text:
    Ernest MAYS, Jr., Plaintiff-Appellee, v. Louis S. NELSON, Warden, San Quentin Prison, et al., Defendants-Appellants.
    No. 71-1655.
    United States Court of Appeals, Ninth Circuit.
    Dec. 27, 1973.
    Before KOELSCH, BROWNING and ELY, Circuit Judges.
   ORDER

On petition for certiorari, the judgment of this court reported at 464 F.2d 585 was vacated and the cause remanded to this court for further consideration in light of Gagnon v. Scarpelli, 411 U.S. 778, 98 S.Ct. 1756, 36 L.Ed.2d 656 (1973).

Upon further consideration, it is ordered that the judgment of the district court be, and it is hereby, vacated; and the cause is remanded to the District Court for the Northern District of California, 323 F.Supp. 587 for further consideration in light of Gagnon v. Scarpel-li.


source: Caselaw Access Project

license: Public Domain

text:
    NATIONAL LABOR RELATIONS BOARD, Petitioner, v. DOLLAR GENERAL CORPORATION, Respondent.
    No. 71-1984.
    United States Court of Appeals, Sixth Circuit.
    Argued May 22, 1972.
    Decided June 1, 1972.
    Peter G. Nash, Gen. Counsel, Marcel Mallet-Prevost, Asst. Gen. Counsel, John D. Burgoyne, Jay E. Shanklin, Attys., National Labor Relations Board, Washington, D. C., on brief, for petitioner.
    Dick L. Lansden, William P. Johnston, Nashville, Tenn., on brief, for respondent.
    Before CELEBREZZE and PECK, Circuit Judges, and O'SULLIVAN, Senior Circuit Judge.
   ORDER

This cause came on to be heard upon the record on appeal and the briefs and arguments of counsel, and upon due consideration thereof and of the factual situation as set out in the record and the report of the case, 189 NLRB No. 41, it appears to the Court that the findings and order of the Board are supported by substantial evidence on the record as a whole.

Now, therefore, it is ordered that the order of the Board be, and it is, hereby enforced.


author: PER CURIAM:

text:
    Hugh NAUGHTEN, Appellant, v. Hoyt C. CUPP, Superintendent, Oregon State Penitentiary, Appellee.
    No. 71-3065.
    United States Court of Appeals, Ninth Circuit.
    Jan. 15, 1974.
    Ross R. Runkel (argued), Salem, Ore., for appellant.
    Lee Johnson, Atty. Gen., Jim G. Russell, Asst. Atty. Gen., John W. Osburn, Sol. Gen. (argued), Salem, Ore., for ap-pellee.
    Before ELY and HUFSTEDLER, Circuit Judges.

       The late Judge Jertberg participated in this court’s original opinion. Since the subsequent Supreme Court opinion fixes the only disposition that is possible, the two judges issuing the present opinion have decided that the selection of a third judge is unnecessary.

   OPINION ON REMAND

PER CURIAM:

In Naughten’s original appeal to this court, the District Court’s denial of his petition for habeas relief was reversed. 476 F.2d 845 (9th Cir. 1973). The ap-pellee’s petition for rehearing was denied by an equally divided vote of the twelve judges who then constituted this court. Thereafter, the appellee sought, and was granted, a writ of certiorari, and on December 4, 1973, the Supreme Court issued an opinion in which the judgment of our court was reversed. 414 U.S. 141, 94 S.Ct. 396, 38 L.Ed.2d 368 (1973).

The mandate of the Supreme Court was received by the Clerk of our court of January 7, 1974. After reciting that the original judgment of our court is reversed, the Supreme Court’s mandate provides that the cause is “remanded [to our court] for further proceedings in conformity with the opinion of this court.” Only one issue was presented in Naughten’s original appeal, and since that issue has now been finally resolved, adversely to him, the District Court’s Order denying Naughten’s petition for a writ of habeas corpus is Affirmed.


text:
    NATIONAL LABOR RELATIONS BOARD, Petitioner, v. TENNESSEE PLASTICS, INC., Respondent.
    No. 73-1445.
    United States Court of Appeals, Sixth Circuit.
    Argued Dec. 6, 1973.
    Decided Jan. 3, 1974.
    Charles Cohen, National Labor Relations Board, for petitioner; Peter G. Nash, Gen. Counsel, John S. Irving, Deputy Gen. Counsel, Patrick Hardin, Associate Gen. Counsel, Elliott Moore, Asst. Gen. Counsel, David Miller, Átty., National Labor Relations Board, Washington D. C., on brief.
    Anthony J. Leggio, James W. Wim-berly, Jr., Mitchell, Pate & Anderson, Atlanta, Ga., on brief, for respondent.
    Before CELEBREZZE and LIVELY, Circuit Judges, and WILSON , District Judge.

       The Honorable Prank W. Wilson, United States District Judge for the Eastern District of Tennessee, sitting by designation.

   ORDER

The N.L.R.B. seeks to have enforced its order against Tennessee Plastics to bargain with the Union and enter into a signed agreement with it. An election was held which the Union won, 299 to 212. The company filed several objections which, after being investigated by the Regional Director, were found to be without merit. The findings of the Regional Director were adopted by the Board and the Union was certified as the exclusive bargaining representative of the company’s employees. When the Union requested the company to recognize and bargain with it, the company refused to do so. In the ensuing unfair labor practice proceeding, the company admitted its refusal to bargain but contended that the election and the certification of the Union were invalid. At the hearing, the Board granted the motion of the General Counsel for summary judgment on the basis that the company was attempting to re-litigate issues raised in its objections to the election. The company contended that it was being deprived of an opportunity to present evidence. In granting summary judgment, the Board found that the company had not offered to present any new evidence nor given any reason why the Board should reconsider its decision with respect to the election. Thus, the company was found to have violated 29 U.S.C. § 158(a)(5) and (1).

Being of the opinion that the company’s exceptions fully complied with the standards for a Board hearing prescribed by its own Rules and Regulations as well as by the applicable authorities, it is ordered that the Board’s application for enforcement of its order be and it is hereby denied, the said order and the order approving and adopting the Regional Director’s Report, are vacated, and the action is hereby remanded to the Board with directions that the company be afforded a full adversary hearing upon its exceptions to the Regional Director’s Report either before the Board itself or a hearing officer. Any findings emerging from such hearing shall be subject to applicable review procedures. N. L. R. B. v. Medical Ancillary Services, Inc., 478 F.2d 96 (6th Cir. 1973).


text:
    Robert E. HEAPHY, Plaintiff-Appellant, v. UNITED STATES TREASURY DEPARTMENT, BUREAU OF CUSTOMS, Defendant-Appellee.
    No. 277, Docket 73-1541.
    United States Court of Appeals, Second Circuit.
    Argued Jan. 9, 1974.
    Decided Jan. 10, 1974.
    Robert E. Heaphy, pro se.
    Taggart D. Adams, Asst. U. S. Atty., for the Southern District of New York (Paul J. Curran, U. S. Atty., for the Southern District of New York, Samuel J. Wilson, Asst. U. S. Atty., for the Southern District of New York, on the brief), for defendant-appellee.
    Before KAUFMAN, Chief Judge, and SMITH and FEINBERG, Circuit Judges.
   PER CURIAM:

We affirm the judgment on Judge Tyler’s opinion below, 354 F.Supp. 396 (S D.N.Y.1973).


text:
    NATIONAL LABOR RELATIONS BOARD, Petitioner, v. GARRARD CONVALESCENT HOME, INC., Respondent.
    No. 73-1325.
    United States Court of Appeals, Sixth Circuit.
    Argued Dec. 4, 1973.
    Decided Jan. 23, 1974.
    Peter G. Nash, Gen. Counsel, John S. Irving, Deputy Gen. Counsel, Elliott Moore, Deputy Associate Gen., Paul J. Spielberg, John Depenbrock, Attys., National Labor Relations Board, Washington, D. C., on brief, for petitioner.
    Jonas B. Katz, David Reichert, Cincinnati, Ohio, on brief, for respondent.
    Before CELEBREZZE, Circuit Judge, McALLISTER, Senior Circuit Judge, and WILSON, District Judge.
   ORDER

The National Labor Relations Board requested enforcement of its order that Respondent Garrard Convalescent Home, Inc., cease and desist from violations of Section 8(a)(1) of the Act, and reimburse three discharged employees with backpay.

The Board found that Respondent had violated Section 8(a)(1) of the National Labor Relations Act in telling its employees that they would probably lose their jobs if a Union was formed within the organization and if they signed Union cards and similar documents. The Board also concluded that three employees had been discriminatorily discharged for their Union activities in violation of Section 8(a)(3) and (1) of the Act.

As to one of the employees, the Board overturned a finding of the Administrative Law Judge that the discharge had been based on valid reasons.

On review of the record, it appears that there is substantial evidence to sustain the findings of the Board.

Enforcement of the Order of the National Labor Relations Board, 199 NLRB No. 94, is hereby granted.


author: RICH, Judge. MILLER, Judge

text:
    Thomas M. BUCK et al., Appellants, v. Francois DESVIGNES, Appellee.
    Patent Appeal No. 9016.
    United States Court of Customs and Patent Appeals.
    Dec. 27, 1973.
    Arthur J. Torsiglieri, Murray Hill, attorney of record, for appellants.
    Carl P. Steinhauser, patent agent, for appellee. R. G. Pelton, Larchmont, N. Y., 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 Patent Interferences awarding priority to Desvignes. The sole issue is Desvignes’ right to make count 2. We affirm.

Buck et al. (Buck) filed no preliminary statement and are limited to the filing date of December 29, 1966, of Patent No. 3,403,284. Desvignes copied the count from the Buck patent into an application to reissue patent No. 3,322,955 which was awarded a convention date of December 24, 1959. The question is whether Desvignes' disclosure supports the count. On Buck’s motion to dissolve on the ground Desvignes had no right to make the count, the Primary Examiner ruled against Buck and the Board of Patent Interferences affirmed, awarding priority to Desvignes.

The invention relates to an improved target structure in television camera tubes. The Buck patent issued to Bell Telephone Laboratories, Inc., and the Desvignes patent to North American Philips Company, Inc. The count reads as follows:

2. In combination;

a target structure comprising a semi-conductive wafer, the wafer including adjacent one surface thereof an array of discrete rectifying barriers surrounded by regions free of rectifying barriers;

insulating means coating said surface selectively at portions overlying regions free of rectifying barriers and leaving exposed portions overlying the rectifying barriers;

means for forming and projecting an electron beam for scanning said one surface of the wafer;

and means for projecting an image to be recorded on the surface of the wafer opposite the one surface.

This count is directed to a combination of elements embodying an improvement in the type of electronic tube known as a “vidicon” which existed prior to the invention of either party. In this tube, which functions as part of the TV camera system, a lens focuses the image to be transmitted on one surface of a small, thin wafer which exhibits local conductivity variations representative of the incident light intensity. The opposite surface of the wafer, which is placed in an electronic circuit, is scanned by an electron beam. As the beam scans, the instantaneous electron beam current generates the video signal. In the above count, the last two elements, namely, means for producing and controlling the electron beam and the optical means for projecting an image on the wafer, were old in the art and form no part of the subject matter invented by either party.

The language used to define the first element of the count — the target or wafer, which Desvignes also calls a plate or disc — has been the main subject of controversy in this interference and will require some discussion. The novel matter which is common to Buck and Des-vignes, however, relates to the second element of the count — the insulating means coating those portions of one surface of the wafer which are free of rectifying barriers and exposing those barriers to the scanning electron beam.

The count describes the first element as a wafer which has “adjacent one surface” an array of discrete rectifying barriers. We are here dealing with matter on a microscopic scale. Appellants’ brief tells us that typical devices “have 300,000 single-barrier diodes formed into an area one-half inch square.” Their patent explains that these diodes are produced by forming in a wafer of semiconductor material having n-type conductivity isolated p-type regions of about 8 microns in diameter (0.008 mm) with eenter-to-center spacing of about 20 microns in both the length and width directions. With these discrete p-type regions formed into the surface of the n-type substrate, the p-type regions are, of course, surrounded by the original n-type material. It is not desired to have the electron beam strike the latter as it scans the surface and so the n-type material is covered, on that surface, by the insulating means which is the second element of the count.

The Buck patent shows that this diode array structure per se was not Buck’s invention but the invention disclosed in a prior patent of Reynolds, No. 3,011,089, issued Nov. 28, 1961, also assigned to Bell Telephone Laboratories, Inc. The Buck patent relates to improvements thereon, including the insulating layer of the count. The general description of this feature reads:

According to another feature, the p-type regions are insulated from each other and the n-type substrate is shielded from the beam by an insulating coating that exposes only the p-type regions to the beam. This feature prevents electron beam generation of spurious current in the output circuit which would otherwise result from bombardment of the substrate.

Desvignes, instead of forming diodes in a wafer of semiconductor material, in effect produces transistors, which have three elements rather than two. He doubly diffuses the surface of a wafer, 25 mms. in diameter and 0.15 mm. thick, having n-type conductivity through openings in an insulating grid of silicon oxide formed on the surface by photoetching techniques. The diffusion is by a technique used in the manufacture of transistors and produces, through the insulating grid, n-type conductivity on the surface beneath which is a layer of p-type conductivity. He thus gets, instead of diodes, a mosaic of N-P-N junctions which are scanned by the electron beam. Desvignes says they operate as phototransistors. Like Buck, and for the same reason, he does not want the electron beam to strike the n-type substrate material of the wafer which appears at the surface of the wafer surrounding the elements of the mosaic and his insulating grid serves to prevent that. Relevant here is his disclosure of the insulating grid, which reads:

The silicon-oxide pattern on the front side of the plate [wafer] has restricted the diffusion of boron and arsenic [the diffusing materials giving the p- and n-type conductivity] to small, separate squares, which exhibit a checkerboard pattern. By maintaining this silicon-oxide grid, I have prevented the initial disc material, which has n-type conductivity, from directly receiving electrons of the scanning beam.

There has been no dispute about Desvignes’ support for the insulating grid element of the count. Buck’s argument has been centered on the fact that Buck discloses diode (P-N) regions formed into one surface of the wafer while Desvignes discloses N-P-N transistor type formations, similarly formed. With the aid of drawings of a schematic nature, Buck has zeroed in on the word “adjacent” in the first element- of the count and some of the language associated therewith, attempting to persuade us that the count is limited to a diode structure, which he discloses and Desvignes does not.

The board fully considered these arguments, giving its answer as follows:

As we read the count [,] giving the language the broadest interpretation which it reasonably will support, nothing is found in the count that would require a strict interpretation of “adjacent,” or require reading “adjacent” in a limited sense as urged by Buck et al. In our opinion, the requirement, “ . . .an array of discrete recti- - fying barriers surrounded by regions free of rectifying barriers;” is satisfied by the Desvignes structure which unquestionably has barrier-free regions between the areas E which completely encircle or encompass the areas E and hence surround those areas.

The “areas E” referred to by the board are shown in Desvignes’ Fig. 7 which is a greatly enlarged fragment of a target disc or wafer.

The silicon crystal from which this disc is made is designated A. C is the grid of silicon oxide insulation. The specification says “E designates diffusion having n-type conductivity at the surface and p-type conductivity underneath.” The body of A has n-type conductivity. Therefore, proceeding from left to right through an opening in grid C and through an area E, the order of materials according to conductivity type is N-P-N. Each area E has, in effect, two “rectifying barriers,” first, an N-P junction and then a P-N junction. As may be seen, around each area E and underlying grid C, the n-type base material of A completely surrounds each of the discrete areas E and, but for insulating grid C, it would be visible at the surface around each area E.

If one imagines looking at the left hand surface of the wafer with the grid C removed, one would see “an array of discrete rectifying barriers surrounded by regions free of rectifying barriers.” Thus, from this standpoint, the first element of the count clearly reads on Des-vignes Fig. 7. As for the word “adjacent,” it seems clear that the array is adjacent the surface being viewed, having been formed by diffusion of boron and arsenic into that surface.

Turning to the next element of the count, the “insulating means,” we find a repetition of the identical phrase found in the first element, “regions free of rectifying barriers.” It is these regions which the insulating grid C covers over, to prevent the electron beam from striking them so as hot to produce spurious currents. Reasoning in reverse, one may ask whether the regions overlaid by the “insulating means coating said surface selectively” are “free of rectifying barriers,” as called for by both the first and second elements of the count. It seems clear that they are, being the regions of the semiconductor body A which extend rearwardly from the surface to which the grid C is applied, between and around the areas E and including, iñ fact, the entire body of the wafer except for the areas E.

We can see nothing unreasonable in thus reading the count and we therefore agree with the board’s statement quoted above. We further note, with respect to construing the word “adjacent,” that it is used in the count as a means for distinguishing one surface of the wafer from the other. Each of the four elements of the count refers to a surface. The first element refers to the “one surface” adjacent which the array occurs; the second element refers back to “said surface;” the third element again refers back to “said one surface;” and the last element refers to the “surface of the wafer opposite the one surface.” In this context, we again agree with the board that there is no reason to read “adjacent” in a limited sense, as Buck urges.

We are fully aware of all the finely-spun arguments of Buck, rejected by the board, by which he attempts to so construe the count as not to be supported by Desvignes’ disclosure but we must reject them in following the applicable rule of law which is, as the board held, that the count must be given the broadest interpretation it will reasonably support. Martin v. Friendly, 58 F.2d 421, 19 C.C.P.A. 1181 (1932); Wirkler v. Perkins, 245 F.2d 502, 44 CCPA 1005 (1957). We feel, quite simply, that Buck is not giving the count its broadest reasonable interpretation but has, on the contrary, contrived a very narrow, artificial interpretation which refuses to apply the language of the count in its most obvious sense. We do not see why “an array of discrete rectifying barriers” cannot be read on an array of transistors as well as an array of diodes, considering that each transistor contains a barrier having a rectifying function. Buck has not shown us that it cannot. The board said, “we are of the view that the count is broad enough to read on both diode and transistor target structures.”

We do not find any ambiguity in the count. There is, therefore, no occasion to apply the rule applied in Smith v. Wehn, 318 F.2d 325, 50 CCPA 1544 (1963), that when a count is ambiguous its meaning is to be determined from the disclosure of the specification in which it originated. However, even were we to do so, we would be unable to derive from the Buck specification, in which the word “adjacent” appears six times in varying contexts, apart from two appearances in claims, any basis for restricting the count to a diode structure, as Buck would have us do.

The decision of the board awarding priority to Desvignes is affirmed. Affirmed.

MILLER, Judge

(dissenting).

In deciding the issue of whether Des-vignes’ disclosure supports the count, the parties have centered their attention on the limitations involving the target structure reading as follows:

a target structure comprising a semi-conductive wafer, the wafer including adjacent one surface thereof an array of discrete rectifying barriers surrounded by regions free of rectifying barriers;

Therefore, the question is not, as the majority puts it, whether “an array of discrete rectifying barriers” can be read on an array of transistors as well as an array of diodes. Of course it can. But there is more to the count, and the pertinent question is whether “an array of discrete rectifying barriers surrounded by regions free of rectifying barriers” (which array is adjacent one surface of a semiconductive wafer) can be read on an array of transistors as well as an array of diodes. (Emphasis supplied.)

To answer this question, one must determine whether the limitation “surrounded by regions free of rectifying barriers” applies to the word “array” or to the words “discrete rectifying barriers.” If the latter, as appellants argue, then each discrete rectifying barrier must be surrounded by a region free of rectifying barriers. The limitation is clearly satisfied by a diode. It would be violated by a transistor, since one of the two discrete rectifying barriers in a transistor contained within a semicon-ductive wafer (which Desvignes discloses) must surround the other in a nested-type structure — otherwise the two barriers would, through the semiconduc-tive substrate, form a single barrier; and the structure would no longer be a transistor, as required by Desvignes. From the figure below taken from the record and prepared by Buck, with no objection from Desvignes appearing, it is clear that Desvignes uses the nested-type structure.

To interpret the limitation, “surrounded by regions free of rectifying barriers,” as applying to the word “array” causes difficulty with the word “regions.” Surrounding an array there would be a region free of rectifying barriers — -not regions. However, “regions” fits if the limitation is interpreted as applying to “discrete , rectifying barriers.” Surrounding each discrete rectifying barrier in an array of diodes would be a region free of rectifying barriers; and surrounding a multiple of such barriers would, of course, be regions free of rectifying barriers.

If there is doubt over whether the limitation applies to “array” rather than to “discrete rectifying barriers,” it would seem that Desvignes has not sustained his burden of proof. Gubelmann v. Gang, 408 F.2d 758, 56 CCPA 1013 (1969). At the very least, we have an ambiguity in the count which necessitates looking to the Buck patent. Smith v. Wehn, 318 F.2d 325, 50 CCPA 1544 (1963).

The majority opinion properly points out that Buck’s patent relates to improvements on the Reynolds patent. Some of these have to do with the insulating means limitation of the count which Desvignes appears to meet. However, as noted above, the issue of whether Desvignes has sustained his burden of proving that he meets the count centers on the limitations involving the target structure, some of which, at least, Buck appears to have taken from Reynolds. Thus, Buck’s specification refers to the Reynolds patent as using a scanning electron beam, with a target structure “having an array of isolated p-type regions on the target surface each of which forms a junction diode with the substrate.”

Describing his invention, Buck’s specification reads, in part, as follows:

A target surface of an n-type semiconductor contains an array of p-type regions which is repetitively scanned by an electron beam. The opposite side of the semiconductor is exposed to incoming light which induces current across the p-n junctions as described before. As a result, different p-n diodes manifest varying degrees of discharge resulting in a fluctuating current in the semiconductor as the beam scans successive p-type regions recharging them to the full target voltage.

The difference between Buck’s p-n junction structure and Desvignes’ two p-n junction structure can be seen from the above figure illustrating the Desvignes device.

Throughout, Buck’s specification speaks of “diode,” “diodes,” “p-n diodes,” “diode array,” “target diode array,” “diode target array,” “diode junction,” “diode capacitance,” “target surface diodes,” and “regional rectifying diode array.”

Finally, it is to be noted that the record shows that the examiner allowed the Buck patent notwithstanding citation to the original Desvignes patent. See McCutchen v. Oliver, 367 F.2d 609, 616, 54 CCPA 756, 765 (1966).

Accordingly, I would hold that Des-vignes has not met his burden of proving that his disclosure supports the count and reverse the decision of the board.

      . The Random House Dictionary (1967) contains the following definition :

        vidicon * * * n. Television. A camera tube in which a charge-density pattern is formed on a photo-conductive surface scanned by a beam of low-velocity electrons for transmission as signals.

      . At oral argument, Buck’s attorney used the figure 30,000 which seems more likely to be the correct figure.

      . There is an apparent error in Desvigpes’ designation as other figures and the specification designate the insulation as “B”.


author: ALMOND, Senior Judge.

text:
    Application of Gerhard FESSMANN.
    Patent Appeal No. 9121.
    United States Court of Customs and Patent Appeals.
    Jan. 10, 1974.

      Edward W. Goldstein, Washington, D. C., attorney of record, for appellant.
    Joseph F. Nakamura, Washington, D. C., for Commissioner of Patents, Jack E. Armore, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, LANE and MILLER, Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Patent Office Board of Appeals affirming the examiner’s rejection, under 35 U.S.C. § 103, of claim 1 in appellant’s application entitled “Liquid Smoke.” We affirm.

The Invention

The invention relates to a liquid composition used for imparting a smoked flavor to foodstuffs such as meat, sausage and cheese. The composition is obtained by treating sawdust with superheated steam. The precise nature of the invention and the method for making it will be more apparent from a consideration of claim 1, reproduced below, since the claim is in the product-by-process format.

1. A liquid smoke product comprising at least a portion of the material resulting from a process of:

(a) contacting particulate wood solids with superheated steam having a temperature of at least 180°C. to effect a thermal decomposition of said wood solids to form a smoking fluid;

(b) withdrawing the smoking fluid from the wood solids; and

(c) liquifying the smoking fluid to produce said liquid smoke product which may be stored and subsequently applied in the treatment of foodstuffs. Other than the process by which it is

made, the only characterization of the composition which appears in the specification is that it has a low content of carcinogens. In particular, it contains 0.2-0.3 micrograms of 3,4-benzopyrene per liter. The record makes it clear that prior art “liquid smoke” compositions are complex mixtures of the chemical compounds which can be derived from wood. These mixtures defy simple characterization and this fact presumably accounts for the use of a product-by-process claim.

Rejection

The examiner rejected claim 1 as being obvious within the meaning of § 103 in view of each of the following give patents :

All of these references are directed to liquid smoke compositions and/or their method of preparation. However, none of these is obtained by treating sawdust with superheated steam. For the purposes of our decision, it will suffice to discuss but two of these references, Hol-lenbeck and Miler, which in our view are the most pertinent.

Hollenbeck discloses that it was known to the prior art that a liquid smoke composition could be obtained from wood. In these processes the smoke can be generated by burning wood in a limited amount of air or by destructively distilling wood. The resulting product can be condensed to a liquid or dissolved in water to make the liquid smoke. Hollen-beck prefers to use the method in "Which the wood is burned since this produces lesser amounts of phenolic and hydrocarbon compounds. Although some pheno-lics are desired, if their content is too high a bad taste is imparted to the foodstuff. Among the hydrocarbons produced is 3,4-benzopyrene.

Hollenbeck obtains his product by the countercurrent extraction of the smoke using water as the extractant. The extract is condensed and filtered with cellulose pulp to remove the 3,4-benzo-pyrene. This results in a content of 3,4-benzopyrene of less than 0.5 parts per billion.

Miler also generates the smoke by burning wood. However, an excess of air rather than limited air is used in the combustion. The smoke is absorbed into an aqueous alkali solution. Miler teaches that carcinogenic compounds such as 3,4-benzopyrene can be removed from the alkali solution by extraction with ethyl ether.

In the examiner’s view, appellant failed to show that the liquid smoke obtained by his process possessed unob-vious differences from the liquid smoke compositions shown in the prior art. The board agreed, reasoning as follows:

In the present case, we have searched in vain in appellant’s brief for some explicit assertion of unob-viously novel properties or characteristics exhibited by his liquid smoke product. However, all that we find is a comparison of his process with the prior art processes. A comparison of that nature does not serve to resolve the issue concerning the patentability of the product. Even a review of appellant’s specification is of little assistance to appellant’s cause. The specification emphasizes the low 3,4 benzopyrene content of appellant’s product * * * but this is not a novel characteristic of a liquid smoke product as evidenced by the Hollen-beck patent * * * and the Miler et al. patent * * *.

Appellant requested reconsideration by the board of its decision. In his request he offered new evidence which was alleged to show that his liquid smoke differed in kind from that known to the prior art and that this difference grows out of his unobvious process. He also offered to provide additional evidence if given time. The board refused to consider the new evidence for the reason that, in its view, the evidence was not timely presented.

OPINION

This court recently made the following observation, in In re Brown, 459 F.2d 531, 59 CCPA 1036 (1972), regarding the patentability of product-by-process claims:

* * * the lack of physical description in a product-by-process claim makes determination of the patenta-bility of the claim more difficult, since in spite of the fact that the claim may recite only process limitations, it is the patentability of the product claimed and not of the recited process steps which must be established. We are therefore of the opinion that when the prior art discloses a product which reasonably appears to be either identical with or only slightly different than a product claimed in a product-by-process claim, a rejection based alternatively on either section 102 or section 103 of the statute is eminently fair and acceptable. As a practical matter, the Patent Office is not equipped to manufacture products by the myriad of processes put before it and then obtain prior art products and make physical comparisons therewith. [Emphasis in the original.]

In Brown, the court was in effect saying that the Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-proeess claims because of their peculiar nature than would be the case when a product is claimed in the more conventional fashion. We believe the Patent Office satisfied its burden of proof in this case in view of Hollenbeck and Miler.

As the board noted, there is nothing in appellant’s specification which suggests that his liquid smoke differs from the prior art compositions other than by its low content of carcinogens. However, Hollenbeck and Miler describe compositions having little or no carcinogen content. Hollenbeck does teach that the method of manufacture can affect the makeup of a liquid smoke composition. However, there is nothing in the record before the examiner from which he could reasonably have been expected to conclude that appellant’s composition differs in kind from those obtained by other inventors solely because it was derived from a process not known to the prior art.

Accordingly, we think the board acted properly when it affirmed the examiner as the burden of proof had shifted to the appellant and this burden was not discharged. It was appellant’s duty to present evidence which would demonstrate the unobvious character of his claimed invention over the cited references. No such evidence was offered prior to the reaching by the board of its decision and we think the board was within its authority when it rejected the belated offer of evidence made in appellant's request for reconsideration. The board had made no new rejection and appellant was clearly on notice that the examiner was not persuaded that the composition was unobvious simply because its process of manufacture had been deemed patentable.

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

Affirmed.

      . S.N. 850,980 filed August 18, 1969 as a continuation-in-part of S.N. 515,126 filed December 20, 1965 and now U.S. Patent No: 3,462,282.

      . Appellant's patent, U.S. 3,462,282, contains claims directed to a process for obtaining liquid smoke using superheated steam. This patent issued on an application of which the application involved in this appeal is a continuation-in-part.


author: RICH, Judge.

text:
    Richard J. DUFFY, Petitioner, v. Rene D. TEGTMEYER, Acting Commissioner of Patents, and Gerald Barnes et al., Respondents.
    Special Patent No. 182.
    United States Court of Customs and Patent Appeals.
    Jan. 10, 1974.
    Rehearing Denied Feb. 28. 1974.

      Before MARKEY, C. J., and RICH, BALDWIN, LANE and MILLER, JJ.
   RICH, Judge.

This is a petition by Duffy, a party to interference No. 97,945 in the United States Patent Office, for a writ of mandamus to the Acting Commissioner of Patents to direct him “to apply Patent Office Rules 223, 225, and 231(a)(5) according to their express terms.”

The Acting Commissioner, Rene D. Tegtmeyer, and Barnes et al., the other party to the interference, oppose the petition on various grounds pertaining to our jurisdiction. They also say that even if we had jurisdiction we should not exercise it because what the Commissioner did was within his discretion and because it was merely interlocutory.

The Facts

The interference is in its early stages. The party Barnes and Preziosi moved to remove Barnes as a named inventor in the involved application pursuant to 35 U.S.C. § 116 and Patent Office Rules 231(a)(5) and 45(b). The Primary Examiner denied the motion, ruling the supporting affidavits insufficient. At the same time that the motion was filed a preliminary statement was filed, signed only by Preziosi. A Patent Interference Examiner thereafter held the Preziosi preliminary statement defective because it was not signed by Barnes and put Barnes et al. under an order to show cause why judgment should not be rendered against them. Preziosi then petitioned the Commissioner to direct the examiner: (1) to grant the Barnes and Preziosi motion and delete Barnes as an inventor or (2) to vacate the decision denying the motion and defer its consideration to final hearing to permit testimony to be taken in the interference.

The chairman of the Board of Patent Interferences, acting for the Commissioner pursuant to Rule 181(g), granted the alternative relief to the extent that consideration of the question raised by Barnes et al. was deferred to final hearing to permit the taking of testimony and ruled that the petition would be regarded as a sufficient answer to the order to show cause. Duffy then petitioned for reconsideration and Acting Commissioner Tegtmeyer denied the petition, holding that Kistler v. Weber, 412 F.2d 280, 56 CCPA 1413 (1969), relied on by Duffy, was not applicable.

The present petition to this court for a writ of mandamus seeks to reverse the decisions of the chairman of the Board of Patent Interferences and of the Acting Commissioner. The All Writs Act, 28 U.S.C. § 1651(a), as interpreted by this court in Loshbough v. Allen, 404 F.2d 1400, 56 CCPA 913 (1969), is the principal authority relied on by petitioner to support the requested action, as giving us jurisdiction. The All Writs Act states:

The Supreme Court and all courts established by Act of Congress may issue all writs necessary or appropriate in aid of their respective jurisdictions and agreeable to the usages and principles of law.

Contentions of the Respondents

Respondents, Barnes et al. and the solicitor, argue that the court does not have jurisdiction under the All Writs Act to entertain the instant petition. They concede that under Loshbough v. Allen the court has the authority, under the All Writs Act, to issue a writ of mandamus in aid of its jurisdiction, but argue that in the circumstances of this case the court has no jurisdiction to be aided by issuing such a writ. In Losh-bough v. Allen we stated our conclusion that

* * * this court is vested with authority to issue a writ of mandamus in aid of its jurisdiction in appeals from the tribunals of the Patent Office.

Respondent, Barnes et al., argues as follows:

Respondents do not take issue with the holding in Loshbough v. Allen that this Court is a Constitutional Court which has the authority to issue a Writ of Mandamus, in aid of its jurisdiction, within the meaning of 28 U.S.C. § 1651(a). The significant difference between Loshbough and the present proceeding is that in Losh-bough an appeal to this Court under 35 U.S.C. § 141 had been filed by the moving party. Thus, the Court already had jurisdiction of the proceeding before the Writ was requested.
Here, there is no appeal under 35 U.S.C. § 141 to the Court of Customs and Patent Appeals from any final decision of the Board of Patent Interferences.
There is no assurance that this Court ever will have jurisdiction of the present interference because of the statutory provision allowing the losing party to appeal directly to the district court, or the winning party to remove an appeal from this Court to the District Court. It is well established that 28 U.S.C. § 1651(a) does not by itself operate to confer jurisdiction where none otherwise existed; it may be invoked by the Court only in aid of jurisdiction which has already attached. Morrow v. District of Columbia [135 U.S.App.D.C. 160], 417 F.2d 728, 733 (D.C.Cir. 1969); 9 Moore’s Federal Practice ¶ 10.29, p. 318.

The solicitor makes essentially the same argument for lack of jurisdiction-in this court, pointing out that as yet there has been no decision on priority, that no formal appeal to this court has been filed in this case, and that in fact there may never be an appeal to this court because of the removal provisions of 35 U.S.C. § 141.

Should we disagree that we lack jurisdiction for the above reasons, then the solicitor and Barnes et al. further argue that we lack jurisdiction to review decisions of the Commissioner of Patents, which we are here being asked to do. In re Wiechert, 370 F.2d 927, 938, 54 CCPA 957, 969 (1967), is cited to support that proposition.

Furthermore, it is pointed out, the decisions involved here are merely interlocutory and this and other courts have in many cases ruled that mandamus is not proper where the ruling is merely interlocutory. The Patent Office cites Tenney v. Nordmeyer, 94 F.2d 396, 25 CCPA 851, 36 CCPA 346 (1938). Barnes et al. cite In re Borg, 392 F.2d 642, 55 CCPA 1021 (1968); Loshbough, supra; Anderson v. Watson, 103 U.S. App.D.C. 99, 254 F.2d 956 (1958); Phillips Petroleum Co. v. Brenner, 260 F.Supp. 45 (D.C.D.C.1966); Doyle v. Brenner, 127 U.S.App.D.C. 283, 383 F.2d 210 (1967); Conversion Chemical Corp. v. Gottschalk, 341 F.Supp. 754 (D.C. Conn.1972); and Klein v. Commissioner, 474 F.2d 821 (4th Cir. 1973).

OPINION

With respect to the threshold question whether, under the present circumstances, this court can issue a writ of mandamus under the All Writs Act, in aid of its jurisdiction, we do not agree with respondents that we are without jurisdiction at this juncture merely because no appeal has been taken to this court from a final decision on priority by the Board of Patent Interferences. See FTC v. Dean Foods Co., 384 U.S. 597, 603, 86 S.Ct. 1738, 16 L.Ed.2d 802 (1966); Roche v. Evaporated Milk Assn., 319 U.S. 21, 63 S.Ct. 938, 87 L.Ed. 1185 (1943). Cf. Matsushita Electric Industrial Co. v. The U. S. Treasury Dept., 67 Cust.Ct. 328, C.D. 4292 (1971), affirmed, 485 F.2d 1402, 60 CCPA 85 (1972). The answer to respondents’ main contention is well stated in summary fashion in the following quotation from FTC v. Dean, 384 U.S. at page 603, 86 S.Ct. at page 1742:

The All Writs Act, 28 U.S.C. § 1651(a), empowers the federal courts to “issue all writs necessary or appropriate in aid of their respective jurisdictions and agreeable to the usages and principles of law.” The exercise of this power “is in the nature of appellate jurisdiction” where directed to an inferior court, Ex parte Crane, 5 Pet. 190, 193, 8 L.Ed. 92 (1832) (Marshall, C. J.), and extends to the potential jurisdiction of the appellate court where an appeal is not then pending but may be later perfected. Cf. Ex parte Bradstreet, 7 Pet. 634, 8 L.Ed. 810 (1833) (Marshall, C. J.). These holdings by Chief Justice Marshall are elaborated in a long line of cases, including McClellan v. Carland, 217 U.S. 268, 30 S.Ct. 501, 54 L.Ed. 762 (1910), where Mr. Justice Day held: “[w]e think it the true rule that where a ease is within the appellate jurisdiction of the higher court a writ . . . may issue in aid of the appellate jurisdiction which might otherwise be defeated. . . . ” At 280, 30 S.Ct. 501. And in Roche v. Evaporated Milk Assn., 319 U.S. 21, 63 S.Ct. 938, 87 L.Ed. 1185 (1943), Chief Justice Stone stated that the authority of the appellate court “is not confined to the issuance of writs in aid of a jurisdiction already acquired by appeal but extends to those cases which are within its appellate jurisdiction although no appeal has been perfected.” At 25, 63 S.Ct. 938.

This being the law, we think that the fact that there has yet been no decision on priority and, consequently, no appeal therefrom, goes more correctly to the question whether we ought to exercise jurisdiction in such a case as this because the issuance of a writ of mandamus would be necessary or appropriate in aid of our jurisdiction and agreeable to the usages and principles of law.

The appropriate question, therefore, is whether such a writ is necessary or appropriate in aid of our jurisdiction and whether, under the permissive language of the All Writs Act, the court deems it desirable and proper to issue the writ of mandamus. As respects the latter, it is clear that it is an extraordinary remedy to be issued in exceptional circumstances and, in a case involving a discretionary action, only where there has been a clear abuse of discretion. See, e. g., Howes Leather Co. v. LaBuy, 352 U.S. 249, 77 S.Ct. 309, 1 L.Ed.2d 290 (1957); Will v. United States, 389 U.S. 90, 88 S.Ct. 269, 19 L.Ed.2d 305 (1967).

The solicitor, in his opposition to the petition, notes that “in patent matters, this court has no jurisdiction to review decisions by. the Commissioner of Patents,” such as those here. See Sundback v. Blair, 47 F.2d 378, 18 CCPA 1016 (1931). It seems clear, however, that this court does have jurisdiction to review decisions of the Commissioner of Patents on questions which are “ancillary to priority” in the context of an interference, Vandenberg v. Reynolds, 242 F.2d 761, 44 CCPA 873 (1957), and after remand 268 F.2d 744, 46 CCPA 938 (1959). See also Myers v. Feigelman, 455 F.2d 596, 59 CCPA 834 (1972), and Norton v. Curtiss, 433 F.2d 779, 57 CCPA 1384 (1970). Often Commissioner's decisions are passed on by the board at final hearing and become reviewable on appeal. That is likely to be the case here when the motion, which the chairman of the board, acting for the Commissioner, deferred to final hearing, is decided by the board. This question has been deemed ancillary to priority. See Crane v. Grier, 71 F.2d 180, 21 CCPA 1163 (1934); Briggs v. Kaisling, 288 F. 254, 53 App.D.C. 48 (1923); Lemp v. Randall, 33 App.D.C. 430, 1909 C.D. 455 (1909); Manny v. Garlick, 135 F.2d 757, 30 CCPA 1008 (1943). It appears that the decision here deferring to final hearing the motion of Preziosi to delete Barnes as an inventor assumed that the issues involved were ancillary to priority and would thus be reviewable by this court on appeal.

However, while the issue involved here is one which we might have • jurisdiction to decide in the context of our review of a decision of the Board of Patent Interferences on priority, it does not seem either necessary or appropriate in aid of such jurisdiction to issue such a writ at this stage of the interference proceeding, at which there has in fact been no appeal to this court from a decision on priority. See Loshbough v. Allen. The decision was of an interlocutory nature and it was one within the discretion of the Commissioner. No sufficient showing has been made that he (or his delegates) abused his discretion. We are not disposed to interfere with the orderly progress of the interference through the Patent Office to final hearing and a decision on priority, from which the loser will have an appeal to this court. As has been pointed out by the solicitor, petitioner might even be the winner on the merits.

DECISION

Accordingly, the petition for an order in the nature of a writ of mandamus is denied.

      . More accurately, this is not an “appeal” but an action de novo under 35 U.S.C. § 146, with the right in the winning party, under 35 U.S.C. § 141, to force an opponent -who appeals to this court to go to the District Court instead.


author: PER CURIAM.

text:
    The ASSOCIATED GENERAL CONTRACTORS OF AMERICA, INC., OKLAHOMA CHAPTER-BUILDER’S DIVISION, Plaintiff-Appellant, v. LABORERS INTERNATIONAL UNION OF NORTH AMERICA LOCAL 612 and Laborers National Craft Board and Construction Industry Stabilization Committee, Defendants-Appellees, and Laborers International Union of North America, Intervenor-Appellee.
    No. 10-3.
    Temporary Emergency Court of Appeals.
    Dec. 7, 1973.
    Edward E. Soule, Lytle Soule & Emery, Oklahoma City, Okl., for plaintiff-appellant.
    Before CHRISTENSEN, VAN OOS-TERHOUT and ESTES, Judges.
   PER CURIAM.

Notice of appeal has been filed with this court by the above-named plaintiff-appellant from a judgment entered on September 28, 1973, by the United States District Court for the Western District of Oklahoma in its case No. 72-544 civil.

It is stated in the notice of appeal that “[t]he present appeal results from the District Court’s failure to comply with the mandate of this Court” in No. 10-2, Associated Gen. Con. of A., Inc., Okl., Etc. v. Laborers Int. U., 476 F.2d 1388 (Em.App.1973). Simultaneously with the filing of the notice of appeal herein the plaintiff-appellant filed with this court application for writ of mandamus seeking to have the trial judge vacate his September 28, 1973, judgment and to enter judgment in accordance with what appellant contends to have been the mandate of this court. We have denied this application as being without merit. No. 10-4, The Associated General Contractors of America, Inc., Oklahoma Chapter — Builder’s Division, Etc. v. Laborers International Union of North America Local 612, Etc. (Em. App., Nov. 28, 1973).

Thus, while the record of the trial court’s judgment of September 28, 1973, has not yet been brought up directly as part of the instant appeal, it already has been placed before us in connection with the related application in the alternative for a writ of mandamus. To now close our eyes to this related record when on its face, in the light of our prior decision, our lack of jurisdiction of the present appeal is revealed would be to invite further processing and briefing without purpose and to reestablish or prolong unseemly simultaneous appellate reviews of the same case by different tribunals without justification.

In Associated Gen. Con. of A., Inc., Okl., Etc. v. Laborers Int. U., (No. 10-2) supra, 476 F.2d at 1391, limiting our attention to questions arising under the Economic Stabilization Act of which we had jurisdiction, it was stated among other things:

“. . . Apparently Local 612 has resisted affiliation with the District Council of the International Union, at least insofar as preserving its practices of directly bargaining with AGC. This is a problem not before us. The Local and AGC formally signed a collective bargaining agreement on March 13, 1972. International claimed before the trial court that this collective bargaining agreement was invalid because the Local was not represented by a proper bargaining agent. The trial court did not resolve this issue and we do not reach it here.” blan.ce of a conflict with TECA. The best solution which we can contrive is to get the entire question of contract validity back into the district court. We affirm the judgment insofar as it upholds the trusteeship and dissolves the preliminary injunction. On the issue of the validity of the March 13 contract we reverse and remand the case for further proceedings in the light of both this opinion and the TECA opinion.”

It was only because the trial court apart from the problem last above mentioned based its decision upon rejection of the bargaining agreement by administrative agencies created in pursuance of, and relying upon, the Stabilization Act, as amended, that we exercised jurisdiction of the prior appeal. Holding that the administrative action in question was not authorized by the Stabilization Act, executive orders, or regulations thereunder, we remanded the case to the trial court for further proceedings “not inconsistent with this opinion.”

A reading of the subsequent opinion and judgment of the trial court renders it perfectly clear that its further proceedings were in harmony with our decision, but consistent therewith led determinatively to consideration of an issue not involving the Stabilization Act and one which we had expressly declined to rule upon in the earlier appeal —-authority of purported bargaining agents to enter into the March 13, 1972, agreement. As to this issue it further appears obvious that any appeal would be within the exclusive jurisdiction of the United States Court of Appeals for the Tenth Circuit.

To avoid further concern on the part of the latter court with respect to possible conflicts, and because we have a continuing duty to take cognizance of jurisdictional limitations upon our own motion when a question occurs, we consider prompt dismissal of the instant appeal for lack of jurisdiction on the part of this court essential to proper judicial administration.

The jurisdiction of the Temporary Emergency Court of Appeals is confined by § 211(b)(2) of the Economic Stabilization Act, as amended, to “cases and controversies arising under this title or under regulations or orders issued thereunder.” As we said in United States v. Cooper, 482 F.2d 1393, 1398 (Em.App. 1973), “courts of special jurisdiction should strictly construe their statutory grants of jurisdiction.” See also City of Groton, Etc. v. Fed. Power Comm., et al„ 487 F.2d 927 (Em.App., 1973), and Associated Gen. Con. of A., Inc., Okl., Etc. v. Laborers Int. U., (No. 10-2) supra, 476 F.2d at 1402. As to the present appeal it is clear that this court has no jurisdiction. Accordingly the appeal must be dismissed.

It is so ordered.

      . On Nov. 21, 1973, the Court of Appeals for the Tenth Circuit filed its opinion in Gordon v. Laborers International Union of North America, 490 F.2d 133 (10th Cir. 1973), dealing with the collective bargaining phases of the controversy which we otherwise considered in Associated Gen. Con. of A., Inc., Okl., Etc. v. Laborers Int. U., (No. 10-2) supra. The court of appeals in concluding its circumspect and well-considered opinion stated:
      “We believe that good judicial administration mandates that we avoid any sem-

      . The judgment of the trial court now appealed from held that there was no valid or existing contract between plaintiff and the Union, and none existed to be approved by the Laborers National Craft Board and Construction Stabilization Committee since it “never became a valid existing contract because it was not entered into by competent or authorized bargaining agents of Local 612

      . In Gordon v. Laborers International Union of North America, supra, the Court of Appeals stated:
      “We find ourselves in an anomalous situation. Appeals have been taken to both TECA and the Tenth Circuit from the same district court judgment. Both appeals deal with the same subject, the validity of the March 13 contract. In TECA the question was compliance with the economic Stabilization Act. In the Tenth Circuit the question is the authority of Local 612 to make the contract in violation of the rules and policies of the parent union. The Tenth Circuit situation is complicated by the fact that the contractors have not appeared and the record is so confusing that we are unable to say whether Local 612 is before us. Although we have grave doubt as to the validity of the contract in the circumstances shown by the record before us, we are reluctant to decide the issue.
      “A strange situation exists when two different appellate courts are reviewing the same district court judgment Apparently there has been no effort to obtain certiorari review of the TECA action and its decision is the law of the case. An intolerable situation would result if we came out with a different disposition than did TECA.”


author: MANSFIELD, Circuit Judge:

text:
    UNITED STATES of America, Appellee, v. Alfredo GARCILASO de la VEGA, Defendant-Appellant.
    No. 461, Docket 73-2203.
    United States Court of Appeals, Second Circuit.
    Argued Nov. 21, 1973.
    Decided Jan. 9, 1974.

      Nancy Rosner, New York City, for defendant-appellant.
    Daniel H. Murphy, II, Asst. U. S. Atty. (Paul J. Curran, U. S. Atty., S. D. N. Y., S. Andrew Schaffer, Asst. U. S. Atty., New York City, of counsel), for appellee.
    Before LUMBARD, MANSFIELD and MULLIGAN, Circuit Judges.
   MANSFIELD, Circuit Judge:

Following a jury trial, appellant Gar-cilaso was convicted in June, 1973, on a one-count indictment charging him with willfully subscribing under penalties of perjury to an individual income tax return for the year 1966 that he knew to be materially false and incomplete in violation of 26 U.S.C. § 7206(l). The return, which reported his personal income for that year as $2,731, was allegedly false in that it failed to record income that appellant had derived from his narcotics business that year. Garcilaso urges that Judge Ward erred in refusing after a pretrial hearing to suppress the testimony of government witnesses claimed to have been the fruit of unlawful wiretaps and in admitting this testimony at trial. He also argues that the prosecutor impermissibly commented at trial on his exercise of his privilege against self-incrimination and that the evidence as a whole was insufficient to sustain the conviction. Finding these arguments to miss their mark, we affirm.

The story begins in 1966. During September of that year the eyes and ears of a joint federal and state law enforcement team were following the marijuana trafficking of one Juan Santos. On September 2 a New York State Supreme Court order was obtained which authorized the New York City police to tap a telephone at Santos’ home. On the basis of an intercepted call between Santos and a would-be buyer, George Ju-sino, the police on September 28 followed Santos to his source, which turned out to be appellant’s apartment. Santos was arrested when he emerged from the apartment carrying a suitcase full of marijuana. The police proceeded to appellant’s apartment where they arrested him and found a further supply of marijuana.

The results of the evening’s work of the joint team were mixed. Santos pled guilty and received a three and a half year sentence. The prosecution against Garcilaso was dismissed after the evidence of marijuana found in his apartment was ordered suppressed as the fruit of the search of his apartment which, being warrantless, violated his constitutional rights.

Some six years later the indictment in the present case was returned against Garcilaso charging that he knowingly filed a false and incomplete tax return for the year 1966. Garcilaso had reported his principal business activity as the sale of jewelry and declared his 1966 net profit from that activity as $2,731, which was the only income he reported. The government contended that Garcila-so had failed to report additional income from narcotic sales made by him in 1966.

Prior to trial appellant moved to suppress all evidence derived from the con-cededly unlawful wiretap of Santos’ phone and the 1966 search and seizure or, in the alternative, to dismiss the indictment itself as the product of these unlawful acts. The government responded that although it would be unable to produce either the tapes or the logs of the wiretap on Santos’ phone because they had been lost or destroyed, it proposed to prove that its income tax investigation and indictment of appellant were derived from a wholly independent source. Thereupon the government introduced Internal Revenue Service chronologs, buttressed by the testimony of a revenue agent, revealing that in 1969 a confidential informer had approached the Service with information of Garcilaso’s narcotics dealings and arrest, which was the moving force behind its tax investigation. Although the government had communicated with the informant in 1967 regarding a marijuana tax assessment that might be made against appellant, that case was dropped and it was not until 1969 that the informant approached different revenue agents on her own and furnished the information leading to the present income tax case against Garcilaso. This proof was corroborated by testimony of a revenue agent found credible by the trial judge to the effect that it was not until late 1970, after they had gathered the evidence used to obtain the instant indictment against Garcilaso, that they learned of the illegal wiretap which had led to the 1966 arrests. The court, crediting the government’s evidence, denied the motion to suppress.

At trial the evidence which Garcilaso had sought to suppress was admitted. Juan Santos testified regarding his regular payments to appellant for narcotics purchased in 1966 and a New York City detective corroborated his testimony that some 25 pounds of marijuana seized from Santos on September 28, 1966, had been furnished by appellant. Appellant urges that this testimony should have been suppressed as tainted by the wiretap that led to the 1966 arrests. We disagree. The evidence established that the illegal wiretap was of Santos’ phone, not that of appellant, and that the arrest of Santos and appellant resulted from the interception of a call on that line between Santos and Jusino, and not from a call to which appellant was a party. On these facts appellant lacks standing to object to the illegal wiretap and the use of its fruits. Alderman v. United States, 394 U.S. 165, 89 S.Ct. 961, 22 L.Ed.2d 176 (1969). There was some testimony to the effect that, at some time during the monitoring of Santos’ phone, calls may have been overheard between Santos and an otherwise unidentified male talking from a phone listed under the name of the appellant’s common law wife. Whatever the value of this testimony as a general matter in establishing standing, it can be of no avail in this case, for the court specifically found that it was the Jusino call that led to appellant’s arrest. That finding cannot be set aside as clearly erroneous, which is the standard by which we are governed. See United States v. Schipani, 414 F.2d 1262 (2d Cir. 1969), cert. denied, 397 U.S. 922, 90 S.Ct. 902, 25 L.Ed.2d 102 (1970).

Notwithstanding the foregoing proof appellant urges that since the illegal wiretaps have been rendered unavailable to him by their loss or destruction, suppression of evidence allegedly derived from them is mandated by our recent decision in United States v. Huss, 482 F.2d 38 (2d Cir. 1973). We disagree. In Huss we ruled that under the “extraordinary circumstances” of that case, 482 F.2d at 46, which were described as sui generis,” 482 F.2d at 51, the government had failed to sustain its burden of proving that the challenged evidence was derived from an independent, untainted source when the government was unable to produce the tapes or transcripts of the illegal wiretap. Appellant would have us blindly apply this holding as a wooden formula to the present case because the government cannot here produce the tapes of the Santos wiretap. His argument must fail. As we made clear in Huss, 482 F.2d at 48, this court was not there establishing a per se rule in favor of the suppression of evidence whenever the government is unable to produce wiretaps. The wisdom of eschewing such an approach is highlighted by the very differences between Huss, which presented a set of aggravating circumstances bordering on governmental misconduct, and the present case, which does not. In Huss numerous conversations of the challenging party had been overheard on the FBI wiretap. The destruction of the tapes of these conversations appeared suspicious because the FBI had elsewhere made the representation that it was their policy to preserve such tapes and the federal wiretap statute mandated that they be warehoused. Most damaging to the government’s cause, moreover, was the improbable claim of an independent source, which was thoroughly undercut by an admission of the government’s principal witness that wiretaps were the real source of the evidence and leads. The failure to produce the tapes in Huss, if countenanced by this court, would have served only to insulate from scrutiny a story that had already become the object of well-founded doubts.

The present case does not share these essential Huss hallmarks. The government has in this case, unlike Huss, made a creditable showing of an independent, untainted source. The evidence that an unidentified male voice participating in some conversations may have been appellant was tenuous at best. The Internal Revenue Service chronologs and the testimony of the revenue agent attest to the fact that the investigation of the appellant’s tax return was prompted by information supplied by a confidential informer and that Santos was interviewed by two revenue agents before they knew of the 1966 wiretap on his phone. Moreover, the wiretaps were conducted not by the federal government but by' the New York City police under a state law that did not require the preservation of such tapes.® Thus we do not face the destruction of tapes under the suspicious circumstances that characterized Huss. In the context of this case we decline to penalize the federal government for the loss of tapes held by a state agency six years before, the government having made a strong showing of an independent, untainted source.

Garcilaso also argues that the prosecutor impermissibly commented on his exercise of his privilege against self-incrimination. The argument seems to be that the prosecutor referred to Garcilaso’s failure to report that marijuana sales were the source of additional income. The passing elliptical reference occurred during the prosecutor’s summation. The theory of the government’s case, as propounded by the prosecutor, was that Garcilaso violated § 7206(1) by his failure to report his additional income, not by his failure to report that narcotic sales were the source of this additional income. In proving its ease against Garcilaso the government was required to establish the existence of income from narcotic sales in order to show that he had unreported income. The prosecutor referred to this evidence merely as probative of an essential element of the government’s case, the existence of unreported income. A taxpayer’s intentional nondisclosure of income is not excused because it is derived from criminal activities. See United States v. Knox, 396 U.S. 77, 82, 90 S.Ct. 363, 24 L.Ed.2d 275 (1969). In any event the charge of the trial judge made it clear to the jury that it was the failure to report income, not the failure to report the source of the income, that constituted the violation of § 7206(1):

“Nevertheless, if you find or have any reasonable doubt that the defendant correctly declared the total amount of his income from all of his business transactions and activities, defendant’s failure to declare that he was engaged in an illegal business and his failure to name that business is not by itself a material misstatement upon which you can find the defendant guilty.”

Finally, we find no merit in appellant’s argument that the evidence in toto was insufficient to establish that he made more income than he reported. The proof of appellant’s proceeds from narcotic sales and of his disbursements for rent and repairs makes it abundantly clear that his tax return omitted a substantial amount of his actual income. The conviction is affirmed.

      . The section provides that any person who
      “[w]illfully makes and subscribes any return, statement, or other document, -which contains or is verified by a written declaration that it is made under the penalties of perjury, and which he does not believe to be true and correct as to every material matter ...” shall be guilty of a felony.

      . The government has conceded the illegality of the wiretap under Berger v. New York, 388 U.S. 41, 87 S.Ct. 1873, 18 L.Ed.2d 1040 (1967).

      . Because we conclude that appellant’s arrest did not result from any violation of appellant’s Fourth Amendment rights, we need not specifically address ourselves to the other obstacles that lay in the way of appellant’s motion to suppress. Since the trial court further found that the tax case arose from a source that was independent of the 1966 wiretap, even if the arrest had resulted from a violation of appellant’s rights, the identification of witnesses against the appellant in 1969 and 1970 did not result from an “exploitation” of that illegality. See Wong Sun v. United States, 371 U.S. 471, 487-488, 83 S.Ct. 407, 9 L.Ed.2d 441 (1963), which also disposes of the argument that any testimony concerning the 1966 arrest, no matter how obtained, is tainted because the arrest itself would not have occurred but for the illegal wiretap. See also United States v. Friedland, 441 F.2d 855, 860 (2d Cir.), cert. denied, 404 U.S. 867, 92 S.Ct. 143, 30 L.Ed. 2d 111 (1971).

      . Section 802 of Title III of the Omnibus Crime Control and Safe Streets Act of 1968, 18 U.S.C. § 2518(8) (a), provides that such records shall not be destroyed except by order of the court and that they shall in any event be kept for 10 years.

      . The appellant made some effort at the suppression hearing to refute the government’s proof of an independent source, but with no success. He pointed to the fact that the Internal Revenue Service chronologs indicated that the Service approached the confidential informer in 1967, two years before the informer is alleged to have spontaneously contacted the Service. The prosecutor explained this apparent discrepancy to the court’s satisfaction. In 1967 the government had considered bringing a marijuana tax assessment case against Garcilaso and in this regard communicated with the informer. The government files indicate that this investigation was dropped — probably because the marijuana had been illegally seized in the first instance. In 1969 the informer came to different agents on her own and gave them information that led to their initiation of the income tax case against appellant.

      . The predecessor of the New York warehousing provision, CPL § 700.55, was not enacted until May 26, 1969, effective June 25, 1969.

      . As a corollary to his Huss argument, the appellant maintains that the trial court erred in compelling Santos to testify over a Fourth Amendment objection. At first, Santos balked at testifying; the court granted him immunity and he then went on to testify. Even if Santos’ initial reticence was prompted by a concern for his Fourth Amendment rights — and it is not at all clear that it was — Garcilaso would have no standing to object to the introduction of the testimony. Alderman v. United States, 394 U.S. 165, 89 S.Ct. 961, 22 L.Ed.2d 176 (1969).

      . In speaking of the four elements of an offense under § 7206(1), the prosecutor said: “Third element. It is not complete. We know it is not complete. Why? Because Mrs. Mann talked about the money the man had. The other sources of money he had. And Detective Delgado and Juan Santos talked about where he got that money, what hind of business he was in. Makes it incomplete.” (Emphasis added).


author: CLARK, Circuit Judge:

text:
    Eugene J. REDD, #67646, Petitioner-Appellee, v. STATE OF LOUISIANA ex rel. C. Murray HENDERSON, Warden, Louisiana State Penitentiary, Respondent-Appellant.
    No. 73-2808
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Dec. 20, 1973.
    Shirley G. Wimberly, Jr., Asst. Dist. Atty., Parish of Orleans, Leroy A. Hart-ley, Sp. Counsel, Asst, to Atty. Gen., New Orleans, La., for respondent-appellant.
    E. Howard McCaleb, III, New Orleans, La., (Court-appointed), for petitioner-ap-pellee.
    Before WISDOM, AINSWORTH and CLARK, Circuit Judges.

       Rule 18, 5th Cir.; see Isbell Enterprises, Inc. v. Citizens Casualty Co. of N. Y., 5th Cir. 1970, 431 F.2d 409, Part I.

   CLARK, Circuit Judge:

The State of Louisiana appeals from the District Court’s decision to grant Eugene Redd’s petition for habeas corpus relief. Redd was incarcerated pursuant to a Louisiana conviction for armed robbery. In February of 1968 Martin Mallet, a bar owner, was robbed of one hundred dollars at his place of business. Redd was arrested for the larceny two months later, solely because he was positively identified as the culprit by Lionel Green, a customer who had witnessed the crime. Redd’s jury trial resulted in a verdict of guilty. After his motion for a new trial was denied, Redd appealed and the Louisiana Supreme Court affirmed his conviction and twenty-five year sentence. State v. Redd, 254 La. 1062, 229 So.2d 99 (1970).

In a subsequent habeas action that was denied by the Louisiana Supreme Court, 260 La. 405, 256 So.2d 290 (1972), and likewise in his petition before the court below, Redd contended that: (1) the basic fairness of his trial was prejudicially compromised when Green was permitted to change his testimony at a post-trial hearing, (2) the trial court’s improper denial of his motion for a new trial in the face of cogent proof of Green’s tainted testimony abridged his constitutional rights to confrontation of adverse witnesses and due process, and (3) he was deprived of effective assistance of counsel when his court-appointed attorney failed to pursue valid points of error on direct appeal.

At an evidentiary hearing before a United States Magistrate, Redd testified that two police detectives promised him the armed robbery charge would be dropped if other patrons of Mallet’s bar on the night of the felony were unable to identify him. On the basis of this pledge, Redd was persuaded, so he claims, to participate in a lineup without the presence of his court-appointed counsel. His photograph was taken during the lineup and shown to witnesses who subsequently testified at his trial.

Without reaching the grounds specified in the habeas petition, the Magistrate concluded on the basis of testimony adduced at the hearing, that Redd was entitled to a new trial because he had not intelligently waived his constitutional right to assistance of counsel at the post-indictment lineup. Upon an independent review of the record of the hearing and the magistrate’s recommendation, the district judge granted the petition, adopted the magistrate’s findings and opinion, vacated and set aside Redd’s conviction, ruled that in-court identifications of Redd by witnesses who were shown the lineup photograph must be excluded at his new trial, ordered Redd’s release from custody should the state fail to re-try him within a reasonable time and refused to grant the state’s motion for stay of the order pending appeal.

The district court’s action in this cause must be vacated because the record does not reveal that Redd has ever raised the lineup-identification issue in any of the antecedent proceedings before the state courts.2 If the district court should determine that this is indeed the fact, then it was error to grant the writ on the basis of a claim not specified in the petition and not yet exhausted in any Louisiana forum. See Picard v. Connor, 404 U.S. 270, 92 S.Ct. 509, 30 L.Ed.2d 438 (1971). It is the well established rule in this Circuit that federal habeas corpus relief may not properly be granted until all issues raised by the petitioner have been exhausted in the state courts. Hargrett v. Wainwright, 474 F.2d 987 (5th Cir. 1973); Green v. Beto, 460 F.2d 322 (5th Cir. 1972); Johnson v. Wainwright, 453 F.2d 385 (5th Cir. 1971); Harrison v. Wainwright, 424 F. 2d 633 (5th Cir. 1970).

The writ of habeas corpus is vacated and the cause is remanded to the district court with directions to determine whether any records of the prior state proceedings disclose that the ground relied upon has been exhausted. Redd did not raise the lineup-identification question in his present petition. Should the court below determine that exhaustion is required. Redd must be accorded the alternative of electing to proceed further in the court below solely on the claims that he has previously exhausted.

Vacated and remanded, with directions.

      . In a recently reported decision on an issue as yet unresolved in this Circuit, the Sixth Circuit held that the practice of holding an evidentiary hearing before a United States Magistrate on points of error raised in a ha-beas petition expands the Magistrate’s statutory jurisdiction beyond that conferred by Congress in the Federal Magistrate’s Act, 28 U.S.C. §§ 631-39, and does not accord the habeas applicant, either in form or in substance, a hearing before, or Fed.R.Civ.P. 52 findings of fact by an Article III judge. Wedding v. Wingo, 483 F.2d 1131, 1137 n. 3 (6th Cir. 1973). We neither reach nor intimate a ruling on this issue on this appeal since the matter must be remanded on other grounds.

      . We expressly decline to reach or rule upon the court’s action in failing to determine whether the state record disclosed that the tainted in-court identifications were supported and admissible on the basis of an observation or source independent of the admittedly unconstitutional lineup. See United States v. Wade, 388 U.S. 218, 87 S.Ct. 1926, 1939, 1940, 18 L.Ed.2d 1149 (1967); Gilbert v. California, 388 U.S. 263, 87 S.Ct. 1951, 1955-1957, 18 L.Ed.2d 1178 (1967). Clearly Green’s identification of Redd at the time of arrest, if substantiated, could constitute a sufficiently independent origin unrelated to the arguendo unconstitutional post-indictment lineup, to preclude application of the Wade and Gilbert per se exclusionary rule. Perry v. Texas, 456 F.2d 879 (5th Cir. 1972), cert. denied, 409 U.S. 916, 93 S.Ct. 248, 34 L.Ed.2d 178 (1973); Fitts v. United States, 406 F.2d 518 (5th Cir. 1969), cert. denied, 400 U.S. 842, 91 S.Ct. 84, 27 L.Ed.2d 77 (1970); see Powell v. Wainwright, 460 F.2d 1056 (5th Cir. 1972); Ward v. Wainwright, 450 F.2d 409 (5th Cir. 1971).

      . But cf. Moye v. Georgia, 330 F.Supp. 290 (N.D.Ga.1971), aff’d sub nom. Moye v. Highsmith, 460 F.2d 1388 (5th Cir. 1973). This is to be distinguished from the situation in which a court denies the writ as to exhausted grounds and dismisses the petition without prejudice as to unexhausted grounds. McDonald v. Wainwright, 466 F.2d 1136 (5th Cir. 1972).


text:
    INTERNATIONAL UNION OF ELECTRICAL, RADIO AND MACHINE WORKERS, AFL-CIO, etc., Plaintiff-Appellant, v. PEERLESS PRESSED METAL CORPORATION, Defendant-Appellee.
    No. 72-1377.
    United States Court of Appeals, First Circuit.
    April 9, 1973.

      Michael A. Feinberg, Boston, Mass., with whom Flamm, Mason & Paven, Boston, Mass., was on brief, for appellant.
    Julius Kirie, Boston, Mass., for appel-lee.
    Before COFFIN, Chief Judge, and ALDRICH and MeENTEE, Circuit Judges.
   PER CURIAM.

In Peerless Pressed Metal Corp. v. IUE, 1 Cir., 1971, 451 F.2d 19, we must necessarily have ruled, by requiring arbitration of the issue between the parties, that a decision in favor of the union would not violate the collective bargaining contract on its face. The district court’s refusal to enforce the award in its favor, from which refusal the union now appeals, was based on a contrary view of the proper construction of the contract. In the light of Peerless, this was no longer a permissible conclusion. The only question before the district court was whether the arbitrator’s choice was, by reason of some circumstance outside the contract itself, “so palpably faulty that no judge, or group of judges, could ever conceivably have made such a ruling.” Safeway Stores v. Bakery Workers Local 111, 5 Cir., 1968, 390 F.2d 79, 82. The arbitrator’s careful decision could not be so viewed.

No more supportable is appellee’s claim that the arbitrator, in clarifying his award of reinstatement by explicitly stating that the grievant should be made whole for any loss of pay, exceeded his authority under the submission agreement. The fact that the agreement was silent as to remedy cannot under these circumstances be of assistance to appellee. Newark Wire Cloth Co. v. Steelworkers, D.N.J., 1972, 339 F.Supp. 1207.

We consider the intransigence of appellee in resisting enforcement of the arbitration award, made after our opinion in Peerless, as justifying an award of attorney’s fees. The award of such fees will be confined to services in connection with proceedings in the district court. We do not say, as a matter of law, that a party’s ability to persuade a district court to rule in his favor necessarily insulates him against a fee award. In this case, however, we recognize that our statement in Peerless that the arbitrator “may look to the ‘law of the shop’ and to the negotiations which led to the present agreement,” 451 F.2d at 21, may have misled the court into giving an overrestrictive interpretation of our opinion. Since appellee prevailed below under these circumstances we do not think it fair to award counsel fees against it on this appeal.

The judgment is reversed; appellant is directed to submit a detailed statement of services rendered in connection with the district court proceedings.


author: COFFIN, Chief Judge.

text:
    NATIONAL LABOR RELATIONS BOARD, Petitioner, v. DISTRICT LODGE NO. 99 and Lodge No. 2139, both Affiliated with International Association of Machinists and Aerospace Workers, AFL-CIO, Respondent.
    No. 73-1192.
    United States Court of Appeals, First Circuit.
    Heard Dec. 4, 1973.
    Decided Jan. 3, 1974.

      William R. Stewart, Atty. with whom Peter G. Nash, Gen. Coun., John S. Irving, Deputy Gen. Coun., Patrick Hardin, Associate Gen. Coun., Elliott Moore, Deputy Associate Gen. Coun., and John D. Burgoyne, Atty., Washington, D. C., were on brief, for petitioner.
    Bernard Dunau, Washington, D. C., with whom Plato E. Papps, Louis P. Poulton, Washington, D. C., and Edward C. Dalton, Jr., Falmouth, Me., were on brief, for respondent.
    Before COFFIN, Chief Judge, ALD-RICH and McENTEE, Circuit Judges.
   COFFIN, Chief Judge.

In this action, brought pursuant to § 10(e) of the National Labor Relations Act, 29 U.S.C. § 141 et seq. (the Act), the National Labor Relations Board seeks enforcement of its order issued January 11, 1972, 194 N.L.R.B. 938, against District Lodge No. 2139 (the union), affiliated with the International Association of Machinists and Aerospace Workers, AFL-CIO (IAM), requiring the union to cease and desist from coercing employees in the exercise of their § 7 rights, and to take certain affirmative steps to eliminate specific unfair labor practices.

When the plant-wide contract between the union and the employer expired on October, 26, 1969, the union called a strike .in support of its demands for a new contract. During the strike, five members of the union notified the union that they were resigning, and thereupon crossed the picket line and returned to work. Several weeks later, the union’s disciplinary committee found these five employees guilty of violating a provision in the IAM’s constitution, prohibiting members from accepting employment in an establishment against which a lawful strike was in progress, and, inter alia, “suspended” them “from any and all Union activities for a period of five (5) years.” The Board accepted the conclusion of the Administrative Law Judge that the union violated § 8(b)(1)(A) of the Act “by barring employees from membership in the Local for a period of five years.” Thus, the question before us is: may a union bar membership to employees who have engaged in strikebreaking after having resigned from the union?

Preliminarily, we note that, although the issue was not addressed by the Administrative Law Judge or by the Board in its original disposition, in its brief the Board distinguished between the “suspension” of a member from union activities, as in the present case, and the “expulsion” of a member from the union. The former act, according to the Board, implies that the union still has power over the wayward member, and is therefore an unfair labor practice. The act of expulsion, however, merely ratifies the former member’s severing of his relationship with the union and, according to the Board, would be permissible under the Board’s recent decision in Pattern Makers Association (Lietzau Pattern Company), 199 N.L.R.B. 14 (1972). Yet because the Board made no such distinction in its disposition of the present case, finding simply that the union had barred the employees from membership, it would seem that Lietzau Pattern Company would control. We need not rely exclusively upon Lietzau, however, because we think that the policy of allowing a union to control access to its membership is central to the relationship between the union and all employees.

Several recent Supreme Court decisions have exposed the delicate relationship existing between § 7 of the Act, protecting the right of employees to “refrain from” concerted activities, and the proviso of § 8(b)(1)(A), preserving the right of a union “to prescribe its own rules with respect to the acquisition or retention of membership therein.” In N.L.R.B. v. Allis-Chalmers Manufacturing Company, 388 U.S. 175, 87 S.Ct. 2001, 18 L.Ed.2d 1123 (1967), the Court held that the union did not commit an unfair labor practice in fining its members who violated a union rule by working during an authorized strike, and seeking court enforcement of the fine. Yet in N.L.R.B. v. Granite State Joint Board, 409 U.S. 213, 93 S.Ct. 385, 34 L. Ed.2d 422 (1972) and Booster Lodge No. 405, I.A.M. v. N.L.R.B., 412 U.S. 84, 93 S.Ct. 1961, 36 L.Ed.2d 764 (1973), the Court held that the union committed an unfair labor practice in seeking court enforcement of a fine against an employee who lawfully resigned from the union before crossing the picket line. It would seem, therefore, that as to judicial enforcement of a union penalty, the Court has adhered to a contract approach, viewing the act of resignation as a termination of the relationship between the union and the employee and an end to the union’s court enforced power over the employee. “[W]hen there is a lawful dissolution of a union-member relation, the union has no more control over the former member than it has over the man in the street.” N.L.R.B. v. Granite State, supra, 409 U.S. at 217, 93 S.Ct. at 387.

In the present case, however, the union sought to penalize its former members, not by way of a court enforced penalty, but, rather, by debarment from the union itself. We hold that this was not an unfair labor practice. Clearly, the proviso of § 8(b)(1)(A) extends union control even over “the man in the street” to the extent that it preserves the union’s right to prescribe rules for acquiring membership. N.L.R.B. v. Allis-Chalmers, supra, 388 U.S. at 198, 87 S.Ct. 2001 (White, J., concurring); Stone v. Local 29, Int’l Brotherhood of Boilermakers, 262 F.Supp. 961, 963 (D. Mass.1967). There are, of course, certain limits to a union’s power to grant or withhold membership: a union cannot, for example, discriminate in violation of Title VII of the Civil Rights Act of 1964, 42 U.S.C. § 2000(e)-2(c) (1). Yet rarely have courts interfered in the internal membership policies of unions. At most, courts have simply refrained from enforcing union rules, or have prohibited employers from enforcing those rules, still allowing the union to enforce its rules under threat of expulsion from membership. It has been held that a union may expel a member for filing a decertification petition, Price v. N.L.R. B., 373 F.2d 443 (9th Cir. 1967), cert. denied 392 U.S. 904, 88 S.Ct. 2051, 20 L.Ed.2d 1363, although the union may not seek a court enforced fine against the same employee. And, in Local 1255, Int’l Association of Machinists and Aerospace Workers v. N.L.R.B., the Fifth Circuit held that a union may condition readmission to membership upon the payment of a disciplinary fine for post-resignation strikebreaking, 456 F.2d 1214, 1217 (5th Cir. 1972).

Thus, while § 7 may protect an employee from union control enforced by the courts or employers, the proviso of § 8(b) (1) (A) preserves a union’s most basic power: that of granting or withholding membership. And it is this power which extends over employees, such as those in the present case, who have resigned from membership. Since; however, variations and subtleties may occur in this area, as for example, if the attempted resignation did not, or could not, comply with the union rules, we make it clear that we are deciding nothing but the bare question posed in the second paragraph of this opinion, without overtones.

That part of the Board’s order prohibiting debarment of the strikebreaker-re-signers from membership for a period of five years, and requiring notice to that effect, will not be enforced.

       Subsequent to the Supreme Court’s decision in Booster Lodge, infra, the union informed the Board that it would comply with that part of the Order which was addressed to the imposition of court-collectible fines against employees for engaging in post-resignation strikebreaking. The union also decided to dismiss its suit against certain other employees for preresignation strikebreaking, and against members who engaged in strikebreaking without having resigned.