a particular member having optimum properties for a particular use.
The present invention has as its prime object the provision of a novel synthetic crystalline zeolite of the molecular sieve type. Another object is to provide a novel synthetic crystalline zeolite having useful adsorption properties.

The rigid framework of crystalline zeolites accounts for their ability to selectively adsorb various substances based on molecular dimensions and to undergo ion exchange. Thus, crystalline zeolites are known for their adsorptive and ion exchange properties. Appellant agrees that those properties are used to distinguish a crystalline zeolite, but argues that they should not be employed for the ipso facto finding of utility. However, appellant does admit that crystalline zeolites have a wide variety of utilities. Furthermore, knowledge of the properties of crystalline zeolites and examples of the wide varieties of utility are demonstrated in the opinions of this court and in the following definition from The Condensed Chemical Dictionary, 759 — 60 (6th ed. 1961):

MOLECULAR SIEVES. Zeolites or similar materials whose atoms are arranged in a crystal lattice in such a way that there are a large number of small cavities interconnected by smaller openings or pores of precisely uniform size. Normally these cavities contain water molecules, but upon heating, this water is driven off without any change in the remaining crystal lattice. The network of cavities and pores may occupy 50% of the total volume of the crystals.
Molecular sieves have a strong tendency to readsorb water. In the absence of water they will adsorb other molecules that are small enough to pass through the pores. These small molecules may thus be separated from a mixture with larger molecules.
Uses: Drying gases such as air, hydrogen, natural gas, refinery gas, ethylene; drying liquids such as benzene, alcohols, hydrocarbons, fluorocarbons; separation of ethylene from carbon dioxide, carbon dioxide from annealing gas, hydrogen sulfide from natural gas; removal of normal paraffins from light naphthas. Also as a carrier for volatile, toxic, odoriferous, or reactive compounds, which can then be released by heat or displacement at the desired time and place. Materials that have been so carried include organic and metalloorganic compounds, halogen elements, acid gases, water, perfume, catalysts, pesticides, fumigants, ripening agents, radioactive isotopes, blowing agents, antioxidants in rubbers and plastics.

Appellant does not challenge the board’s findings that appellees prepared two samples within the terms of the count; that the composition of the samples was confirmed by chemical analysis; or that the crystalline structure was confirmed by X-ray diffraction. Nor has appellant challenged the tests on one sample showing ion exchange with calcium, potassium, and ammonium ions or the tests on another sample demonstrating a reversible gain and loss of water. After correctly stating the well-established rule that, where an interference count does not specify any particular use, evidence establishing a substantial utility for any purpose is sufficient to prove reduction to practice, the board declined to take administrative notice of the capability of crystalline zeolites to be employed as water softeners because it did not regard that to be a matter of common knowledge. However, the board did take administrative notice of five patents, not previously of record or submitted by either party, which disclosed the use of crystalline zeolites as water softeners or as ion exchangers. In view of the noticed patents, the board held that appellees had established a practical utility for the zeolites of the count — namely as an ion exchanger, one of whose uses is the softening of natural water.

OPINION

As noted above, when a count does not recite any particular utility, evidence establishing a substantial utility for any purpose is sufficient to prove reduction to practice. Rey-Bellet v. Engelhardt, 493 F.2d 1380 (CCPA 1974); Engelhardt v. Judd, 369 F.2d 408, 54 CCPA 865 (1966).

On several occasions, this court has held that utility of a new composition was established by demonstrating a similarity of properties of the new composition to established properties of a known class of compositions having known utility. Thus, in Silvestri v. Grant, 496 F.2d 593 (CCPA 1974), cert. denied, 420 U.S. 928, 95 S.Ct. 1126, 43 L.Ed.2d 399 (1975), we held the utility of Form II ampicillin to be obvious because it was—

not a new compound but a new form of an old one, i. e., ampicillin. There is no reason to believe that the crystal structure and absence or presence of bound water would affect the pharmacological properties of ampicillin. Furthermore, the tests in question were run to demonstrate shelf stability of specific lots. Nevertheless utility can be inferred from these tests because a harmful bacterium was killed even though the tests were not run for that purpose. [Emphasis added.]

Rimbach v. Wanmaker, 362 F.2d 561, 53 CCPA 1552 (1966), was an interference involving a phosphor composition for use in high pressure, mercury vapor lamps. There was no dispute that a phosphor composition was made and that fluorescence and temperature dependence tests were performed on it to simulate a high pressure mercury arc. The board held the tests insufficient to establish a reduction to practice because the phosphors had not been tested in a high pressure, mercury vapor lamp. In reversing, this court said that utility of a phosphor composition would be “known to those of ordinary skill in the art once the phosphor composition was made known and it was tested under the laboratory test conditions, which the record establishes was done, with results which such a person could then apply to other uses.”

Another interference case, Breen v. Miller, 347 F.2d 623, 52 CCPA 1539 (1965), involved a method of producing a filament. The court found that every step of the process had been met and that the filaments had been submitted for testing of physical properties. Concerning the element of utility for the filament, the court stated:

However, we are not satisfied that the filament’s utility is not “apparent.” To the contrary, the filament in question so clearly resembles previously known filaments of organic polymers, i. e., nylon, that it obviously would be useful for the same purpose as such filaments. [Emphasis added.]

In In re Folkers, 344 F.2d 970, 52 CCPA 1269 (1965), this court reversed the rejections of claims to certain hydroquinone and quinone derivatives PA 74— 604 under 35 U.S.C. § 101 for lack of utility and under 35 U.S.C. § 112 for insufficient disclosure of how to use. It said (emphasis added):

We agree with the examiner that in many cases there is a difference between discovery of a property of a chemical compound and utilization of that property in a physical embodiment to accomplish a useful result. But what we think the Patent Office has overlooked here is that usefulness of a chemical compound is invariably a manifestation of a given property of that compound. We think some uses can be immediately inferred from a recital of certain properties.
It is uncontroverted in the record before us that appellants’ compounds are hydroquinone and quinone derivatives and share the property of oxidation-reduction capacity which hydroquinone and quinone compounds in general possess. Since appellants’ newly discovered compounds belong to a class of compounds, the members of which have become well recognized as useful for a particular purpose because of a particular property, the only reasonable conclusion is that the new compounds, also possessing that property, are similarly useful.

In light of the foregoing precedents and recognizing that known crystalline zeolites have a variety of substantial utilities, the decisive question on this appeal is whether appellees’ tests established for their new zeolites a sufficient number of properties in common with known crystalline zeolites to support an inference of utility.

One key property of known crystalline zeolites is their ability to undergo ion exchange. As noted above, appellant does not challenge the ion exchange tests showing that zeolites within the count undergo ion exchange with calcium, potassium, and ammonium ions. (The record shows a resulting mole percent exchange with the sodium ions of the sodium monoxide in the zeolite structure of 66%, 92%, and 91%, respectively.)

The adsorptive properties of known crystalline zeolites are also significant, particularly the reversible loss and gain of water. Again, appellant has not challenged the experiments on a sample of the zeolites of the count showing the reversible loss and gain of water. A similarity of adsorptive properties between the zeolites of the count and known crystalline zeolites is further demonstrated by appellees’ test data showing adsorption of oxygen, carbon dioxide, nitrogen, isobutane, and n-butane.

In view of the demonstrated similarity of ion exchange and adsorptive properties between the newly discovered zeolites and known crystalline zeolites, we hold that appellees have established a substantial utility for the zeolites of the count. Thus, it is unnecessary to reach the propriety of the board’s action in taking administrative notice of certain prior art patents.

The decision of the board is affirmed. Affirmed.

      . Interference No. 97,532 between Ciric (senior party-appellant) on his application No. 722,149, filed April 18, 1968, and accorded the benefit of application serial No. 509,568, filed November 24, 1965, and Flanigen and Kellberg (junior party-appellees) on their application serial No. 655,318,' filed July 24, 1967, and accorded the benefit of serial No. 569,-805, filed August 3, 1966.

      . The count of the interference is a phantom count drafted in Markush form to encompass the respective definitions of each party of the novel synthetic crystalline zeolites:
      A synthetic crystalline zeolite selected from the group consisting of (A) a crystalline zeolite having a composition in terms of mole ratios of oxides as follows: 0.9 ±0.2 [xR20 + (l-x)M2/nO] : A1203 : 3-20 Si02 : z H20 wherein R is tetramethylammonium, M is an alkali metal [cation, n is the valence of said cation], z is between 0 and 20, and x is between 0.01 and 0.5, said zeolite having the X-ray powder diffraction
      pattern as set forth in Table 1 of Serial No. 722,149 and (B) a crystalline zeolite having a composition in terms of moles of oxides as follows:
      x[(CH3)4N]20: y Na20: A1203: z Si02: 0-10 h2o
      wherein x has a value of from about 0.11 to about 0.61; y has a value of from about 0.71 to about 0.94; and z has a value of from about 5 to about 10.4; said zeolite having an X-ray powder diffraction pattern as set forth in Table A of Serial No. 655,-318.

      . One of the most common adsorptive properties is the reversible loss and gain of water.

      . Parker v. Frilette, 462 F.2d 544, 59 CCPA 1311 (1972); In re Mattox, 461 F.2d 826, 59 CCPA 1272 (1972); In re Michel, 461 F.2d 1384, 59 CCPA 1088 (1972); In re Kamm, 452 F.2d 1052, 59 CCPA 753 (1972); In re Frilette, 436 F.2d 496, 58 CCPA 799 (1971); Frilette v. Kimberlin, 412 F.2d 1390, 56 CCPA 1242 (1969); and In re Gladrow, 406 F.2d 1376, 56 CCPA 927 (1969).

      . Folkers was cited for continuing validity with regard to the proposition that a product may not be patented absent a showing of utility in Brenner v. Manson, 383 U.S. 519, 535, 86 S.Ct. 1033, 16 L.Ed.2d 69 (1966).

      . We are not concerned with unpredictable utilities (e. g. catalysis), but only predictable utilities. Compare Kyrides v. Bruson, 102 F.2d 416, 26 CCPA 986 (1939) with Blicke v. Treves, 241 F.2d 718, 44 CCPA 753 (1957).


author: MARKEY, Chief Judge.

text:
    Application of the HOLLAENDER MANUFACTURING CO.
    Patent Appeal No. 74-601.
    United States Court of Customs and Patent Appeals.
    March 20, 1975.

      Donald F. Frei, James S. Hight, Bruce Tittel, Cincinnati, Ohio (Wood, Herron & Evans, Cincinnati, Ohio, attorneys of record, for appellant. John J. Byrne, Washington, D. C. (Baker & McKenzie, Washington, D. C.), of counsel.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Gerald H. Bjorge, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE, Judges, and PHILIP NICHOLS, Judge, United States Court of Claims.
   MARKEY, Chief Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board, 181 USPQ 603 (1974), upholding the denial of registration of a three-dimensional configuration as a trademark for cast aluminum fittings for joining lengths of tubing together. We affirm.

Facts

The configuration sought to be registered is a raised rib disposed axially of a cast aluminum fitting. Threaded apertures extend through the ends of the rib and fitting for reception of Allen set screws. The mark is illustrated at 181 USPQ IV, which is a substitution for a drawing on page 605.

Using the fittings and tubing, a framework structure (e. g., a scaffold) may be constructed, tube ends being inserted into the fittings and secured by the set screws.

Issue

The sole issue before us is whether the board committed reversible error in finding appellant’s raised rib configuration essentially functional and, hence, unregistrable as a trademark.

OPINION

Although an incidental utility might not preclude effectiveness as an indication of source, configurations having essentially utilitarian or functional purposes cannot be registered. As this court stated in Best Lock Corp. v. Schlage Lock Co., 413 F.2d 1195, 1199, 56 CCPA 1472, 1476 (1969):

the incidental function should not by itself preclude trademark registrability if the other conditions precedent are present. That is a quite different situation from a configuration whose purpose is to provide a functional advantage. Where such a functional purpose exists, the rule is that of Shenango, [In re Shenango, 362 F.2d 287, 53 CCPA 1268 (1966)] namely, that the configuration is not registrable as a trademark. The reason is clear. If a configuration is functional in that sense, then everyone has the right to use the configuration for its functional purpose, subject only to such exclusive right for a limited time as may exist under the patent laws. [Original emphasis].

In In re Deister Concentrator Co., 289 F.2d 496, 506, 48 CCPA 952, 968 (1961), though a functional configuration of the goods was denied registration, the court recognized that arbitrary shapes or structural features may be registrable, saying:

Where a shape or feature of construction is in its concept arbitrary, it may be or become a legally recognizable trademark because there is no public interest to be protected. In such a case protection would not be lost merely because the shape or feature also serves a useful purpose. See In re Simmons Company, 278 F.2d 517, 47 CCPA 963.

Whether a configuration serves a functional or source-indicating purpose is a question of fact. As we pointed out in In re Honeywell, Oust. & Pat.App., 497 F.2d 1344, 1348, cert. denied, Dann v. Honeywell, 419 U.S. 1080, 95 S.Ct. 669, 42 L.Ed.2d 674 (1974):

When federal trademark rights have been sought for functional subject matter disclosed in a utility patent, the decisions of this court, notably * * [citing cases] * * * indicate that the acquisition of such rights will not be allowed in view of the “overriding public policy of preventing their monopolization, of preserving the public right to copy.” In re Deister Concentrator Company, Inc., supra. These decisions turned upon the question whether or not the subject matter, for which federal trademark protection was sought, was of a functional nature, i. e., in essence utilitarian or dictated for reasons of engineering efficiency. The utility patent present in each of those cases was used as evidence of the functionality of the involved subject matter.

A definition of “functional” is found in 3 Restatement of Torts § 742. Explaining the definition, Comment (a) to § 742 states:

A feature of goods, or of their wrappers or containers, may be functional because it contributes to efficiency or economy in manufacturing them or in handling them through the marketing process. It may be functional, also, because it contributes to their utility, to their durability or to the effectiveness or ease with which they serve their function or are handled by users. When goods are bought largely for their aesthetic value, their features may be functional because they definitely contribute to that value and thus aid the performance of an object for which the goods are intended. Thus, the shape of a bottle or other container may be functional though a different bottle or container may hold the goods equally well. A candy box in the shape of a heart may be functional, because of its significance as a gift to a beloved one, while a box of a different shape or the form in which a ribbon is tied around the box may not be functional. Or a distinctive printing type face may be functional though the print from a different type may be read equally well. The determination of whether or not such features are functional depends upon the question of fact whether prohibition of imitation by others will deprive the others of something which will substantially hinder them in competition.

The scales of evidence in the record are tilted heavily toward a finding of functionality in appellant’s rib configuration. The use of integral ribs to strengthen structural and other devices is well known. Trade literature concerning the fittings of appellant’s competitors attributes a strengthening function to expansive, raised diamond configurations extending about set screws. The drawings of U. S. Patent No. 3,462,021 to Hawke and Mackie show a fitting with a longitudinal raised rib having set screw apertures near its ends. This evidence raised at least a prima facie case of functionality and nonregistrability.

Faced thus with the burden of going forward, appellant relies on a long period of apparently exclusive use in the marketplace, evidence that some of its competitors, distributors, and jobbers recognize its fittings because of their shape, a court settlement wherein the defendant agreed not to use a rib, and argument regarding functionality. Appellant has not met its burden.

Extended exclusive use, recognition by competitors, distributors, and jobbers, and a naked court settlement are insufficient to indicate the reaction of the purchasing public. The record is devoid of evidence that appellant has succeeded in developing, or even tried to develop, purchaser acceptance of the rib configuration as an indication of origin. The examiner and the board apparently accepted appellant’s evidence as establishing a “secondary meaning,” i. e., that the raised rib indicated origin in appellant. We do not. If such meaning were created, the question would then be one of de facto v. de jure secondary meaning. In re Deister, supra, and the result would be the same. See also, In re Poliak Steel Co., 314 F.2d 566, 50 CCPA 1045 (1963).

Appellant argues that the only functional aspect present is that of the rib area surrounding the screw apertures, admitting that that area resists the forces created between the screw and tube. We are told, without reference to evidence, that the portion of the rib between the set screws could be eliminated without adversely affecting the functional characteristics of the fitting. We are concerned here, however, with the functional characteristic of the rib, not that of the fitting. The board considered apparent the function of the rib in adding strength and durability to the fitting. Appellant conceded at oral argument that the rib can add strength to the fitting but insisted that the added strength has no utility in the application for which the fitting is sold.

From all the foregoing we conclude that the board had adequate evidence to support its finding that appellant’s raised rib configuration is in essence utilitarian or functional, thereby precluding its registration as a trademark.

Affirmed.


author: PER CURIAM:

text:
    The ATCHISON, TOPEKA AND SANTA FE RAILWAY COMPANY, a corporation, Appellant, v. LOCALS NOS. 70, 85, AND 315, OF the INTERNATIONAL BROTHERHOOD OF TEAMSTERS, CHAUFFEURS, WAREHOUSEMEN AND HELPERS OF AMERICA, an unincorporated association, Appellees.
    No. 73-3221.
    United States Court of Appeals, Ninth Circuit.
    Feb. 18, 1975.

      John J. Balluff, Los Angeles, Cal., for appellant.
    Duane B. Beeson, of Brundage, Neyhart, Grodin & Beeson, San Francisco, Cal., for appellees.

       Honorable William G. East, District of Oregon, sitting by designation.

   OPINION

Before BARNES and CHOY, Circuit Judges, and EAST, District Judge.

PER CURIAM:

For the reasons stated in the opinion of Judge Peckham filed in the district court which we incorporate herein by appendix, we affirm the judgment below.

APPENDIX

In the United States District Court Northern District of California

Defendant union locals are parties to a collective bargaining agreement with Santa Fe Trail Transportation Co. (“Trail”), a motor carrier, dealing in part with the loading and unloading of trailers or vans. Trail in turn has an oral contract with Atchison, Topeka & Santa Fe R. Co. (“Railway”) under which Trail hauls highway trailers to and from customers of Railway, before or after said trailers have been carried “piggy-back” style by Railway.

One of the provisions of the collective bargaining agreement, requiring loading and unloading to be performed by employees working under the agreement, was found by the National Labor Relations Board (NLRB) to violate Section 8(e) of the National Labor Relations Act, 29 U.S.C. § 158(e). Prior to this determination and the ensuing injunction against enforcement of the provision in question, the union locals extracted substantial payments from Trail to union members for work which would otherwise have been performed by the consignees, and Trail passed these costs on to Railway under a provision of the hauling agreement between the latter two. Railway now sues the union locals to recover these extra costs which were imposed upon Railway as a result of the union’s unfair labor practice.

Railway’s motion to amend its complaint, adding 28 U.S.C. § 1337 as a basis for jurisdiction, is granted as a matter of course, no responsive pleading having been filed. F.R.Civ.P. 15(a).

Defendants now move this court for an order dismissing the complaint on the grounds of lack of jurisdiction.

Plaintiff has cited, as the basis for jurisdiction, the following statutes: 28 U.S.C. §§ 1331, 1337; 29 U.S.C. §§ 185, 187.

As to the former two, this court is of the opinion that it is barred from taking jurisdiction of this matter by the so-called preemption doctrine, explained at length in San Diego Building Trades Council v. Garmon, 359 U.S. 236, 79 S.Ct. 773, 3 L.Ed.2d 775 (1959), and reaffirmed more recently in Motor Coach Employees v. Lockridge, 403 U.S. 274, 91 S.Ct. 1909, 29 L.Ed.2d 473 (1971). Simply stated, the doctrine holds that “the National Labor Relations Act pre-empts state and federal court jurisdiction to remedy conduct that is arguably protected or prohibited by the Act.” Lockridge, supra, 403 U.S. at 276, 91 S.Ct. at 1913. This doctrine has been consistently applied to block efforts of state and federal courts to regulate conduct “arguably subject to § 7 or § 8 of the Act,” namely, unfair labor practices. Id. at 284, 91 S.Ct. at 1916; see also, e. g., Marydale Products Co. v. United Packinghouse Workers of America, AFL-CIO, 322 F.2d 224 (5th Cir. 1963); Comb Construction Co. v. Hospital Board of Memorial Hospital, 57 CCH Lab.Cas. 1 12,403 (W.D.Wisc.1968). The doctrine represents a judicial attempt “to delimit state and federal judicial authority over labor disputes in order to preclude, so far as reasonably possible, conflict between the exertion of judicial and administrative power in the attainment of the multifaceted policies underlying the federal scheme.” Lock-ridge, supra, 403 U.S. at 286, 91 S.Ct. at 1918.

The Supreme Court has, of course, recognized a number of exceptions to this preemption doctrine. See, e. g., id., at 297-98, 91 S.Ct. 1909. The sole exception which concerns us here deals with situations in which Congress has affirmatively indicated that jurisdiction should exist; this leads us to a discussion of the final two statutes asserted as grounds for jurisdiction herein, both of which provide statutory exceptions to the preemption doctrine.

Section 301 of the Taft-Hartley Act, 29 U.S.C. § 185, provides for jurisdiction in the district courts over “suits for violation of contracts between an employer and a labor organization.” Even reading this statute most favorably to plaintiff, there has been no violation of any contract or bargaining agreement; indeed, plaintiff complains precisely of the fact that the provisions in question, subsequently determined to be an unfair labor practice, were fully complied with. Assuming, for the moment, that plaintiff has been wronged by the actions in question, it is clear that the wrong arises not out of any violation of the contract or agreement, but rather out of the fact that a portion of the contract constituted an unfair labor practice. The identification and remedy of such wrongs, to the extent that any remedy is available, falls squarely within the jurisdiction of the NLRB under the preemption doctrine discussed above, and does not fall within the scope of § 185.

Section 303 of the Taft-Hartley Act, 29 U.S.C. § 187, provides for jurisdiction in the district courts over any claim of injury arising out of a labor organization’s alleged violation of Section 8(b)(4) of the NLRA, 29 U.S.C. § 158(b)(4), declaring certain types of strikes, threats and boycotts to be unfair labor practices. Plaintiff argues that in order to effectuate fully the Congressional purpose expressed in § 187, the court should read this highly specific provision as embracing § 158(e) as well as § 158(b)(4) within the grounds for suit in the district court. Congress is perfectly free to broaden the scope of § 187 in the manner urged by plaintiff; this court is not free to do so. The court must presume that Congress, in its 1959 amendments adding Subsection 158(e) to the NLRA, could have amended § 187 with equal facility, had it chosen to do so.

For the reasons stated above, the court is forced to conclude that it is without jurisdiction over the claims raised by plaintiff. Accordingly, defendant’s motion must be granted and the action must be, and hereby is, ordered dismissed.

(s) Robert F. Peckham United States District Judge

JUDGMENT

This matter having come before the Court upon defendants’ motion to dismiss, and the issues having been duly presented by counsel in the papers filed herein, in accordance with this Court’s Memorandum and Order handed down this date,

It is hereby ordered and adjudged that defendants’ motion to dismiss is granted, and the action is dismissed.

Dated: October 26, 1973.

(s) Robert F. Peckham United States District Judge


author: PER CURIAM.

text:
    FOUR-WAY COAL COMPANY, Plaintiff-Appellant, v. CLARK EQUIPMENT COMPANY, Defendant-Appellee. BLACK DIAMOND AUGER MINING, INC., Plaintiff-Appellant, v. CLARK EQUIPMENT COMPANY, Defendant-Appellee. FARRELL MINING COMPANY and Farco Company, Inc., Counter-Defendants-Appellants, v. SIMMONS MACHINERY COMPANY, INC., Counter-Plaintiff-Appellee.
    Nos. 74-1165-74-1167.
    United States Court of Appeals, Sixth Circuit.
    Feb. 19, 1975.
    Glenn W. Denham, Denham, Ralston & Nagle, Middlesboro, Ky., Thomas W. Prewitt, Butler, Snow, O’Mara, Stevens & Canada, Jackson, Miss., Foster D. Ar-nett, Arnett, Draper & Hagood, Knoxville, Tenn., for plaintiffs-appellants, counter-defendants-appellants.
    W. Keith McCord, Egerton, McAfee, Armistead, Davis & McCord, Knoxville, Tenn., William H. Mills, Birmingham, Ala., Robert R. Campbell, Hodges, Doughty & Carson, Knoxville, Tenn., for defendant-appellee, counter-plaintiff-appellee.
    Before EDWARDS and ENGEL, Circuit Judges, and CECIL, Senior Circuit Judge.
   PER CURIAM.

These are three suits involving the sale or leasing of Clark Equipment Company’s Model 475 421E Front End Loader. Four-Way Coal Company sued Clark Equipment in No. 74-1165; Black Diamond Auger Mining, Inc., sued Clark Equipment in No. 74 — 1166; Farrell Mining Company and Farco Company, Inc., sued Simmons Machinery Company, Inc., in 74-1167, and in turn Simmons Machinery counterclaimed against Farrell and Farco for unpaid rent on the equipment involved.

The original plaintiffs in all these cases claim damages resulting from misrepresentations which had been made to them by Clark concerning the excellence and reliability of front end loading equipment. They sought to prove excessive breakdowns.

These diversity actions are grounded upon Tennessee law allowing recovery for tortious misrepresentation. Ford Motor Co. v. Lonon, 217 Tenn. 400, 398 S.W.2d 240 (1966); Ford Motor Co. v. Taylor, 60 Tenn.App. 271, 446 S.W.2d 521 (1969).

There was an 11-day jury trial before District Judge Morton in this case. The plaintiffs’ proofs seemed to attempt to establish that in spite of Clark’s representations that the 475 was a “proven” and “standard in the industry” earth-mover, it was, in fact, so full of mechanical problems as to be available for production less than 50% of the time. It appears, however, that this is a sheer estimate, that none of the plaintiffs kept any record of the breakdowns they experienced with the 475’s, that none of the plaintiffs ever offered to turn the machinery back to the seller or the lessor, as the case might be, and that the only records used to prove down time pertained to gasoline use, as to which records there is no breakdown between the gas used for these pieces of equipment and the gas used for other pieces of earthmoving machinery.

Simmons’ proofs on the other hand are both specific and undisputed as to the amounts owed them for rent under their lease agreement with Farrell and Farco.

Judge Morton gave a lengthy instruction to the jury as to which neither side objected and the jury found in favor of the defendants in relation to the plaintiffs’ suits and found a verdict for Simmons on its counterclaim in the sum of $54,484.75.

Before us plaintiffs argue that the District Judge erred in failing to grant their motions for directed verdicts. They also argue that the court committed reversible error when it excluded the testimony of a witness named James Ferguson.

We believe that this case was well tried by a careful judge and that it was presented to a jury in a charge which we have already noted drew no objections from any party. Since there were material conflicts of evidence pertaining to both the amount of “down time” experienced on these machines and the causes therefor, the District Judge in our judgment committed no error by refusing plaintiffs’ motions for directed verdicts in each of these three cases. Fortner Enterprises, Inc. v. United States Steel Corp., 452 F.2d 1095 (6th Cir. 1971), cert. denied, 406 U.S. 919, 92 S.Ct. 1773, 32 L.Ed.2d 119 (1972); Dowdell v. U. S. Industries, Inc., 495 F.2d 641 (6th Cir. 1974). See also Brady v. Southern Ry. Co., 320 U.S. 476, 479-80, 64 S.Ct. 232, 88 L.Ed. 239 (1943).

We have examined with care the contention that the court committed reversible error in striking the testimony of James Ferguson because the District Judge found that he had violated the District Judge’s instruction for sequestration of witnesses. Our examination convinces us that both the instruction and the action taken by the District Judge to enforce it were within his judicial discretion. United States v. Brooks, 303 F.2d 851 (6th Cir.), cert. denied, 371 U.S. 889, 83 S.Ct. 184, 9 L.Ed.2d 122 (1962); Robinson v. State of Tennessee, 474 F.2d 1273 (6th Cir.), cert. denied, 414 U.S. 848, 94 S.Ct. 137, 38 L.Ed.2d 96 (1973), See also Holder v. United States, 150 U.S. 91, 14 S.Ct. 10, 37 L.Ed. 1010 (1893).

In the Farrell-Farco suit against Simmons, it is important to note that no offer to return the allegedly defective equipment was ever made prior to the time that Simmons saw fit to take it

back because of an eight-month lapse of rental payments. The lapse of rental payments is undisputed and on this score the jury award on Simmons’ counterclaim is supported by evidence.

No other appellate issues meriting discussion are presented.

The judgments of the District Court are in all respects affirmed.