text:
    TERKELSEN MACH. CO. v. PIERCE WRAPPING MACH. CO.
    (Circuit Court of Appeals, First Circuit.
    May 5, 1925.)
    No. 1800.
    1. Patents <§=48 — Claims for wrapping for annular object held invalid.
    Claims for wrapping consisting of continuous strip of paper wound spirally about an annular object and strip of tape adhesively applied to folds of first strip to hold them in fixed relation, held invalid as claiming distinct article, a wrapping, which could not be'manufactured or exist apart from object wrapped'.
    2. Patents <§=>46 — Useless articles are not subject of patent.
    Useless articles are not subject of patent.
    3. Patents <§=328 — No. 1,153,704, for wrapping for annular objects, invalid.
    Pierce -patent, No. 1,153,704, September 14, 1915, claims 1 and 2, for wrapping for annular objects, held not to involve invention.
    4. Patents <§=328 — No. 1,158,278, for machine for wrapping annular objects spirally and applying adhesive tape transversely, held not infringed.
    Pierce patent, No. 1,158,278, claims 17, 20-22, for machine for wrapping annular objects spirally and for applying an adhesive tape transversely of spiral folds having revolving shuttle carrying roll of paper, held not infringed.
    5. Patents <§=328 — Machine for wrapping annular object spirally and applying adhesive tape transversely held not to involve invention.
    Machine for wrapping annular object spirally and for applying adhesive tape transversely of spiral folds, covered by Pierce patent No. 1,158,278, claims 17, 20-22, held not to involve invention.
    6. Patents <@=>328 — No 1,238,318, for device for pressing together sides of tire casing while being spirally wrapped, held not infringed.
    Midgley patent, No. 1,238,318, claim 6, for device for closing beads, or pressing together two edges of tire casing during process of spiral wrapping, held not entitled to broa'd construction, in view of prior art, and not infringed.
    7. Patents <@=>328 — Wrapping device for annular objects, with automatically adjustable supporting and alining members, held not to involve invention.
    Wrapping machine for annular objects, having means for holding and rotating article and shuttle mechanism for applying spiral wrapping with differential adjustment to maintain advanced relation between shuttle and article, and having automatically adjustable alining member, covered by Pierce patent, No. 1,263,-923, claims 1, 3, 15, 16, held to involve only mechanical skill.
    8. Patents <@=>328 — No. 1,263,923, consisting of wrapping machine for annular objects with automatically adjustable alining and supporting device, not infringed.
    Pierce patent, No. 1,263,923, for wrapping machine for annular objects having means for holding and rotating object and shuttle mechanism for spiral wrapping with automatically adjustable alining and supporting members, if involving invention, held not infringed.
    9. Patents <@=>328 — Device for unitary control of tire wrapping .machine held not to involve invention.
    Device for connecting up control mechanism of tire wrapping machine resulting in unitary control, covered by Pierce patent, No. 1,432,034, claim 1, held not to involve invention.
    10. Patents <@=>328 — No. 1,432,034, for device for unitary contrbl of tire wrapping machine, not infringed.
    Pierce patent, No. 1,432,034, claim 1, for device for unitary control of tire wrapping machine, if valid, held not infringed.
    Appeal from the District Court of the United States for the District of Massachusetts; Clarence Hale, Judge.
    Suit by the Pierce Wrapping Machine Company against the Terkelsen Machine Company. Decree for plaintiff (300 P. 147), and defendant appeals.
    Reversed and remanded, with directions to dismiss.
    George P. Dike and Henry R. Ashton, both of Boston, Mass. (MacLeod, Calver, Copeland & Dike, of Boston, Mass., on the brief), for appellant.
    Albert L. Ely, of Akron, Ohio, and Harrison F. Lyman, of Boston, Mass. (Fish, Richardson & Neave, of New York City, on the brief), for appellee.
    Before BINGHAM, JOHNSON, and AN--DEES ON, Circuit Judges.
   BINGHAM, Circuit Judge.

This is a suit in equity brought in the federal District Court for Massachusetts by the Pierce Wrapping Machine Company, an Illinois corporation, against the Terkelsen Machine Company, a Massachusetts corporation, for infringement of letters patent No. 1,153,704, applied for March 27, 1913, issued September.14,1915, to Frank M. Pierce for a wrapping, and now owned by the plaintiff; for infringement of letters patent No. 1,158,278, applied for August 7, 1911, .issued October 26, 1915, to plaintiff as assignee of William B. and Frank M. Pierce, for a machine for wrapping annular objects such as coils of wire, etc.; for infringement of letters patent No. 1,238,318, applied for July 17,1913, issued August 28, 1917, to Morgan & Wright, assignee of Thomas Midgley, and now owned by the plaintiff; for infringement of letters patent No. 1,263,923, applied for October 3, 1914, issued April 23, 1918, to the plaintiff as assignee of Frank M. Pierce, for a wrapping machine; and for infringement of letters patent No. 1,432,034, applied for September 15,1920, issued October 17, 1922, to Paul Pierce and now owned by the plaintiff.

The claims in issue under patent No. 1,-153,704 are Nos. 1 and 2:

“1. A wrapping, comprising a continuous strip wound spirally and transversely upon an article of ring form, and a wrapping strip applied adhesively to the folds of said spiral strip to hold the same in fixed relation.
“2. A wrapping comprising a continuous strip wound spirally and transversely in overlapped relation upon an article of ring form, and an adhesive wrapping strip applied to the folds of said spiral strip peripherally of the article wrapped.”

The claims in issue in letters patent No. 1,158,278 are Nos. 17, 20, 21, and 22:

“17. In a machine for wrapping annular objects, feed rolls for supporting and rotating said objects, an annular shuttle rotatable through the eye thereof and having wrapping material loosely contained therein, folding, guiding and tensioning mechanism acting to fold and direct the wrapping material spirally around the article wrapped, and means operated in part by the rotation of the object wrapped for applying an adhesive tape transversely of the wrapping as the wrapping progresses.”
“20. In a tire wrapping machine, a shuttle adapted to apply a spiral wrapping on a tire, means for applying another wrapping on the outer periphery of the spirally wrapped tire, parallel to the axis of said first wrapping, and mechanism forming a part of said machine for holding said tire in upright position and adjustable for tires of different size.
“21. In a wrapping machine for applying a helical wrapper to an annular shaped article, means for applying another wrapper on the outer periphery of the article on said first wrapper, and mechanism adjustable for articles of different size for supporting an article in upright position independently of the wrapping means.
“22. In a machine of the class described^ means for applying transverse and longitudinal wrapping strips simultaneously one upon the other upon an annular body, and mechanism adjustable for bodies of different size to support the same in upright position for wrapping.”

The only claim in issue under letters patent No. 1,238,318 is No. 6:

“In a machine for wrapping annular tire casings and the like, the combination of an incomplete annular housing, an annular shuttle having an opening for the passage of a tire easing therethrough, means for rotatably supporting the shuttle within the housing, means for supporting within said shuttle the tire easing to he wrapped, means for turning said shuttle and tire casing at predetermined relative rates, a roll of wrapping material rotatably mounted on the shuttle, and means for pressing together the two edges of the tire easing adjacent to the point at which the wrapping material is being applied thereto.”

The claims in issue under letters patent No. 1,263,923 are Nos. 1, 3,15, and 16:

“1. In a wrapping machine of the class described, connected mechanism simultaneously an-d differentially adjustable for holding and rotating an annular article, and a paper carrying shuttle adapted to rotate through the eye of the article to apply a spiral wrapping thereon, said shuttle positioned forwardly of the center of the tire.”
“3. In a wrapping machine of the class described for annular articles, means supporting and rotating the article, mechanism for applying a spiral wrapping thereon, said mechanism comprising a power driven sectional shuttle positioned to rotate through the eye of the article in advance of the center thereof, and said means simultaneously and differentially adjustable to maintain the advance relation between the shuttle and article in all adjustments of said means.”
“15. In a tire wrapping machine of the class described operatively connected differentially adjustable supporting means for the tire, a shuttle disposed to rotate through the eye of said tire, said means in all adjustments positioning said tire to permit rotation therethrough of said shuttle in advance of the center of the tire, and swingingly mounted gravity action guiding mechanisms engaging the upper periphery of the tire to maintain the same properly positioned upon said differentially adjustable means.
“16. A wrapping machine comprising a plurality of simultaneously and differentially adjustable supporting members, an alining member automatically adjustable to and from the supporting members by the insertion of the article to be wrapped, and mechanism for wrapping the article.”

Only claim 1 is in issue under letters patent No. 1,432,034:

“1. In a tire wrapping machine, means for rotatably supporting a tire to be wrapped, a wrapping material carrier rotatable through the eye of the tire, means for pressing the beads of the tire to be wrapped, mechanisms for stopping the rotation of the tire and of the wrapping material carrier, and a single lever for controlling said stopping mechanisms and pressing means.”

The defenses are anticipation, noninvention, and noninfringement. In the District Court all the claims were held valid and infringed, and this appeal was taken.

The first patent, the one for a wrapping, involves a continuous strip of paper spirally wound about an annular object and a strip of tape adhesively applied to the folds of the first strip to hold them in fixed relation. The two claims in issue under this patent are substantially the same, the only difference being that in claim 2 the adhesive strip is applied peripherally about the article wrapped, while claim 1 is not thus limited as to the place where the strip is to he applied. It will be noted that neither of these claims include the article of ring form about which the continuous strip is wound spirally and transversely as an element of the combination; that the combination composing the alleged wrapping is limited to the strip wound spirally and transversely and the strip applied adhesively thereto. It is evident that the wrapping cannot be made except on an annular structure or exist as a wrapping apart from the structure on which it is made. When made on an annular structure it becomes a part of it and can be removed only by being destroyed. It would seem, therefore, that as the alleged ■wrapping cannot be made apart from an annular structure and is of no use as a wrapping when severed from it, it is not, in and of itself, tbe subject of 'a patent, for in and of itself it is useless. If it could be made apart from an annular structure, it would still be useless, for it could not be applied as such to an annular article like a tire or coil of wire. We tbink these claims are invalid as claiming a distinct article, a wrapping, inasmuch as it cannot be manufactured or exist apart from the annular article on which it is made and of which it becomes a part. Useless articles are not the subject of a patent.

But apart from the foregoing consideration, we are of the opinion that neither of these claims involve invention. At the time this patent was applied for, it had long been old in the art to wind a strip of paper spirally and transversely about an article of ring form by hand and by machine. It was also old, extending back beyond the memory of man, to apply an adhesive strip of paper to other strips for the purpose of holding them together in fixed relation. And long prior to the application for this patent gum tape had been put upon the market commercially and made use of in various ways. It had been used as a binding around the folds of a box (Gair, No. 981,993), to secure together the adjacent edges of two pieces of card board (Bodine, No. 852,761), for sealing together the two halves of semispheres of a container for a ball of twine or yam by placing the adhesive tape along the line of junction of the two semispheres (Patureau, No. 42,902, May 24,1864; Haff, No. 237,267,, February 1, 1881; Worcester, No. 302,461, July 22, 1894), and for holding together longitudinal strips of crumpled paper when used as a wrapping for bottles or other breakables, the longitudinal strips being held by several circular or peripheral strips (Mauran, No. 620,850).

The function and mode of operation of the gum strip as applied by Patureau, Haff, Worcester, and Mauran are identical with the function and mode of operation of the gum strip as applied by the plaintiff in its claims; and the patent to Shirley (No. 273,-902, March 13, 1883) discloses the application of a peripheral strip of gum tape about a paper bag, the ends of which are rounded. It was plainly obvious, whether one was skilled in the art or was not, that the spiral folds of the old wrapping about an annular object could be held together and in fixed relation by pasting across them an adhesive strip of paper, and that if the adhesive strip extended around the annular article the more likely it would be that all the spiral folds would be held together and in fixed relation. Neither the spiral folds nor the adhesive strip required readaptation for the application of the latter to the former, so that even mechanical skill was not brought into play to effect the application, and nothing new in the way of means was employed.

In Andrews v. Thum, 67 F. 911, 15 C. C. A. 67, it appeared that, “in the preparation of medicinal plasters, it was common to spread upon a sheet of leather or paper a medicated composition, either slightly or not at all adhesive, and to surround it with a margin of more adhesive substance, intended to secure the plaster to the surface on which it was to be applied,” and in considering a claim for “a sheet of fly paper partially covered with a sticky composition, the latter being surrounded with a band or margin of less, but still slightly, adhesive material,” the court says:

“To apply this old method in the preparation of fly paper only called for the transposition of these materials. All the patentee did was to reverse the order, and put the less adhesive material on the outside or margin, and the more adhesive in the middle of the sheet. Such a rearrangement required no invention, but would suggest itself to any one skilled in the art. It is not sufficient that the patentee may have produced a better and more merchantable article, but there must have been something novel in the means which were employed in its production. What constitutes patentability, in this class of eases, is clearly expressed by the Supreme Court in the recent ease of Knapp v. Morss, 150 U. S. 221, 14 Sup. Ct. 81.”

In that ease the old means required rearrangement to effect the desired result, but as rearrangement only called for mechanical skill, it was held not to involve invention, even though the patentee by rearrangement produced a better and more merchantable article. If the situation there presented did not involve invention, much less do we think it does here, where no rearrangement or re-adaptation was required. It is an old and well-known practice to unite strips of material by pressing adhesive strips across them to strengthen and hold them together. See, also, Linscott Supply Co. v. Hopewell, 212 F. 403, 129 C. C. A. 79, where was involved an annular tire case or cover made of any suitable material, preferably water repellant, and so made as to completely inclose a tire and capable of adjustment in such a way as to fit closely to the outer and inner rims of the tire; and it was held devoid of invention as the particular means employed —the cover, the overlapping strips, and the pocketed edge for the cord — were old and their readaptation and application in the tire covering called only for mechanical skill and it did not involve invention.

The second patent, No. 1,158,278, is for a machine for wrapping annular objects spirally and for applying an adhesive tape transversely of the spiral folds.

Machines for applying spiral wrappings automatically were devised as early as 1886; and machines for moistening gum tape and applying it to wrappings of a variety of shapes were also in use before the application for the patent in question. A spiral wrapping was first applied to such ring shaped articles as coils of wire and after-wards to tires for automobiles. The machines for applying the spiral wrapping, whether paper or cloth, about an annular object consist primarily of mechanism such as driving rolls for rotating slowly the tire or annular object, a shuttle which encircles the tire at one point and carries a roll of paper around the tire, winding it on as the tire rotates, and folding and tension mechanism for folding and tensioning the paper strip as it is wound on. The shuttle has an opening on one side to allow the tire or annular article to be inserted, the opening being closed with a gate. The shuttle and driving rolls are rotated by suitable mechanism in timed relation to each other, the shuttle rotating faster than the driving rolls, so that the paper will be wound progressively onto the tire as it rotates. As early as 1886 J. A. Dixson obtained letters patent No. 351,584 for a machine for wrapping coils of wire. It had a housing, a shuttle carrying a roll of paper, folding and tension mechanisms, driving rolls for rotating the coil of wire, through the eye of the shuttle, and suitable mechanism for operating the coil and shuttle in timed relation to each other.

In May, 1902, G. P. & G. M. Wright obtained letters patent No. 700,713, for a machine for wrapping coils of wire. It had a rotatable shuttle carrying a roll of paper with tensioning mechanism, to wind the coil, driving rolls to rotate the coil, - adjustable means for centering the coil of wire in the shuttle, and adjustable guide rolls to guide and hold the coil of wire centrally of the shuttle. The frame or yoke carrying the shuttle was so arranged that it could be adjusted to raise the shuttle or lower it as was required to center the coil in the shuttle.

And in January, 1907, one C. E. Miller obtained letters patent No. 840,642, for a machine originally intended for winding cloth about a partially completed tire to form an inclosure for it when being vulcanized. It shows a shuttle which carries a roll of cloth tape under tension and two pairs of feed rolls. It is also provided with mechanism for forcing the feed rolls together to compress the sides of the tire. Machines made under this patent were used not only to wrap cloth on completed tires to repair them, but also to wrap paper on completed tires for shipment. They were in public use prior to the plaintiff’s invention and were known to the plaintiff’s patentee, as was the Wright patent, which was apparently the basis of plaintiff’s wire machine.

The plaintiff’s patentees, in this wire machine, adopted the old elements, shown in Wright and prior patents, of a revolving shuttle carrying paper to be wound on a coil of wire, of driving rolls, of four adjustable guide rolls, positioned as in Wright, to hold the coil of wire in alinement with the center of the shuttle, and added as an element mechanism for carrying and moistening a roll of gum tape so that a strip of gum tape might be attached by the operator to the periphery of the coil of wire after the spiral wrapping had begun, so that the rotation of the coil of wire, as the wrapping progressed, would draw the tape across the spiral folds in the region .of the periphery of the coil — the machine, aided by the operator, laying about two-thirds of the gum tape, the operator laying the other third. The plaintiff’s shuttle is of a peculiar construction. It does not carry its paper upon a spool, as does the defendant’s machine and most of the prior art machines, but the shuttle is hollow and the paper is folded back and forth on itself and placed in the hollow shuttle and then its leading end drawn out. This feature is what is meant by the expression in claim 17 of the patent — “having wrapping material loosely contained therein” — which differentiates it from the separate roll construction shown in defendant’s machine. The four adjustable guide rolls are arranged two on the front of the machine, numbered 141 in Pig. 1, and two on the back "of the machine, numbered 11 and 14 in Pig. 2. Each of the rolls is supported on a bracket and held by a yoke 140. The four rolls, two on each side of the machine, are adjustable sidewise through two slide rods 139. The slide rods are held in adjustment by the set screws 143 and the outer ends are connected by a cross rod. This arrangement of the guide rolls is such that two are on each side of the coil near the point where it passes through the eye of the shuttle, and two on each side of the shuttle. Their purpose is to hold the coil of wire in alinement during its course through the eye of the shuttle while being wrapped; and to do this these guide rolls may he adjusted to the thickness or cross-section dimension of the coil through the slide rods 139. This adjustment is for a cross-section dimension of the coil and not for its circumferential diameter. The adjustable guide rolls constitute the mechanism “for holding said tire in upright position and adjustable for tires of different size,” referred to in claim 20. They serve the same purpose and are of the same nature as the adjustable guide rolls 24 in the Wright patent. They simply Gome against the sides of the coil of wire to hold it in position. The defendant’s machine has no adjustable guide rolls for supporting the coil of wire or- tire to hold it in an upright position and to guide it through the shuttle. It has an adjustable top roll that is adjustable up and down to meet the outer circumference of a coil or tire, but it is not adjustable sidewise — its flanges are fixed.

The defendant’s machine does not have an annular shuttle having wrapping material loosely contained therein. For this reason we do not think it infringes claim 17, and, as it does not have guide rolls adjustable to the cross-section of a coil or tire to hold it in upright position, the mechanism called for in claims 20, 21, and 22, we do not think it infringes those claims.

Furthermore we are of the opinion that none of these claims involve invention. All the elements in them are old, including the mechanism for applying the gum tape. Piper, No. 700,815, May 27, 1902; Piper, No. 700,816, May 27, 1902; Colvin, No. 759,675, May 10, 1904; Browne, No. 900,352, October 6, 1908; Brownson, No. 913,614, February 23, 1909. They involve nothing more than so applying to an old wrapping machine the well-known gum tape mechanism that it may pay out the gum tape over the outer circumference of a tire or coil of wire, either by positioning the tape mechanism upon a bracket in some suitable place attached to the machine or moving up a table, on which it may be located, to a proper position for paying out the tape. If it called for mechanical skill, it was surely skill of a very low order. It did not involve invention.

The Midgley patent, No. 1,238,318, applied for July 17, 1913, issued August 28,1917, for a bead closer, comprises a housing or standard carrying a rotatable shuttle with a spool for tape, with two horizontal arms extending out from the housing, one on each side of the shuttle, each arm carrying within it a power driven shaft on which' is mounted a sleeve rotatable with the shaft in the nature of a roll, at one end of which sleeve or roll is a fixed flange or bead, and at the other end is an adjustable flange or bead that can be moved horizontally in or out to press against the toes or heads of the inner circumference of a tire. The revolving sleeve or roll of each arm is so located that when the inner circumference of the tire is placed upon it, the tire is positioned in the center of the shuttle for wrapping, supported by each sleeve or roll, and held in position by the flanges or beads which press directly against the toes or beads of the tire and hold them together at the point where the paper wrapping is applied; the paper wrapping being applied to the tire between the sleeves or rolls on the two horizontally extending arms. The flanges or beads revolve with the sleeves or rolls of which they are a part. The special feature of this invention is that the paper wrapping is applied to the tires, when the beads are closed, thus reducing the size of the tire and enabling it to be wrapped more loosely or with less tension on the paper, which becomes a tight wrapping as -soon as the portion of the wrapped tire has passed beyond the sphere of the flanges or beads, when, the toes or beads of the tire being released, the tire expands resuming its original shape and tightening the wrapping.

The claim is that this method of wrapping is better, in that it reduces the liability of the paper to break and results in a closer wrapping. The plaintiff’s contention is that Midgley was the first to invent a machine for this method of wrapping; that the idea of closing the beads was new with him; and that the claim should not be limited to flanges or beads pressing directly against the toes or beads of a tire to compress them, but should be given a broad construction and cover means for pressing against the sides of a tire which may compress the beads, although, in so doing, they may distort the sides of the tire.

The defendant, in its machine, and the plaintiff, in its commercial machine, employ four nonpower driven rolls, two of which are positioned on one side of the shuttle and two on the other, between which the paper strip is wound upon the tire, and two of the rolls are on one side of the tire and two on the other. They are all adjustable with ref-erenee to the sides of the tire and when thrown in toward it press against its sides and close the toes or beads. The means employed by the plaintiff and by the defendant in these machines do not differ in any essential from the guide rolls employed by the plaintiff in its wire wrapping machine in its patent No. 1,158,278, or by the Wrights in their patent No. 700,713, except that the guide rolls in the two latter machines will not function properly to close the beads, for if the guide rolls in the plaintiff’s wire wrapping machine, and probably in the Wright machine, are pressed sufficiently hard against the sides of a tire to close the beads, the tire will be thrown up off the driving rolls and will not revolve. This is due to the fact that the driving rolls in the plaintiff’s wire wrapping machine and in the Wright machine, which rotate the tire, are located in the lower part of the machine and at a distance from the point at which the tire passes through the eye of the shuttle where the wrapping takes place; whereas, in the Midg-ley machine and other machines of that general type, such as the Miller, the driving rolls, which support and rotate the tire, are located in the upper part of the machine near the shuttle where the wrapping takes place.

The evidence shows that the machine of the Miller patent was originally designed and intended to wrap strips of cloth spirally about an incomplete tire in the process of manufacture to serve as a cover or mold while being vulcanized, and that when so used the incomplete tire contained a metallic core extending down to its inner circumference to form the toes or beads, and that, under such circumferences, it was impossible for the four rolls (two sets each through which the tire is fed in the process of wrapping and which support, rotate and compress the tire) to operate to close the beads for they were held apart by the core. But there was evidence that the Miller machine was also used and was capable of use in winding strips of cloth on paper about a completed tire after the metallic mold had been removed. It was used to repair old tires without a metallic core, but having within them a cloth bag filled with oats or an inflated rubber tube under moderate pressure, neither of which extended down between the formed toes or beads of the tire. In this way completed tires were wrapped by the Miller machine with cloth so that the parts being repaired might be vulcanized. In doing this the rolls through which the tire was- fed compressed the beads by pressure against the sides of the tire. The evidence also shows that the Miller machine was used for wrapping completed tires with paper to be shipped out to the trade, and that, when so wrapped, the rolls through which the tire was fed compressed the beads by pressing against the sides of the tire, the rolls being positioned on each side of the shuttle and each side of the tire, and produced a satisfactory wrapping.

The plaintiff contends that this was not a commercial paper wrapping machine, and it would also have us understand that it was not used prior to the Midgley application for this purpose. The contention as to its not being a commercial paper wrapping machine is based on the fact that it takes it some minute and a half or two minutes to wrap an automobile tire, whereas the modem machine will wrap from three to four such tires in a minute. But it appears that the Midgley machine also was a very slow machine compared with the modem machines. The plaintiff further says that the Miller machine was not a practical paper tire wrapping machine, in that the rolls are so positioned that they do not adequately support the tire during the process of wrapping and require the operator to assist in supporting it while it is being fed through the machine by taking hold of the tire so that the portion of it toward him will not drop down and put the tire out of alinement with the rolls which compress the sides of the tire and support and rotate it. But the evidence coming from the plaintiff’s own expert shows that with the workman assisting in supporting the tire the Miller machine will put on a good wrap, will close the beads satisfactorily, and that the paper will tighten up after passing the point of wrapping, exactly the same as in the Midgley machine. The expert further testified that in 1907, when the Miller patent was granted, and prior thereto, he did not recall any paper spiral wrapping of tires and that the Miller machine was a most excellent machine compared to the state of the art at that time; that it was far superior to hand wrapping; that, while it would take about two minutes to wrap a tire with the Miller machine, it would take considerably more time to wrap a tire by hand.

In the patent of the Miller machine only one of the four rolls through which the tire is fed is spoken of as power driven. There was evidence, however, that Miller at an early day arranged a cross-chain so that two of the rolls were power driven and evidence was submitted by the plaintiff describing how the machine operated with one power driven roll assisted by the workman, and also how it operated when provided with two power driven rolls assisted by the workman, and that it worked very differently in each case. It also appeared that Mr. Midgley, the inventor of the Midgley machine, and a witness for the plaintiff, before conceiving his device and in preparation therefor, had before him and operated the Miller machine wrapping tires with a paper wrapping. This was in 1911. He describes how the machine at that time operated when assisted by the operator and his description of the operation of the machine at that time, when so assisted, shows that it worked just the same as described by the other witnesses for the plaintiff when the machine was provided with a cross-chain for operating two rolls under power and assisted by the operator. This we think is corroboration of an indubitable character to support the testimony of Mr. Miller that at an early day and prior to the application for the Midgley patent, and even before Midgley’s conception of providing means for direct pressure against the toes or beads of the tire was thought of, the cross-chain for operating two rolls under power was in use for wrapping tires with paper. Mr. Midgley himself testified that his machine, as he first constructed it, had no bead compressor or means for compressing the beads of the tire. He further testified that what he undertook to do in the construction of his bead closers was to apply the force to the beads or toes of the tire; that it was better on that account than the Miller machine, which applied the force on the sides of the tire; that the advantage of his machine over Miller’s was that it applied the force to the toe of the tire without distorting the tire.

In view of the state of the art existing at the time Midgley applied for his patent, we do not think that the language of claim 6, where it says, “and means for pressing together the two edges of the tire easing adjacent to the point at which the wrapping'material is to be applied thereto,” should be given a broad construction and include means pressing against the sides of the tire to compress the two edges or beads, and that so construed the defendant’s machine does not infringe this claim.

In the Pierce patent, Ho. 1,263,923, known as the differential adjustment patent, the first two claims in issue (claims 1 and 3) are for a wrapping machine for annular articles having means (power rolls) for holding and rotating the article; mechanism (a paper carrying shuttle) for applying a spiral wrapping thereon positioned forwardly of the center of the annular article or in advance of the center thereof, said means (power rolls) being simultaneously and differentially adjustable to maintain the advanced relation between the shuttle and the article. Claim 1 is more restricted in its language than claim 3, in that it states that the mechanisms or means (the power rolls on the swinging arms) for supporting and rotating the article are connected. The fifteenth and sixteenth claims are like the fix-st and third, respectively, except that they include as an additional element an automatically adjustable alining member or swingingly mounted roll designed to engage the periphery of the tire during the wrapping operation, which is located at the top of a standard on the machine. In this device the power or driving rolls and shuttle are positioned in close proximity in the lower part of the machine. There are two power rolls for supporting and rotating the tire, one on each side of the shuttle, supported on swingingly mounted aims, and the arms are connected by a cross-link so positioned and connected to the arms supporting the respective power rolls that, as they are swung outwardly and downwardly or inwardly and upwardly, the roll on the left arm moves faster and to a greater distance than the roll on the right arm. When the arms carrying the power rolls are in their highest position, they are then adjusted to wrap the smallest tire of which the machine is capable. The tire is then centered in the shuttle, and the shuttle is positioned forwardly of the center of the tire. To then adjust a larger tire in the machine so that it will be centered in the shuttle and the shuttle positioned forwardly of the center of the tire, which is the desired wrapping position contemplated by this machine, the two rolls are lowered to center the tire in the eye of the shuttle, and the left roll is lowered to a slightly greater extent than the right roll for the purpose of advancing the shuttle forwardly of the center of the tire, and the link connecting the two arms suppox-ting the rolls is so positioned that the rolls may be lowered simultaneously and differentially with reference to each other to accomplish the purpose. The automatically adjustable mounted member or swinging arm at the top of the standard, referred to in claims 15 and 16, is so positioned that it may be swung up or down and is designed to contact with the outer circumference of the tire to hold it in upright position in the eye of the shuttle when placed in the machine for wrapping.

The primary questions under this patent are whether the claims are valid and entitled to a broad construction ór whether, in view of the prior art, they are limited to the structure shown with the connecting cross-link for accomplishing simultaneously the differential adjustment of the driving rolls. In other words, whether there is anything new shown in this patent other than the cross-link connection whereby the differential adjustment of the power rolls as respects each other is effected at the same time.

' .The defendant’s contention is that the 'Stevens patent, No. 1,196,044, applied for August 19, 1912, issued August 29, 1916 (a prior art patent), discloses means for centering the tire in the shuttle and positioning the shuttle forward of the center of the tire, 'the same as the plaintiff’s patent; that the Stevens machine is one for wrapping spirally a tire- with a strip of paper, the shuttle and power rolls of which are located in the lower region off the machine; that Stevens has two power driven rolls, one on each side of the shuttle, each roll being supported by a swinging arm, which arms can be swung outwardly and downwardly to center the tire m the shuttle and differentially to position 'the shuttle forward"of the center of the tire; and that the only difference- between the plaintiff’s machine and that of Stevens as to obtaining the differential adjustment is that in the latter maehiüe the adjustments are obtained by turning the two screw shafts 26 carrying -the nuts 25, which cause the raising and lowering of the power driven rolls independently of eaeh-other.

. We agree with counsel for the" defendant that the Stevens device discloses means for 'differential adjustment of the power- rolls with reference to each other; that the chief -difference between Stevens and the plaintiff’s device is that Stevens -has an independent differential adjustment of the rolls with ref-'erenee to each other; while the plaintiff gets a simultaneous interdependent differential adjustment. The rolls in the plaintiff’s device move' differentially with reference to each other and, being connected by the cross-link so that they are interdependent, their movements are simultaneous. The rolls in Stevens being independent of eaeh other, the time of the movement of eaeh depends upon the operator as also does the extent of their respective movements -to effect the differential adjustment. The plaintiff says that the Stevens patent does not disclose the idea of a differential adjustment. It undoubtedly discloses means for differential adjustment, and Fig. 2 of the patent shows the rolls in differential adjustment, the left-hand roll being shown lower to a slight extent than the right-hand roll; and Stevens in his speeiflca^ tion says that one object of his invention is to afford an exceedingly simple device “having a large range of adjustment, to adapt the machine for wrapping annular bodies of different sizes”; also “to provide means for ' positively supporting and for rotating the body to be wrapped, and for adjusting said supporting and rotating means relatively to eaeh other”; and -again:

“Means are provided for adjusting said feed or advancing rolls relatively to each ‘other. For this purpose, as shown, a down"wardly directed arm 24, is provided'on each of said sleeves 14, and. carried on the lower end óf each is a nut 25, through which extends a screw shaft 26, pivotally mounted in a suitable bearing 27, therefor, secured upon the table 1, rotation of one of said 'screw shafts acting on the hut 25, to swing the corresponding advancing or feed roll 'outwardly or inwardly, dependent upon the : direction of rotation, thus enabling either or both of said advancing and feed rolls to ’be adjusted to the most efficient position for supporting and rotating or advancing the object to be wrapped.”

” And in his claims he speaks of “independently adjustable swingingly mounted rotatable means for supporting an annular shaped article in position to be wrapped, * * * said means movable" radially of the article for adjustment of the article”; and agáin: “Swingingly mounted mechanisms to support an annular shaped article in position to be wrapped, adjustable radially of said'article to shift the same;” and again: .“Screw shafts, one on' eaeh side of the machine and engaging the respective yokes and acting to swing t-heir grooved pulleys inwardly or outwardly to vary the adjustments of the machine as to the size óf the article to be wrapped;” and again: “Means supporting and rotating an article to be wrapped * * * said means swingingly adjustable in a vertical plane to raise and lower said article to a proper wrapping position.”

These claims, as well as the specification and Fig. 2 of the machine,- all tend to show that Stevens had' conceived the idea of a differential adjustment of eaeh roll with-reference to the other and that the only advance which the plaintiff made was by introducing the cross-link and so positioning it on the swinging arms that the adjustment o'f the rolls would be differential and, the rolls being connected through the cross-link and thus made interdependent, the adjustment . of them was accomplished simultaneously.

The close identity of means employed hy the plaintiff’s patentee in his letters patent No. 1,283,923 with those of the Stevens machine, is not surprising, for the evidence shows that he had the Stevens device before him at the time he began his work and that the Stevens device, which was compact and adjustable to tires of different sizes, furnished the foundation for it. It is thus apparent that the idea of a differential adjustment of the feed rolls in a machine for wrapping tires of different sizes and the means for accomplishing it were old, and that all the plaintiff’s patentee did was to connect the swinging arms of the rolls by a link so positioned on the two arms as to make their movements interdependent and differential and consequently simultaneous. If this can be said to be anything more than the work of a skilled mechanic and to involve invention, it clearly is nothing more than a detailed improvement of the device of Stevens which would not entitle the plaintiff to broad claims.

We think, however, that with the Stevens machine before a skilled mechanic it would be obvious to him that if the two swinging arms were connected by a link, the movement of those arms would become interdependent and simultaneous the same as the movement of the wheels on a dump cart are when connected by a reach which permits the forward and rear wheels to be separated or brought closer together; and that the positioning of the connecting link on the respective arms to determine the difference in their movement and of the rolls they ,bear was a simple problem which any mechanic skilled in the art would readily understand and apply.

But if the claims can be sustained as involving invention, in so far as they relate to bringing about the old differential adjustment of the rolls by a simultaneous movement of the swinging arms and the rolls, we do not think that the defendant’s machine infringes. The arms carrying the supporting rolls in the defendant’s machine do not swing; they have no forward and backward movement. The left arm has no movement forward or backward or up or down. It is stationary. The shuttle is not stationary as in the plaintiff’s, patent or as in Stevens’ patent, but may be moved up or down, as in Wright. Its movement up or. down is for the purpose of centering the tire in .the shuttle. If it is the equivalent of moving the rolls up or down for the purpose of positioning the tire in the shuttle, it is old. • It was old with Wright to raise or lower the shuttle to position the' tire in the center of the shuttle. It was also old with Stevens to lower the rolls to accomplish the same thing. When the right arm and roll are raised in the defendant’s machine, the shuttle is raised at the same time but to a greater distance than are the right arm and roll. But the difference in movement of the right arm and roE is with reference to the movement of the shuttle, and not with reference to any movement of the left arm and roll, for they do not move at aE. The instrumentaEti.es in the defendant’s machine effecting the simultaneous differential adjustment as between the shuttle and the right arm are shown in Plaintiff’s Exhibit I 3. In that drawing 8 represents the yoke that carries the shuttle; G a vertióle rod. connecting the yoke with the end of a lever L located below the base of the frame of the machine. The lever L is pivoted at the point 0 at the right side of the base of the machine. At the point P on the lever L, which is nearer the point 0, where the lever is pivoted, than the point at which the vertical rod G connects with the lever, the lever is connected to a lower extension of the sliding or right-hand arm F, which is mounted to sEde up or down on a guide rod B, so that, when the yoke carrying the shuttle is moved up by the operator, arm F, which carries the power roE B, moves up to a less extent than the shuttle on the yoke 8 moves up, depending upon the difference between the points where the arm F and the rod G are connected to the lever L, and the same is true when the yoke 8 and arm F are moved down, so that the parts moved are the shuttle and its yoke 8 and the right arm F supporting the power roll B. Their movement is up and down and the movement between these two elements up or down is differential. The left roll G and its supporting arm remain stationary. The defendant’s machine differs from that of the plaintiff both as to the means employed and the mode of operation.

In plaintiff’s patent 1,432,034, applied for September 15, 1920, and issued October 17, 1922, referred to as the unitary control patent, claim 1 is in issue and is for a tire wrapping machine embodying means for rotatably supporting the tire to be wrapped, a wrapping material carrier rotatable through the eye of the tire, means for pressing the beads of the tire to be wrapped, mechanisms for stopping the rotation of the tire and of the wrapping material carrier (all of which were old), and “a single lever for controlling said stopping mechanisms and pressing means.” In other words, the special feature here claimed is a single lever for controlling the mechanisms (the brakes) to stop the means (the rolls) that rotate the tire and for controlling the operation of the pressing means.

The machine shows four idle rolls, .one pair of which is located on one side of the shuttle through which the tire passes to be wrapped, and the other pair is on the opposite side of the shuttle, and one of the rolls of each pair is located on one side of the tire and one of each on the opposite side; they press against the sides of the tire when being wrapped to close the beads of the tire. It also shows a power driven disk contacting frictionally with the shuttle and a clutch for connecting up the driving shaft on which the power driven disk is located. A brake adjusted to fit and to press against the circumference of the shuttle to stop its rotation after wrapping a tire, and also another brake adjusted to fit and to press against the circumference of the power driven disk that moves the shuttle, are shown. The patent also shows a shaft near the bottom of the frame and extending from the front to the rear of the machine and pivoted in bearings at its front and rear ends, having at its front end a crank arm 120 connected with a lever 40 pivoted at 40a. Positioned on the shaft are cams or crank arms, one set of which are connected with rods or levers extending upwardly to the four rolls that press the sides of the tire, and also on the same shaft are positioned cams or crank arms connected by rods extending upwardly to operate each of the brakes and the clutch. A movement by the operator of lever 40 in one direction revolves the shaft and sets in operation the respective cams or crank arms on the shaft, releasing the clutch, opening the bead rollers, and applying the two brakes, while a movement of the lever in the opposite direction releases the brakes, applies the clutch, and closes the bead rolls to press the sides of the tire.

In the prior art relating to this matter, we find plaintiff’s patent for a wrapping machine, No. 1,158,278, provided with lever 116, possessing an unitary control. By movement one way of lever 116 the clutch is released shutting off the power, a brake is applied to a guide disk which frictionally engages the shuttle, and also, at the same time, opens the gate to the shuttle, and by a movement in the other direction releases the brake, closes the gate to the shuttle, and applies the clutch. Also. plaintiff’s patent No. 1,263,923 shows a lever 110, which by a single movement in one direction opens the clutch, throws a brake upon the power driven disk that rotates the shuttle, and by a movement in the opposite direction throws off the brake and connects the clutch. And the question is: Is the idea of connecting up the rolls that close the beads of the tire with a single lever, so that it will control the opening and closing of the rolls as well as the opening and closing of the brake or brakes and of the clutch, invention in view of the prior art ? We think not. The plaintiff’s patent 1,158,278 shows how a brake, a gate to a shuttle, and a clutch can be controlled in starting and stopping a wrapping machine by a single lever, and the subjection of the bead closers to the control of the lever in the place of the gate was merely mechanical. It was old (Midgley) to connect a lever with the flanges or rolls that close the beads of a tire. The idea of connecting up such mechanisms in a way to be controlled by a single lever is clearly old' and a broad claim, like the one in question, is plainly invalid, for the general problem is one well within the knowledge of a mechanic skilled in the art.

Furthermore, if the plaintiff’s control device could be regarded as involving invention, we think the claim should be limited to the specific means employed and that the defendant does not infringe. The claim calls for mechanisms — plural—for stopping the rotation of the tire and of the wrapping material carrier, and the patent shows a brake applied to the shuttle and another brake applied to the power driven disk on the main shaft which operates the driving rolls that advance the tire; and, by applying a brake to this disk, the rolls that advance the tire are stopped. As this elaim is limited to two brakes, one on the power driven disk and one on the shuttle, the combination ealled for is not that of the defendant, which has but a single brake and that on the power driven disk. Furthermore, the defendant does not have the unitary control which the plaintiff has by a single lever. It has two levers and perhaps three. The right-hand lever closes the beads and applies the power — it has nothing to do with opening the brake. The brake is always open except when the other or left-hand lever is depressed by the operator. The left-hand lever, on being depressed to apply the brake, releases a pawl that holds the right-hand lever down when the power is on and the bead rolls closed, and when the pawl is released gravity releases the power and the springs that open the bead rolls are allowed to operate and open the rolls.

We do not think the evidence as to commercial success is especially helpful. Although the plaintiff’s wire wrapping machine has attained some success in the wrapping of wire, it attained none as a tire wrapping machine. It was cumbersome, and the parts were so situated and arranged that it would not receive the larger tires and was not readily adjustable to tires of different sizes. It was because of this that, in 1911, the plaintiff purchased the Stevens patent and two of his machines, the parts in which were so situated and arranged that they would readily receive the largest tires and could be adjusted radially and differentially to receive tires of different sizes. It was after the adoption of the essential organization of the Stevens machine in the plaintiff’s present tire wrapping machine that it met with commercial success, and we regard its success as largely due to the fundamental conception disclosed in the Stevens patent rather than to the minor changes which the plaintiff added. The bead closers were not added until 1919, and the unitary control not until some time later. The tremendous increase in the output of tires after the war also had much to do with the sales of the plaintiff’s machine.

The decree of the District Court is reversed, and the ease is remanded to that eourt, with directions to dismiss the bill; the appellant recovering costs in both courts.


source: Caselaw Access Project

author: ROSS, Circuit Judge.

license: Public Domain

text:
    DUKE, State Supervisor of Banking, v. FIDELITY & DEPOSIT CO. OF MARYLAND.

    (Circuit Court of Appeals, Ninth Circuit.
    May 11, 1925.)
    No. 4367.
    Principal and surety <§=>39 — Bonding company held not liable to bank on bond given in reliance on false representations.
    Bonding company, giving bond to reimburse bank for losses through misconduct of its cashier in reliance upon representations, agreed to be warranties, that cashier had faithfully and honestly accounted for all money and property in his control since issuance of prior bond, held not liable on such bond, where, at time any such representations were made, cashier had. in fact, been unlawfully borrowing bank’s funds on his note or obligation without approval of board of directors, which fact was evident from even a cursory examination of bank’s records.
    In Error to the District Court of the United States for the Southern Division of the Western District of Washington; Edward E. Cushman, Judge.
    Action by John P. Duke, as Supervisor of Banking of the State of Washington, liquidating the Kelso State Bank, against the Fidelity & Deposit Company of Maryland. Judgment for defendant, and plaintiff brings error.
    Affirmed.
    Miller, Wilkinson & Miller, of Vancouver, Wash., for plaintiff in error.
    ' Grinstead, Laube & Laughlin and Thomas E. Davis, all of Seattle, Wash., for defendant in error.
    Before ROSS, HUNT, and RUDKIN, Circuit Judges.

      Rehearing denied June 15, 1925.

   ROSS, Circuit Judge.

The defendant in error (a surety company) was defendant to this action, which was brought in the court below by the plaintiff in error to recover upon certain of its bonds to reimburse the insolvent Kelso State Bank of Washington for losses sustained by the rascality of its-cashier. The case has been here before (293 F, 661), when the judgment which had been given by the trial court against the surety company was reversed and the case remanded for a new trial. In the course of the opinion rendered in support of that judgment, this eourt said, among other things:

“In so far as the bonds to the bank are concerned, the evidence is insufficient to characterize them as statutory, however it may be on retrial. The distinction between statutory and common-law bonds cannot be ignored, and is that the first conform to the statute, and the latter do not, even though so intended. City of Mt. Vernon v. Brett, 193 N. Y. 276, 86 N. E. 10.
“The character of the bond is determined by its terms and the circumstances of its execution. Miles v Baley, 170 Cal. 151, 149 P. 48; United, etc., Co. v Poetker, 180 Ind. 255, 102 N. E. 372, L. R. A. 1917B, 984. In the instant case the. bonds are annual renewals of a series begun in 1911 and on representations by the bank stipulated to be warranties. In 1917 Washington enacted a statute (section 3239, Rem. Comp. Stats. 1922) providing that the board of directors of each bank ‘shall require its active officers * s * each to give a surety company bond, in such sum as the board shall specify and the state bank examiner, shall approve, conditioned for the faithful and honest discharge of his duties and for the faithful application of all moneys.’ The bonds in suit are subsequent to the statute and substantially conform to the statutory condition, but in addition provide various other conditions for the protection of the defendant. There is no evidence that the board of directors required any of these bonds, that it or the examiner approved the amount, that no other bond was given, or that either party contemplated bonds by virtue of the statute.
“But, if they are statutory bonds, and in proper sense public obligations to indirectly benefit depositors, and other creditors of the bank, the express obligee is the bank, if nominally it is trustee for the depositors and creditors (see Equitable, etc., Co. v. McMillan, 234 U. S. 457, 34 S. Ct. 803, 58 L. Ed. 1394), the contract is made with it, and if it made false material representations or warranties, relied upon by defendant, the contract of suretyship, like any other indue-ed by fraud, is subject to avoidance.”

The record shows that the Kelso Bank, having made application to the American Bonding Company (predecessor of the defendant in error) to become surety on a bond for its then cashier, one Stewart, in the amount of $25,000, the bonding company, before passing on the application, required the applicant to make answer to a series of questions pertaining to the application, which answers to be “warranties and form a part of and be conditions precedent to the issuance, continuance or any renewal of or substitution for, the bond that may be issued” in favor of the bank upon the cashier mentioned.

The answers so required were returned by the bank with the conditions stated and the desired bond issued accordingly, 'which was continued in force by annual renewals until May 1, 1913, at which time the present defendant in 'error, having acquired the American Bonding Company, executed a similar bond in the sum of $25,000, for a period of one year from May 1, 1913, which bond was continued m force by annual renewal certificates until May 1, 1920, when another but similar bond was issued by the defendant in error in the like sum of $25,-000, effective from May 1, 1920, in which last-mentioned bond the bank agreed that it was given upon the representations and condition of the original statement furnished to the American Bonding Company, and expressly declares its execution to be in consideration of the statements made by the bank relative to its cashier Stewart, his conduct, duties, employment, and accounts, the manner of conducting the business of the employer, and other things connected with the issuance of the bond, which statements, together with any other statements in writing thereafter made by the employer to the company relating to any such matters, should be considered a part of the contract or any continuance or continuances thereof and as warranties, and that any such statements made in writing by the president or any officer or director of the bank should be its statements within the meaning of the bond during each year thereafter, including the year 1919. The bank, in order to obtain a continuance of the last-mentioned bond, delivered a certificate to the defendant in error, certifying that its cashier, Stewart, had faithfully, honestly, and punctually accounted for all money and property in his control and custody and had always proper securities and funds on hand to balance his account and was hot in default to the bank.

The bond covering the period from May 1, 1913, to May 1, 1920, provided that the defendant in error would to the extent of the penalty thereof reimburse the bank for such pecuniary loss of moneys, securities, or other personal property belonging to the bank as it should sustain by any dishonest act or acts of the cashier in the performance of any of his official duties; and would indemnify the bank against loss, not exceeding the penalty of the bond, of any money or other personal property through the fraud, dishonesty, forgery, theft, embezzlement, or wrongful extraction of its cashier Stewart, directly or in connivance with others while in the bank’s service.

It appears that the bank was closed by the banking department of the state of Washington March 17, 1921; its cashier, Stewart, then disappearing.

The present, defendant in error, in answer to the complaint against it, also alleged that, prior to the closing of the bank, it as surety, together with the bank as principal, executed certain bonds to the county treasurer of the county of Cowlitz, Wash., on which it was compelled to pay subsequent to the closing of the bank $46,163.29. It was held by this court in its former decision that has been referred to that the surety company was entitled to set off the amount it was so compelled to pay to the county treasurer of Cowlitz county against any liability it might be liable for on the bond given by it.

The case shows that at all times in question it was unlawful for any officer of the bank to loan to himself any of the bank’s funds upon his own note or obligation without first having obtained the approval of the board of directors of the bank; and upon the retrial of the ease the court below found, on evidence which we think sustains the findings, among other things in effect, that the requirements of the bonds that have been referred to and the bond in suit were executed in reliance upon certificates executed by the president of the bank to the surety company, reading as follows:

“This is to certify that since the issue of the above bond, Mr. F. L. Stewart has faithfully, honestly and punctually accounted to me for all money and property in his control or custody as my employee, has always had proper securities and funds on hand to balance his accounts, and is not now in default to me.”

The court below further found as facts that during many years prior to March 17, 1921, and particularly during the years 1917, 1918, 1919, and 1920, the cashier, Stewart, repeatedly borrowed money from the bank on notes signed by himself, which notes were regularly entered on the note registers of the bank, and that any person making even a cursory examination of its records must have known of such loans; that the president of the bank who signed the certificates referred to knew of them, and that none of them were authorized by the board of directors of the bank; that the making of such loans under the circumstances stated was by statute of the state enacted in the year 1917 made a felony; that during the years 1917 to and including 1921 the cashier, Stewart, repeatedly and without authority overdrew his cheeking account in the bank, during which time scarcely a month passed that he did not have overdrafts, each and all of which were made without any authority of the board of directors, and constituted a felony under the state statute; that if the defendant surety company had known of the loans to the cashier or of his overdrafts, it would not have executed the bond in suit, nor any of the renewals of the preceding bonds.

The bond in suit, while complying with the state statute relating to such bonds, contains in addition various other conditions for the protection of the surety company, as stated by this court in its former opinion. It remains, therefore, unnecessary to characterize the bond in question, for the instrument between the bank and the surety company,, as was expressly decided by this court in its former opinion, constituted a contract between the bank and the surety company, and “if it made false material representations or warranties relied upon by defendant, the contract of suretyship, like any other induced by fraud, is subject to avoidance.”

That is the law of the case, and the judgment is affirmed.


author: HUNT, Circuit Judge

text:
    In re JUDITH GAP COMMERCIAL CO. BILLINGS CREDIT MEN’S ASS’N v. BOGERT.
    (Circuit Court of Appeals, Ninth Circuit.
    May 11, 1925.)
    No. 4399.
    1. Bankruptcy <@=132 — Court cannot remove trustee on its own motion without complaint of creditors.
    Under Bankruptcy Act 1898, § 2 (17), being Comp. St. § 9586, bankruptcy court has no power to remove bankruptcy trustee on its own motion, but it can remove trustee only on complaint of creditors, or on proceeding by referee under general orders of Supreme Court, No. 17.
    2. Bankruptcy <@=l I — Provision that enumeration of specific powers shall not deprive bankruptcy court of others does not extend to powers beyond those conferred.
    Provision of Bankruptcy Act 1898, § 2 (17), being Comp. St. § 9586, that enumeration of specific powers shall not deprive bankruptcy court of any power it would possess without such enumeration, does not extend to provisions beyond those expressly conferred and those necessary to give full effect to jurisdiction specifically conferred.
    3. Bankruptcy <@=22 — Bankruptcy proceedings must be administered in accordance with Bankruptcy Act and general orders, and not under any broad unlimited equity power.
    Jurisdiction of bankruptcy court is limited by statute, and, though bankruptcy proceedings are equitable in their nature, they are to be administered in accordance with Bankruptcy Act (Gomp. St. §§ 9585-9656) and general orders, and not under any broad unlimited equity power.
    In Bankruptcy. In the matter of Judith Gap Commercial Company, bankrupt. On petition of the Billings Credit Men’s Association to revise an order of the District Court (1 F.[2d] 508), removing bankruptcy trustee, opposed by E. A. • Bogert.
    Order reversed.
    This matter is closely related to In re Judith Gap Commercial Co. (Billings Credit Men’s Association v. Bogert) (C. C. A.) 298 F. 89, and comes before us upon a petition for revision filed by Billings Credit Men’s Association, a corporation, in that 'same bankruptcy proceeding.
    This court having decided that the bankruptcy court could not, without notice or hearing, remove the trustee by simply disapproving the original appointment by creditors, expressed the further.view that the order, of removal of the trustee could not be sustained upon the ground of any inherent power vested in the District Court as a court of bankruptcy or as a court of equity. After our decision, the District Court made an order requiring the petitioner as trustee to show cause why its election and approval as trustee of the bankrupt corporation should not be disapproved and vacated, and why it should not be removed as trustee. That order appears to have been made by the court of its own motion and without any preliminary application or petition Ipy any complaining creditor. Petitioner appeared specially and challenged the jurisdiction of •the District Court. The court overruled the special appearance, whereupon petitioner appeared generally and interposed a general denial of all allegations of misconduct upon which the District Court based the initial order to show cause. The general appearance was made under the requirements of a rule of the United States District Court for Montana, but under which by the general appearance the objections raised under the special appearance were not waived. The District Court regarded all records, fies, and evidence that had theretofore been brought into the proceedings as before the court upon the hearing of the matter. Petitioner offered no evidence. The court held that if it appeared that the trustee was delinquent or was endeavoring to divert assets or otherwise acting to the prejudice of the estate, the court could and ought to remove the trustee, and that as the records and files disclosed that the trustee had been unfaithful, it was ordered removed. Thereafter, pursuant to the order made by the court, the referee in bankruptcy called a meeting of the creditors of the bankrupt, and as no creditors appeared, E. A. Bogert, respondent herein, was appointed trustee and now claims to be vested with the right to the possession of the assets of the bankrupt and to an accounting therefor from the petitioner herein.
    Sterling M. Wood and R. E. Cooke, both of Billings, Mont., for petitioner.
    Edmund A. Bogert, of Lewistown, Mont., in pro. per.
    Before GILBERT, HUNT, and RUDKIN, Circuit Judges.
   HUNT, Circuit Judge

(after stating'the facts as above). The petitioner takes the position that the order to show cause made after the decision of this court and the subsequent order based thereon, removing petitioner as trustee, are void as in excess of the jurisdiction of the District Court, while respondent contends that the District Court had the power to remove the petitioner as trustee for cause, without complaint of the creditors.

Under the Bankruptcy Act of 1867, § 18 (section 5039, Rev. St.) the court, after due notice and hearing, was expressly given power to “remove an assignee for any cause” which in the judgment of the court rendered such removal “necessary or expedient.” Constructions of that statute were that the removal of an assignee was entirely within the discretion of the District Court; that it was the judgment of the District Court upon the necessity or expediency of the removal that decided the question of removal; and that the discretion lodged could not be reviewed by the Circuit Court. In re Adler, 1 Fed. Cas. No. 82. But under the Bankruptcy Act of 1898, § 2 (Comp. St. § 9586), the bankruptcy courts are invested with such jurisdiction at law and in equity as will enable them to exercise original jurisdiction in bankruptcy proceedings, (17) “pursuant to the recommendation of creditors, or when they neglect to recommend the appointment of trustees, appoint trustees, and upon complaints of creditors, remove trustees for cause upon hearings and after notices to them.” It is to be noted that while the two statutes have express requirements that there shall be notice and hearing before the power to remove the trustee can be exerted, there is a significant difference in the proceedings made the basis for invoking the power of removal. Under the older statute 'there was no prescribed foundation upon which the power of the court to hear could be called into action; whereas, under the later (1898) act, jurisdiction in the bankruptcy proceeding to remove the trustee is expressly upon complaint of creditors. In the one instance, the court might proceed either upon complaint or other basis or on its own motion; in the other, it may move upon the complaint of creditors. What was formerly power to proceed not restricted by the necessity of antecedent complaint or petition is now confined to instances where a creditor or creditors complain and to instances not material herein, covered by General Order XVII. It seems to us that the provisions of the later act (1898) are so clear in narrowing the power to remove that had been theretofore in the bankruptcy court that they lead to but one view, namely, that without the foundation of a. complaint by creditors, or a proceeding under general orders by the referee, there is no power in the court to proceed and remove. Our opinion is therefore that proceedings for the removal of the trustee must be carried on pursuant to the Bankruptcy Act and the general orders adopted by the Supreme Court and the forms (52, 53, 54) for complaint by a creditor or creditors. Woodman on Trustees in Bankruptcy, § 554.

The argument that there is inherent power to remove the trustee rests upon the clause in section 2 of the Act of 1898, providing that nothing in that section shall 'be construed to deprive a court of bankruptcy of any power it would possess were certain specific powers not therein enumerated. But that clause does not extend to the powers beyond those expressly conferred by Congress and those necessary to give full effect to the jurisdiction specifically conferred; nor is it inconsistent with the established doctrine that always is jurisdiction in bankruptcy limited by statute, and that though bankruptcy proceedings are equitable in their nature and must be carried on as such, nevertheless they are to be administered in accord with the Bankruptcy Act and general orders, and not by virtue of any broad unlimited equity power. Bardes v. Bank, 178 U. S. 524, 28 S. Ct. 1000, 44 L. Ed. 1175; Westall v. Avery, 171 F. 626, 96 C. C. A. 428; Nelson v. Sven Pub. Co. (D. C.) 178 F. 136.

From what we have said the conclusion is that it was beyond the power of the court to remove the trustee of its own motion, and its order must be set aside.

Reversed.


author: RUDKIN, Circuit Judge.

text:
    COY v. UNITED STATES.
    (Circuit Court of Appeals, Ninth Circuit.
    April 27, 1925.)
    No. 4422.
    1. Criminal law <S=»195(f) — Former acquittal no defense unless both indictments charge same offense.

    Former acquittal is no defense unless both indictments' charge the same offense.
    2. Criminal law <§=3200(6) — Acquittal under indictment charging offense not bar to prosecution under indictment charging conspiracy to commit offense.
    Acquittal under indictment charging possession of counterfeited Federal Reserve notes with intent to defraud, in violation of Criminal Code, § 151 (Comp. St. § 10321), did not bar subsequent prosecution under indictment charging conspiracy to commit such offense.
    In Error to the District Court of the United States for the Southern Division of the Northern District of California; Charles F. Lynch, Judge.
    John Coy was convicted of conspiracy to counterfeit Federal Reserve notes and to keep such notes in possession with intent to defraud, and he brings error.
    Affirmed.
    Hilton & Christensen, of San Francisco, Cal., for plaintiff in error.
    Sterling Carr, U. S. Atty., and T. J. Sheridan, Asst. U. S. Atty., both of San Francisco, Cal.
    Before GILBERT, HUNT, and RUDKIN, Circuit Judges.
   RUDKIN, Circuit Judge.

On March 20, 1923, an indictment was returned in the United States District Corut for the Northern Division of the Northern District of California against six defendants, including one John Coy, charging a conspiracy to willfully, unlawfully, and feloniously make, forge, and counterfeit, and cause and procure to be made, forged, and counterfeited, and to willingly aid and assist in falsely making, forging, and counterfeiting, certain notes in imitation of and purporting to be in imitation of the circulating notes issued by the Federal Reserve Bank of San Francisco, Cal., that is to say, Federal Reserve notes of the denomination of $20, in violation of section 149 of the Criminal Code (Comp. St. § 10319) ; and a conspiracy to willfully, unlawfully, knowingly, and feloniously keep in their possession, with intent to defraud, the same forged and counterfeited obligations, in violation of section 151 of the Criminal Code (Comp. St. § 10321). The indictment then charged that in furtherance of the conspiracy and to effect the object thereof, one of the defendants, other than Coy, on March 6, 1923, at San Francisco, had in his possession, in a safe deposit box, 450 of the false, forged, and counterfeited obligations in question, and as a second overt act, that three of the defendants, including Coy, on March 6, 1923, brought to San Francisco, Cal., 450 of the false, forged, and counterfeited obligations. ' On March 31, 1923, a second indictment was returned in the same court against the same parties charging that they, on March 4, 1923, did unlawfully, willfully, knowingly, and feloniously, and with intent to defraud certain persons to the grand jurors unknown, keep in their possession, with intent to pass, utter, and sell, certain false, forged, and counterfeited obligations of the United States; that is to say, 484 falsely made, forged, and counterfeited Federal Reserve notes purporting to be in imitation of the circulating notes issued by the Federal Reserve Bank of San Francisco, Cal., in violation of section 151 of the Criminal Code. For convenience we .will refer to the two indictments as the first indictment and the second indictment in the order in which they appear in the opinion. The defendant Coy entered a plea of not guilty to the second indictment, and upon the trial thereof the jury returned a verdict of not guilty. He was then placed on trial on the first indictment. To that indictment he interposed a plea of former acquittal, setting forth the second indictment in full, the plea of not guilty, the trial and the acquittal, and averred that the offense charged in the two indictments was one and the same; that the testimony introduced on the first trial would be introduced on the second trial'; that the overt act charged in the first indictment was identical with the offense charged in the second indictment; and that the government would introduce the same testimony and the same exhibits to prove the overt act charged in the first indictment as were introduced on the trial of the second -indictment. The court below sustained a demurrer to the plea, and the case has been brought here by writ of error to review a judgment of conviction. The sole assignment of error is based upon the ruling on the demurrer to the plea of former acquittal.

If, as a matter of law, the offenses charged in the two indictments are not the same, it is manifest that the court did not err in sustaining the demurrer to the plea, and we think it equally manifest that the two offenses are not the same. In United States v. Rabinowich, 238 U. S. 78, 89, 35 S. Ct. 682, 683 (59 L. Ed. 1211), the court said':

“It is apparent fropi a reading of section 37, Criminal Code (section 5440, Rev. Stat.), and has been repeatedly declared in decisions of this court, that a conspiracy to commit a crime is a different offense from the crime that is the object of the conspiracy. Callan v. Wilson, 127 U. S. 540, 555; Clune v. United States, 159 U. S. 590, 595; Williamson v. United States, 207 U. S. 425, 447; United States v. Stevenson (No. 2), 215 U. S. 200, 203.”

In Lee Choy v. United States, 293 F. 582, this court said:

“The verdict finding the defendant guilty as to one count and not guilty as to the other is neither repugnant nor inconsistent, for while we may assume that the transaction charged in each count is the same, the offenses are different, and each offense contains elements not found in the other. Under such circumstances, a verdict of not guilty as to one count is not inconsistent with a verdict of guilty as to the other.
“ ‘A conviction or acquittal upon one indictment is no bar to a subsequent' conviction and- sentence upon another, unless the evidence required to support a conviction upon one of them would have been sufficient to warrant a conviction upon the other. The test is not whether the defendant has already been tried for the same act, but whether he has been put in jeopardy for the same offense. A single act may be an offense against two statutes; and if each statute requires proof of an additional fact whibh the other does not, an acquittal or conviction under either statute does not exempt the defendant from prosecution and punishment under the other.’ Morey v. Commonwealth, 108 Mass. 433.
“See, also, Carter v. McClaughry, 183 U. S. 367, 395, 22 Sup. Ct. 181, 46 L. Ed. 236; Burton v. United States, 202 U. S. 344, 381, 26 Sup. Ct. 688, 50 L. Ed. 1057, 6 Ann. Cas. 392; Gavieres v. United States, 220 U. S. 338, 31 Sup. Ct. 421, 55 L. Ed. 489.”

The "most that can be said is that the offense charged in the second indictment is the same as the second overt act charged in the first indictment. " The two indictments have no other element in common, aside from the mere identity of parties.

The judgment is affirmed.


text:
    DONG YING FUN v. NAGLE, Commissioner of Immigration.
    (Circuit Court of Appeals, Ninth Circuit.
    May 11, 1925.)
    No. 4438.
    1. Aliens @=>32(13) — That member of board of special inquiry is also- stenographer for board does not affect findings.
    That one member of board of.special inquiry to pass on application of Chinese person for admission to -United States acts in dual capacity as stenographer ■ to board, as well as member thereof, is insufficient grounds for setting aside findings of board on ground that it was not properly constituted.
    2. Aliens @=>32( 13) — Difference in personnel of board of special inquiry, adversely determining question of alien’s right to land, held not to affect findings.'
    That board of special inquiry, appointed under Act Feb. 5, 1917, § 17 (Comp. St. 1918, Comp. St. Ann. Supp. 1919, § 4289}4ii), which finally determined whether Chinese person duly held should be allowed to land or be deported, was composed of different personnel than board which first heard such matter, held not ground for setting aside findings of board, where board making final determination considered all evidence adduced, including that considered by pri- or boards.

      Appeal from the District Court of the United States for the Southern Division of the Northern District of California; John S. Partridge, Judge.
    Habeas corpus proceeding by Dong Ying Fun against John D. Nagle, as Commissioner of Immigration of the Port of San Francisco. From a judgment of dismissal, after hearing on order to show cause, petitioner appeals.
    Affirmed.
    This is an appeal by Dong Ying Fun from an order of the District Court dismissing a petition for writ of habeas corpus. Dong Ying Fun applied for admission to the United States in May, 1924, as the natural bom son of Dong Hing Tung, conceded to be a domiciled merchant. Order to show cause was issued, hearing was had, and thereafter order of dismissal was made.
    The record shows that the question of the boy’s right to land was referred to a board of special inquiry on May 22, 1924; the board being made up of Messrs. Seidle and Davis, and Miss Allen. After the applicant •and his alleged father were heard, the matter was continued until May 26th, at which time a Miss Peterson was substituted as a member in place of Miss Allen. Some further testimony was taken on that day, and the matter was again continued until June 12th to procure additional testimony from an alleged brother of petitioner, who lived in Duluth. On June 12th a board of special •inquiry, composed of Messrs. Seidle and Davis and Miss Allen, all members of the original board, considered the matter having no additional testimony other than a deposition of the alleged brother in Duluth. The •board found that the relationship claimed was not satisfactorily established, and therefore entry was provisionally denied, with 10 days allowance for the introduction of further evidence. Upon the making of that order, applicant, through his attorney under date of June 17th, requested that the matter be referred to the Boston authorities to take the testimony of Dong Hing, an alleged brother residing in Boston. Accordingly, the testimony of Dong Hing was taken at Boston and returned to the immigration authorities at San Francisco; and on July 18th, the board of special inquiry, consisting of Inspector Davis, who had been on previous boards, and two new members, Inspectors Griffin and Murphy, considered all the evidence adduced in the case, including the transcript of testimony of the Boston witness, and found that the applicant had not satisfactorily established his claim. On July 21st applicant appealed to the Secretary of Labor, who had the record before him, and in due 'course affirmed the recommendation of the Commissioner General of Immigration that applicant be denied admission.
    P. A. Vincilione, of San Francisco, Cal., for appellant.
    Sterling Carr, U. S. Atty., and T. J. Sheridan, Asst. U. S. Atty., both of San Francisco, Cal., for appellee.
    Before GILBERT, HUNT, and-RUD-KIN, Circuit Judges.
   HUNT, Circuit Judge

(after stating the facts as above). The contention that applicant was not given a fair and impartial hearing, and that the proceedings leading to his exclusion were arbitrary and illegal, is based upon the grounds: (1) That the board of special inquiry was improperly constituted, in that it was made up of members who acted in the dual capacity of members of the board as well as stenographers to the board; (2) and that the members of the board were so changed during the hearing that no two of them heard the testimony adduced in petitioner’s behalf.

The fact that one of the members of the board was a stenographer and kept the record of the proceedings and testimony is no ground for setting aside the findings. One acting in a capacity where he must pass upon the truth or falsity of evidence has a perfect right to record the testimony of witnesses.

The other ground is more important. Section 17 of the Act of February-5, 1917 (Comp. St. 1918, Comp. St. Ann. Supp. 1919, § 4289%ii), provides that boards of special inquiry shall be appointed by the Commissioner of Immigration or inspector in charge at the various ports of arrival as may be necessary for the prompt determination of cases of immigrants detained under the provisions of the law. Each board must consist of three members, who.shall be selected from such of the immigration officials in the service as the Commissioner General shall from time to time designate as qualified to serve on such board. The boards are required to keep complete and permanent records of their proceedings, and the decision of any two members of the board shall prevail, but either the dissenting member or the alien may appeal to the Commissioner of Immigration and the Commissioner General of Immigration and to the Secretary of Labor. The authority of the board of special inquiry is to determine whether an alien who has been duly held shall be allowed to land or shall be deported.

After the hearing on June 12th and the decision of the board provisionally denying entry, applicant asked for and was, given opportunity to take the testimony of an alleged brother living in Boston. His testimony was taken and returned to the authorities in San Francisco, where the board of special inquiry which again took up the mat-, ter was composed of three members, only one of whom had been on the several boards that had previously heard the matter. However, it was the last referred to board that considered “all the evidence adduced in the ease” and made the decision from which the applicant took his appeal to the executive authorities, and at no point in his appeal did he question the make-up of the board.

The provisional order, which was made by the same board that first heard testimony, is itself some evidence that the administrative authorities were conducting the inquiry with careful regard to ,the rights of the applicant. Although there was a change in the personnel of the boards, the one which finally passed on the matter was a lawfully constituted authority, and we think could consider the testimony that had theretofore been taken, including the deposition obtained in Boston. Tang Tung v. Edsell, 223 U. S. 673, 32 S. Ct. 359, 56 L. Ed. 606; Morrell v. Baker (C. C. A.) 270 F. 577.

The finding that there were material discrepancies between the testimony given by the several witnesses, and that the relationship of father and son had not been established, has sufficient support in the record to make interference by the court unwarranted.

The judgment is affirmed.


author: MACK, Circuit Judge.

text:
    STAKER v. UNITED STATES.
    (Circuit Court of Appeals, Sixth Circuit.
    May 16, 1925.)
    No. 4211.
    1. Criminal law <@=>1044 — Motion to quash search warrant held not subject to attack on appeal as- unverified and unsupported by sworn testimony.
    Motion to quash search warrant and suppress evidence cannot on appeal be attacked, because unverified and unsupported by sworn testimony in behalf of defendant, where such objection was not previously raised, and where facts stated therein were largely corroborated by testimony in opposition.
    2. Intoxicating liquors <@=248 — Affidavit for search warrant held not to show probable cause for belief that dwelling was used as place of unlawful sale.
    Prohibition officer’s affidavit that he had smelled fumes from still making intoxicating liquor, and had reasonable grounds to believe and did believe that intoxicating liquors were being sold, manufactured, and disposed of, or illegally possessed in house (describing it), helé not to state facts constituting probable cause to believe that house was being used for sales of liquor, or any business purpose, so as to authorize warrant to search private dwelling, under National Prohibition Act, tit. 2, § 25 (Comp. St. Ann. Supp. 1923, § 10138%m).
    3. Intoxicating liquors <@=249 — Search warrant for dwelling used mereiy fo'r manufacture of' liquor unwarranted.
    Issuance, of search warrant for dwelling house, merely because it is used for unlawful manufacture of liquor, is unauthorized by National Prohibition Act, tit. 2, § 25 (Comp. St. Ann. Supp. 1923, § 10138%m).
    4. Searches and seizures <@=3 —Facts Justifying issuance of warrant must be shown to exist at time of issue.
    Facts justifying issuance of search warrant must be shown by affidavit, and it is not enough that facts subsequently shown would have sufficed.
    5. Arrest <@=71 — Search of dwelling from which mash fumes were emanating held unwarranted, as incidental to lawful arrest for offense committed in officers’ presence.
    Where prohibition agents detected fumes of .cooking mash emanating from basement, search of dwelling was not justified, as incidental to lawful arrest for offense committed in their presence.
    In Error to the District Court of the-United States for the Eastern District of Kentucky; Andrew M. J. Cochran, Judge.
    J. H. Staker was eonvieted of a violation of the National Prohibition Act, and he brings error.
    Reversed and remanded.
    M. J. Hennessey, of Augusta, Ky., for plaintiff in error.
    Sawyer A. Smith, U. S. Atty., of Coving-ton, Ky. (John E. Shepard and Rodney G. Bryson, Asst. U. S. Attys., both of Coving-ton, Ky., on the brief), for the United States.
    Before DENISON, MACK, and KNAP-PEN, Circuit Judges.
   MACK, Circuit Judge.

The defendant was indicted on two counts in substance as follows:

First. Willfully and unlawfully making and manufacturing certain intoxicating liquors, to wit, whisky, and other intoxicating liquors to the grand jurors unknown, the said making and manufacturing of said in toxicating liquor being then and there prohibited and unlawful.

Second. Willfully and unlawfully possessing and having in his possession certain property designed for the unlawful manufacture of intoxicating liquor, intended for use in violation of the Act of October 28, 1919, to wit, a still, worm, still cap, thumping keg, flake stand, piping, furnace, fer-menters, process keg, mash rake, mash, pom-ace, still beer, low wines, malt, com meal, and other property to the grand jurors unknown; the said possessing and having in possession of said property being then and there prohibited and unlawful.

Upon the return of the indictment the defendant' filed a petition to quash the search warrant and to suppress and exclude the-testimony obtained thereunder, and a motion to 'quash the indictment, on the ground that it was based solely upon testimony obtained by illegal search of his dwelling house, in violation of section 25, title 2, of the National Prohibition Act (Comp. St. Ann. Supp. 1923, § lOKSS^m), which provides:

“No sear-eh warrant shall issue to search any private dwelling occupied as such unless it is being used for the unlawful sale of intoxicating liquor, or unless it is in part used for some business purpose such as a store, shop, saloon, restaurant, hotel, or boarding house. The term ‘private dwelling1 shall be construed to include the room or rooms used and occupied not transiently but solely as a residence in an apartment house, hotel, or hoarding house.”

After hearing testimony, the petition and motion were denied; the trial resulted in a conviction.

1. It is urged by the government that the motion- to quash is defective, because it was unverified and supported by no sworn testimony offered on behalf of defendant. Smith v. State of Mississippi, 162 U. S. 593, 16 S. Ct. 900, 40 L. Ed. 1082. But as no objection to the motion appears to have been made on this ground, and as the- facts stated therein were largely corroborated by the prohibition officers called to testify in opposition thereto, no advantage can now be taken of the fact that the motion papers were unverified. Neal v. Delaware, 103 U. S. 370, 394, 396, 26 L. Ed. 567.

2. It appears from the testimony that the prohibition agents, while passing in Maysville, Ky., along the public street or highway and past defendant’s house, which was used and occupied by him as his dwelling, detected the odor of cooking mash emanating from the basement, made affidavit before the police judge and secured a warrant to search the dwelling house; in the affidavit it was alleged that the affiant is a general prohibition officer, and that he has smelled the fumes from a still making intoxicating liquors, and that he has reasonable grounds to believe and does believe that intoxicating liquors are being sold, manufactured, disposed of, or illegally possessed in a house, building, and premises owned or controlled by John H. Staker and described and located as follows: 1417 Eorest avenue, Mays-ville, Ky., one-story frame. A 12-gallon still was found in operation in the cellar, and also some moonshine whisky and wine. There was a door leading into the cellar from the outside, but as this was padlocked the cellar could not be entered without going into the house.

The search warrant must be deemed invalid, because there wex-e no allegations of fact in the affidavit upon which it was issued which would tend to show that the dwelling house had ever been used for the unlawful sale of intoxicating liquor, or that any part thereof was used for some business purpose within the meaning of the section of the National Prohibition, Act above quoted. Not only were there no allegation's of fact in the affidavit, but the affidavit merely alleged that the affiant had reasonable ground to believe and did believe that intoxicating liquors were being sold, manufactured, disposed of, or illegally possessed in the house of the defendant. In view of the use of the disjunctive “or,” it did not even contain an unequivocal general allegation or conclusion which would warrant the issuance of the search warrant.

It seems clear that the statute does not authorize the issuance of* a search warrant for a dwelling house merely because it is being used for the manufacture of liquor. Jozwich v. U. S. (C. C. A.) 288 F. 831 (C. C. A. 7); Singleton v. U. S. (C. C. A.) 290 F. 130 (C. C. A. 9); Voorhies v. U. S. (C. C. A.) 299 U. S. 275 (C. C. A. 5). Cf. Carroll v. U. S., 45 S. Ct. 280, 69 L. Ed. -, March 2, 1925. Whether, if the evidence adduced were sufficient to indicate that the magnitude of the manufacture was of such a degree as fairly to necessitate the conclusion that the manufacture was but a step in the sale or marketing of the product, a search warrant could properly issue, we are not called upon to decide, inásmuch as no such evidence was adduced at the time the warrant was secured. It is not enough that facts as subsequently shown would have sufficed for the issuance of a warrant. Such facts must be alleged as a basis for the issuance of the search warrant to give the latter validity.

Furthermore, although in fact the affidavit was made immediately after the facts were discovered, the affidavit' itself is silent as to the time element. So far as the affidavit shows, the officer might have smelled the fumes months before the affidavit was made. See Rupinski v. U. S., 4 F.(2d) 17 (C. C. A. 6), February 4, 1925. The officers had no probable cause to believe from the smell alone that the dwelling house was being used for sales. The situation did not justify á search without a warrant. The policy of the statute goes far to restrict the right of searching a dwelling even with a warrant. Such policy cannot be frittered away by granting a broader right of search without a warrant.

3. The government attempts to justify the search on the ground that peace officers have the right to arrest and search a person committing a criminal offense in their presence. Leaving aside the question' whether prohibition agents are peace officers (see Brady v. U. S., 300 F. 540 [C. C. A. 6]; Agnello v. U. S., 290 F. 671 [C. C. A. 2]), the offender was not in the presence of the officers, and there is no evidence that they had reason to suspect that he was. (Temperani v. U. S., 299 F. 365 [C. C. A. 9]). Moreover, it may be questioned whether, in cases of misdemeanor, a peace officer or a private person has any power of arresting without a warrant, except when a breach of peace has been committed in his presence, or there is reasonable ground for supposing that a breach of peace is about to be committed or renewed in his presence. Wilgus, Arrest without Warrant, 22 Mich. Law Rev. 541, 673, 798, especially 703-709. There is no evidence here of any breach of peace, existing or imminent, which would justify the exercise of powers sanctioned by the common law only in situations of emergency. See Carroll v. U. S., supra. In Agnello v. U. S., supra, McBride v. U. S. (C. C. A.) 284 F. 416 (C. C. A. 5), and Garske v. U. S. (C. C. A.) 1 F. (2d) 620, the search was justified as incidental to a lawful arrest.

For the reasons stated, a majority of the court are of the opinion that the petition to quash the search warrant and to suppress the evidence secured thereby, and the motion to quash the indictment, should have been granted, and that the judgment must be reversed, and the cause remanded.