text:
    Morton E. COLE et al., Petitioners-Appellants, v. COMMISSIONER OF INTERNAL REVENUE, Respondent-Appellee.
    No. 837, Docket 73-1253.
    United States Court of Appeals, Second Circuit.
    Argued May 30, 1973.
    Decided July 17, 1973.

      Morton E. Cole, Hartford, Conn. (Cole & Cole, Hartford, Conn.), for petitioners-appellants.
    Joseph M. McManus, Atty., Tax Div., Dept, of Justice, Washington, D. C. (Scott P. Crampton, Asst. Atty. Gen., Meyer Rothwacks, Paul M. Ginsburg, Attys., Dept, of Justice, of counsel), for respondent-appellee.
    Before MOORE, FRIENDLY and FEINBERG, Circuit Judges.
   MOORE, Circuit Judge:

This appeal is from decisions of the Tax Court, Leo H. Irwin, Judge, entered October 25, 1972, determining liabilities in taxpayers’ income tax returns for the years 1965 through 1968 in the total amount of $6,184.29. (See 31 T.C.M. 870 (1972)). Taxpayers Cyril Cole and Jean E. Cole, husband and wife, were found liable for a tax deficiency of $4,257.07; taxpayer Morton Cole, brother of Cyril, was found liable for a deficiency of $1927.22. Hereinafter, the term “taxpayers” will refer to Morton and Cyril Cole.

I. The Facts

Taxpayers are brothers who for many years have been partners in the law firm of Cole & Cole of Hartford, Connecticut. Between 1937 and October, 1949, Beatrice F. Cole, a sister of taxpayers, was employed by Cole & Cole as office manager.

On January 12, 1946, Beatrice suffered a heart attack while at work. Her doctor diagnosed her condition as “essential hypertension” brought on by the stress of her employment and recommended that she take a leave of absence from her job. Beatrice took an extended trip to Cuba and returned to work in the spring of 1946 with her condition greatly improved.

On September 20, 1949, and October 3, 1949, Beatrice again suffered heart attacks while at work. Her doctor attributed these attacks to the pressures of her employment and recommended that she stop working completely, since he believed that her hypertension would continue and would not improve. The doctor also suggested that Beatrice take extended trips to keep her mind from the tensions of her job and that she take along on her trips a traveling companion who could summon help if she became incapacitated.

Strictly following her doctor’s advice, Beatrice did not work after October 3, 1949, at which time she was fifty-six years old. In addition, since October, 1949, Beatrice has taken numerous trips away from Connecticut accompanied by a traveling companion, her sister Ethel Cole.

At the time Beatrice suffered her heart attacks and left her employment, the Cole & Cole law partnership did not carry workmen’s compensation insurance and had not established a self-insurance plan. Taxpayers and the Commissioner of Internal Revenue agree that Beatrice was rendered totally incapacitated by her heart attacks and that, under Connecticut law, she became entitled to receive from Cole & Cole direct payments of up to $32 per week plus reimbursement for all of her related medical expenses.

Pursuant to statute and agreement, from 1951 through 1958 and again from 1961 through 1968 (the period from 1958 to 1961 having been covered by special agreement), taxpayers paid to Beatrice weekly compensation payments and considerable sums for her medical expenses. Included as medical expenses during the years at issue are the following amounts expended for travel expenses of Beatrice and her companion, Ethel Cole: 1965 — $6,217.56; 1966— $2,078.93; 1967 — $4,962.16; 1968— $1,895.38; a further $2,749.53, deemed “unidentified” by the Tax Court was also expended in 1968. This item was stipulated by the parties to have been expended by Beatrice for meals and lodging during her 1968 travels. These travel-related expenses total $17,903.56. During these same years taxpayers paid to Beatrice the following amounts as weekly compensation payments: 1965— 52 weeks at $30.00=$1560.; 1966 — 27.5 weeks at $30.=$825.; 1967 — 75 weeks (probably to adjust for payments covering only 27.5 weeks in 1966) at $30. = $2,250.; 1968 — 52 weeks at $30=$1,-560. These payments total $6195.

Taxpayers considered the above travel expenses and weekly compensation payments to have been required by the Connecticut Workmen’s Compensation Law and they therefore treated them as ordinary and necessary expenses of their law partnership deductible under Section 162 of the Internal Revenue Code of 1954.

The Tax Court upheld the Commissioner’s determination that the amounts paid for Beatrice’s travels should not have been deducted as ordinary and necessary business expenses and further found that no deduction could be allowed for the weekly compensation payments paid to Beatrice after September 18, 1965, the date on which the 624 week limitation contained in the Connecticut statute requiring such payments expired. We affirm the decision of the Tax Court.

II. Travel Expenses

Taxpayers assert that the travel expenses which Beatrice and her sister incurred over the four years in question were properly deductible as ordinary and necessary expenses of the law partnership within the meaning of Section 162 I.R.C. of 1954, because those expenses were allegedly mandated by the Connecticut Workmen’s Compensation Law. The pertinent statutory language reads thus:

Any employee who shall have sustained an injury in the course of his employment shall forthwith notify his employer, or some person representing him, of such injury; * * *.
The employer, as soon as he shall have knowledge of any such injury, shall provide a competent physician or surgeon to attend the injured employee, and in addition shall furnish such medical and surgical aid or hospital or nursing service as such physician or surgeon shall deem reasonable or necessary. * * *. Conn.Gen’l.Stats.. § 7426 (1949).

At trial the testimony of the physician who treated Beatrice during the years in question was offered to establish that frequent, extended trips abroad had been prescribed as part of her treatment. This testimony revealed that the doctor had merely recommended “if possible rest, trips, California' or abroad”. We agree with the Tax Court that by this testimony taxpayers have failed to show that these travel payments constituted specifically prescribed treatment for Beatrice’s hypertension.

Taxpayers argue, however, that they did not rely on their own interpretation of Connecticut law (they have conducted an active workmen’s compensation practice for many years), but rather they consulted a Commissioner of Workmen’s Compensation who gave them a written opinion that as employers, taxpayers were liable for Beatrice’s medical expenses and that the travel expenses were properly included as medical expenses. Of course, no opinion of such Commissioner can bind this Court as to what is an ordinary and necessary expense under Section 162. On this question too, we agree with the Tax Court that taxpayers have simply failed to prove that Beatrice’s extended travels were medically required so that they were obligated to pay them under the Connecticut statute. In addition to their claim that the payments of travel expenses qualify as deductions under Section 162 because they were payments required by Connecticut law, taxpayers have made no other arguments to support this deduction. This is not surprising in light of this Circuit’s test for determining whether expenses are ordinary and necessary under Section 162. As expressed in B. Forman Co., Inc. v. Commissioner, 453 F.2d 1144 (2d Cir. 1972) that test is “whether a hard-headed businessman, under the circumstances, would have incurred the expense”. 453 F.2d at 1160.

We find that the Tax Court did not err in holding that by paying Beatrice’s and her sister’s travel expenses between 1964 and 1968 taxpayers were not entitled to a deduction for an ordinary and nec'essary business expense.

III. The Weekly Compensation Payments

When Beatrice became totally incapacitated in October, 1949, Connecticut’s Workmen’s Compensation Law provided that her employer was obligated to pay her up to $32 per week for a total of 624 weeks. On February 1, 1951, Cole- & Cole entered into an “Agreement as to Compensation” with Beatrice which provided that the partnership would pay her $30 per week plus medical expenses. On February 27, 1958, a new agreement was executed which provided for the settling “once and for all” of the taxpayers’ liability to Beatrice. This agreement included the following provision:

4. (b) Whereas the Respondent desires to terminate and settle once and for all its legal liability to the claimant for the payment of compensation and medical expenses and for payment of past and future compensation for the total sum of $5,000, together with the Respondent’s projnise and agreement to pay all travel and other expenses of the Employee in seeking needed rest or change of locale, climate, or environment to treat or alleviate her condition, including the like expenses of any accompanying nurse or travelling companion, until September 19, 1961, which amount or expense will be considerably less than the exposure of the Respondent to the Claimant.

This award by stipulation was “accepted” on March 3, 1958, by the Connecticut compensation commissioner for the district in which Beatrice resided.

On August 25, 1961, an “Agreement to Re-open, Clarify and Convert Award by Stipulation” (referring to the February 27, 1958 award) was entered into by taxpayers and their sister. This agreement provided in part:

14. Furthermore, the Respondent-Employer is presently obligated to pay full weekly compensation of $32 for the balance of the statutory period of six hundred twenty-four (624) weeks, which balance starting on August 25, 1961 amounts to two hundred eleven and one-half (211.5) weeks of additional compensation.

On August 29, 1961, this agreement was also approved by the appropriate compensation commissioner.

Despite the clear language of the statute limiting weekly compensation payments to 624 weeks, and despite the fact that the 1961 agreement specifically incorporated this limitation, taxpayers made similar payments after September 18, 1965, the date of the expiration of the statutory 624 week period. Deductions under Section 162 were taken by taxpayers for payments made after the 624 weeks.

In the Tax Court and in their initial brief on appeal taxpayers argued that these weekly payments were properly deducted because the Connecticut statute did not limit such payments to 624 weeks. Taxpayers argued that this limitation referred only to certain itemized injuries included in the sentence following the 624 week limitation and was not intended to be applied to the disability which afflicted Beatrice. This contention is wholly without merit and was properly rejected by the Tax Court.

In their reply brief taxpayers make a new argument (not presented to the Tax Court) in support of their position that weekly compensation payments are required to be made by an employer so long as the condition of total incapacity for work continues. This argument is based upon the following statute enacted in 1967 by the Connecticut Legislature.

Compensation under agreements or awards effected prior to October 1,1953
Any person who received compensation for total incapacity under a workmen’s compensation agreement or award effected prior to October 1, 1953, shall receive such compensation as is authorized under Section SI-SO? or for not longer than the period of total incapacity, and shall be paid as provided by subsection (b) of Section 31-307a * * *. Conn.Gen’l. Stats. § 31-307c (1972); Conn.Public Acts 842, § 30 (1967).

Taxpayers now urge upon this Court that this statute, enacted in 1967, mandated payments which were made to Beatrice after September 18, 1965. Taxpayers’ August, 1961, agreement with Beatrice contractually obligated them to make 211.5 weekly compensation payments to Beatrice. Prior to incurring this contractual obligation, taxpayers had secured from Beatrice a final release from further compensation payments by making a lump sum payment of $5000 as provided in the February, 1958, agreement supra. Because the Commissioner has not appealed the Tax Court’s decision to allow payments made under the 1961 agreement, we do not consider whether such payments made after a final release are in fact ordinary and necessary. It is well settled, however, that such payments are not ordinary and necessary simply because they are contractually required. Interstate Transit Lines v. Commissioner, 319 U.S. 590, 594, 63 S.Ct. 1279, 87 L.Ed. 1607 (1943). Furthermore it is clear, we think, that even if payments made within the 624 week period were correctly allowed as deductions, payments made to Beatrice after September 18, 1965, and before the above-quoted statute was passed in 1967 are not retroactively mandated by that Act so that they become ordinary and necessary within the meaning of Section 162.

As to payments to Beatrice after Connecticut law was changed, we find that these, too, were not ordinary and necessary expenses of the Cole & Cole partnership. Payments made after the 1967 statute was passed were made by taxpayers despite the fact that they had received a full release from their obligation to make such payments in the 1958 agreement. In light of the “hard-headed businessman” test for ordinary and necessary expenses, B. Forman Co., supra, we find that taxpayers were not entitled to such a deduction. The statute which taxpayers now cite does not specifically deal with cases of total incapacity in which “final releases” have been procured at considerable cost. We do not believe that a hard-headed businessman would so eagerly have recommenced these payments without some contest in the courts over the liability to make these payments. Furthermore, from the late date on which this argument was first made in this case, we conclude that taxpayers did not discover the particular statute which they now claim requires these payments until very recently. Since they did not rely on this statute during 1967 and 1968, we are convinced that the weekly compensation payments made during those years should not be deducted by taxpayers as ordinary and necessary business expenses.

The decision of the Tax Court is affirmed.

      . At the time of Beatrice’s heart attacks in September and October, 1949, Section 7430 of the Connecticut General Statutes provided as follows:
      Sec. 7430. Compensation for total incapacity. If any injury for which compensation is provided under the provisions of this chapter shall result in total incapacity to work, there shall be paid to the injured employee a weekly compensation equal to half of his average weekly earnings at the time of injury ; but the compensation shall in no case be more than thirty-two dollars or less than nine dollars weekly; and such compensation shall not continue longer than the period of total incapacity, or in any event longer than six hundred and twenty-four weeks. The following-described injuries of any person shall be considered as causing total incapacity and compensation shall be paid accordingly: (a) Total and permanent loss of sight in both eyes, or the reduction to one-tenth or less of normal vision with glasses; (b) the loss of both feet at or above the ankle; (c) the loss of both hands at or above the wrist; (d) the loss of one foot at or above the ankle and one hand at or above the wrist; (e) any injury resulting in permanent and complete paralysis of the legs or arms or of one leg and one arm; (f) any injury resulting in incurable imbecility or mental illness; but an employee who shall have suffered the loss or loss of use of one of the members of his body, or of part of one of the members of his body, or the reduction of vision in one eye to one-tenth or less of normal vision with glasses, shall not receive compensation for a later injury in excess of the compensation allowed for such injury when considered by itself and not in conjunction with the previous incapacity.

      . In addition to these travel expenses, the stipulation of facts lists only two other items under medical expenses. These were two medical examinations, one in 1965 and one in 1968, which together totaled $53.00.

      . The Internal Revenue Code of 1954 provides as follows:
      Section 162. Trade or business expenses
      (a) In General. — There shall be allowed as a deduction all the ordinary and necessary expenses paid or incurred during the taxable year in carrying on any trade or business, * * *.

      . See note 1 supra.

      . See text of § 7430 in note 1 supra.

      . § 31-307. Compensation for total incapacity
      If any injury for which compensation is provided under the provisions of this chapter results in total incapacity to work, there shall be paid to the injured employee a weekly compensation equal to sixty-six and two-thirds per cent of his average weekly earnings at the time of the injury; but the compensation shall in no case be more than the maximum weekly benefit rate set forth in section 31-309 for the year in which the injury occurred, or less than twenty dollars weekly; and such compensation shall not continue longer than the period of total incapacity. * * *

      . Furthermore, the fact that both the 1958 and the 1961 agreements were “approved” by the Commissioner of Workmen’s Compensation has no legal significance. Tesbmony at trial revealed that so long as such agreements give the employees at least the statutory minimum award, they are “approved”. Clearly, such approval does not imply that the payments provided for in the award are mandated by Connecticut’s Workmen’s Compensation Law.


source: Caselaw Access Project

author: PER CURIAM:

license: Public Domain

text:
    UNITED STATES of America, Appellee, v. Peter Thomas MESSINA, Defendant-Appellant.
    No. 929, Docket 73-1423.
    United States Court of Appeals, Second Circuit.
    Argued May 31, 1973.
    Decided June 27, 1973.
    Certiorari Denied Oct. 23, 1973.
    See 94 S.Ct. 286.
    Robert L. Clarey, Asst. U. S. Atty. (Robert A. Morse, U. S. Atty., E. D. N. Y., L. Kevin Sheridan, Asst. U. S. Atty., of counsel), for appellee.
    Julius A. Itzkowitz, New York City (Henry M. Holzer, New York City, of counsel), for defendant-appellant.
    Before MOORE, FRIENDLY and FEINBERG, Circuit Judges.
   PER CURIAM:

Peter Thomas Messina appeals from a judgment of conviction entered after a trial by jury in the United States District Court for the Eastern District of New York. Appellant was found guilty on Count I of a three-count indictment, which charged him with having conspired with his brother, John Messina, to sell unlawfully counterfeit plates, in violation of 18 U.S.C. §§ 474 and 371. Appellant contends on appeal that (1) Count I of the indictment was fatally defective in that it failed to charge an offense, and failed to furnish a description of the offense sufficient to enable him to prepare a defense and to protect him against future jeopardy; (2) the evidence was insufficient to warrant submission of the case to the jury; and (3) the conviction cannot stand since it was based entirely on the uncorroborated testimony of a co-conspirator. We reject all three contentions and affirm the judgment of conviction.

The facts, briefly stated, are as follows. On September 29, 1971, John Messina was arrested after attempting to sell to undercover Secret Service Agent Albert Angelone, for $35,000, aluminum photo-engraved plates for counterfeiting Ten Dollar Federal Reserve Notes. Later that same day appellant was arrested, on the basis of information provided by John Messina that his brother had provided him with the plates and a number of sample “uncut” and one “cut” counterfeit bills for sale to Agent Angelone. The two brothers were indicted on three counts. Count I, which we discuss infra, charged defendants with conspiring to sell counterfeit plates; the two substantive counts charged them with unlawful possession of plates from which counterfeit bills had been printed, in violation of 18 U.S.C. § 474; and with unlawful possession of a counterfeit Ten Dollar Reserve Note, in violation of 18 U.S.C. § 472. Prior to trial John Messina pleaded guilty to Count I and, after appellant’s trial, was given a suspended sentence and three years’ probation. John Messina testified as a government witness at appellant’s trial.

At trial the government called three witnesses: John Messina and Secret Service Agents Angelone and George J. Opfer. Appellant was the only witness for the defense. John Messina testified that appellant had invited him to join the counterfeiting venture in a telephone call made by appellant in early September, 1971. He further testified that he and his brother thereafter had engaged in a series of meetings and telephone conversations regarding the sale of the counterfeit plates; and that he, John, had met several times with Agent Angelone, who had been introduced to him by a government informant as a potential buyer of the plates. After receiving the plates from appellant, John met with Angelone to complete the sale, whereupon he was promptly arrested. Agent Angelone never met or dealt with appellant.

Agent Angelone’s testimony corroborated that of John Messina, regarding their several meetings and their agreement to sell and puchase the counterfeit plates; Angelone also testified that John Messina made several references to an unnamed accomplice during their negotiations. Agent Opfer testified that, following the arrest of the two brothers, he had overheard a conversation in which John allegedly said to his brother, “Pete, we have to cooperate, * * * [t]hey caught me red-handed with the plates”; to which Peter allegedly replied, “You are the one that got caught. Why did you get me involved. You should take your own medicine. You know what happens to stool pigeons.” (Trial Transcript at 221).

Testifying in his own defense, appellant denied having made the foregoing remarks, denied any involvement whatsoever in the enterprise, and argued that his brother was falsely implicating him in the crime as a result of fraternal animosity of long standing. He further testified that he had “records” at home to prove that he was at work during the time the events of this case occurred; and that, furthermore, he had not even been on speaking terms with his brother during the time period involved. He indicated, however, that it had not occurred to him to produce these records at trial as part of his defense. The jury chose to believe John Messina’s version of the facts, and returned a guilty verdict against appellant on Count I, the conspiracy count, while acquitting on the two substantive counts. Appellant was sentenced to three years’ imprisonment.

Count I of the indictment which appellant challenges on several grounds, provided as follows:

[Between certain dates and within the Eastern District of New York] the defendant PETER MESSINA and the defendant JOHN MESSINA did knowingly and wilfully, conspire to commit an offense against the United States in violation of Title 18, United States Code, § 474, by conspiring to sell with unlawful intent, and not under the direction of the Secretary of The Treasury or other proper office, an impression in the likeness of an obligation of the United States, to wit: a Ten Dollar Federal Reserve Note, in violation of Title 18, United States Code, § 371.
In furtherance of said conspiracy and for the purpose of accomplishing the objective thereof, the defendants committed the following acts. * * *
1. On or about the 28th day of September 1971, within the Eastern District of New York, the defendant PETER MESSINA gave the defendant JOHN MESSINA, a counterfeit plate. •* * *

Count I was based on language appearing in the sixth paragraph of 18 U.S.C. § 474.

Appellant argues first that Count I was defective in not stating the necessary elements of a crime, since it failed to negative the exception, provided in § 474, for sales made to the United States. The cases rejecting this argument are numerous. We deal here with a conspiracy count. The Supreme Court has held that such a count need only “identify the offense which the defendants conspired to commit * * * ”, and that it need not “with technical precision, state all the elements essential to the commission of the [substantive] crimes * * Williamson v. United States, 207 U.S. 425, 447, 28 S.Ct. 163, 171, 52 L.Ed. 278 (1908). In McKelvey v. United States, 260 U.S. 353, 357, 43 S.Ct. 132, 134, 67 L.Ed. 301 (1922) the Court held that “an indictment or other pleading founded on a general provision defining the elements of an offense, * * need not negative the matter of an exception made by a proviso or other distinct clause, whether in the same section or elsewhere, and * * * it is incumbent on one who relies on such an exception to set it up and establish it.” To similar effect is Edwards v. United States, 312 U.S. 473, 482-483, 61 S.Ct. 669, 85 L.Ed. 957 (1941); see also, United States v. Ramzy, 446 F.2d 1184, 1186 (5th Cir.), cert. denied, 404 U.S. 992, 92 S.Ct. 537, 30 L.Ed.2d 544 (1971); Hockenberry v. United States, 422 F.2d 171, 173 (9th Cir. 1970); Tritt v. United States, 421 F.2d 928, 929-930 (10th Cir. 1970); Smith v. United States, 106 U.S.App.D.C. 26, 269 F.2d 217, 220, cert. denied, 361 U.S. 865, 80 S.Ct. 130, 4 L.Ed.2d 108 (1959). It stretches credulity for appellant to argue that he was not fully apprised of the nature of the charge against him because the indictment failed to negative the exception provided. Quite obviously, sale to the United States of materials it needs in printing Federal Reserve Notes is not a crime; and whether or not the exception was negatived in the indictment, appellant was amply informed of the crime with which he was charged.

Appellant’s second and third challenges to the indictment — that the indictment did not furnish a sufficient description of the crime charged to enable him (1) to prepare a defense and (2) to be protected against future jeopardy— are equally without merit. We find no ambiguity in the indictment such as would support the two contentions proffered by appellant. We fail to see how it could not have been obvious to Messina that he was being charged with conspiring to sell unlawfully counterfeit plates (“impressions”) in violation of 18 U.S.C. § 474, since one of the overt acts listed in the conspiracy count was that “the defendant Peter Messina gave the defendant John Messina a counterfeit plate”; since the second count of the indictment charged appellant with possession of “plates from which a counterfeit obligation [was] printed”; and since in requesting in a bill of particulars as to Count I appellant wanted information from the government specifying “[t]he exact locations, including street addresses where the alleged illegal conspiracy took place to sell counterfeit plates.” Appellant was thus provided with specific notice regarding the crime with which he was charged, for purposes of preparing his defense. The specter of future jeopardy which appellant raises is unsupported, since there is little doubt as to the crime for which appellant was indicted and convicted.

Appellant’s remaining arguments on appeal deal with the sufficiency of the evidence upon which he was convicted. It is first alleged that the evidence was not sufficient to prove beyond a reasonable doubt that appellant was involved in the conspiracy, and that, under United States v. Taylor, 464 F.2d 240 (2d Cir. 1972) the case should not have gone to the jury. We disagree. The evidence was ample to enable a reasonable juror “fairly [to] conclude guilt beyond a reasonable doubt”, Taylor, supra, 464 F.2d at 245. In addition to the testimony of the co-conspirator, John Messina, the jury could consider the highly incriminating testimony of Agent Opfer, as well as any inferences arising from appellant’s failure to produce the “records” which he claimed substantiated his alibi.

Appellant’s final argument, that a guilty verdict may not rest upon the uncorroborated testimony of an accomplice, fails in view of this Court’s numerous decisions to the contrary. See, e. g., United States v. Ferrara, 458 F.2d 868, 871 (2d Cir.), cert. denied, 408 U.S. 931, 92 S.Ct. 2498, 33 L.Ed.2d 343 (1972); United States v. Phillips, 426 F.2d 1069, 1071 (2d Cir.), cert. denied, 400 U.S. 843, 91 S.Ct. 86, 27 L.Ed.2d 78 (1970); United States v. Corallo, 413 F.2d 1306, 1323 (2d Cir.), cert. denied, 396 U.S. 958, 90 S.Ct. 431, 24 L.Ed.2d 422 (1969). Moreover, as indicated above, there was corroborating testimony in this case.

Accordingly, we affirm the judgment of conviction.

      . This section provides :
      Whoever prints, photographs, or in any other manner makes or executes any engraving, photograph, print, or impression in the likeness of any such obligation or other security, or any part thereof, or sells any such engraving, photograph, print, or impression, except to the United States, or brings into the United States, any such engraving, photograph, print, or impression, except by direction of some proper officer of the United -States; * * *
      * *
      Shall be fined not more than $5,000 or imprisoned more than fifteen years, or both.

      . Notice of Motion for Bill of Particulars and Discovery and Inspection, dated April 14, 1972, at page 1.


text:
    UNITED STATES of America, Appellee, v. James Edward NEWKIRK, Appellant.
    No. 72-1806.
    United States Court of Appeals, Fourth Circuit.
    Submitted June 25, 1973.
    Decided July 18, 1973.

      Thomas P. McNamara, U. S. Atty., and Joseph W. Dean, Asst. U. S. Atty., on brief, for appellee.
    James R. Rogers, III, Raleigh, N.C., Court-appointed, on brief, for appellant.
    Before WINTER, CRAVEN and BUTZNER, Circuit Judges.
   PER CURIAM:

James Edward Newkirk appeals from a judgment entered on his conviction for robbing a federally insured bank by intimidation and putting a life in jeopardy during the robbery, in violation of 18 U.S.C. § 2113(a) and (d).

Newkirk assigns as reversible error: (1) the government’s failure to prove that he used a dangerous weapon as required by 18 U.S.C. § 2113(d); (2) the court’s instructions relating to the meaning of assault and putting lives in jeopardy; (3) the court’s failure to instruct the jury that they should consider the lack of evidence as well as the evidence actually adduced at trial; and (4) the court’s alleged misstatement of the government’s burden of proof.

Section 2113(d) of Title 18, U. S.C., authorizes an increase in the punishment for the crime of bank robbery if, in the course of the robbery, the defendant “assaults any person, or puts in jeopardy the life of any person by the use of a dangerous weapon or device .” Newkirk contends that the evidence in the present case was insufficient to establish that the gun allegedly used by the robber was a dangerous weapon, because there was no showing that the gun was loaded or capable of being fired.

Mrs. Joy Creech, a teller at the First National Bank of Smithfield, North Carolina, testified that on the morning of April 19, 1971, an unmasked man violently pushed open the door of the bank, walked directly to her teller window, and told her that a stick up was in progress. She testified that she did not believe him until he pulled a gun and pointed it at her and handed her a brown paper bag, which he ordered her to fill with ten and twenty dollar bills. Mrs. Creech described the gun as a dark steel, long barreled .38 caliber revolver.

Controlling here is United States v. Shelton, 465 F.2d 361 (4 Cir. 1972), in which we held that “ ‘the pointing by a bank robber of a sawed-off shot-gun at bank employees in the course of a robbery, menacingly and with an implied threat to use it (as in this case), is a sufficient basis for a jury to find that the lives of such employees were placed in jeopardy and that an aggravated assault of the type contemplated under Section 2113(d) was committed, irrespective of whether there was any proof that the gun was loaded or fired during the robbery.’ ” (Emphasis added.) Id. at 362-363. In the instant case, therefore, proof that the gun was loaded or capable of firing was not required in order to sustain a conviction of assaulting or placing in jeopardy the life of Mrs. Creech.

Newkirk contends that there was prejudicial error in those portions of the district court’s instructions relating to the meaning of assault and putting a life in jeopardy. Because New-kirk’s counsel made no objection to these instructions at trial, they cannot constitute a basis for reversal unless they were plain error. Fed.R.Crim.P. 30, 52(b); United States v. Smith, 435 F.2d 832 (5 Cir. 1970). In view of our holding in United States v. Shelton, supra, that the government is not required to prove that the weapon used in a robbery was capable of putting the lives of bank employees in actual, as opposed to apparent, jeopardy, we conclude that the trial court’s instructions did not constitute plain error. See United States v. Cooper, 462 F.2d 1343 (5 Cir. 1972); United States v. Beasley, 438 F.2d 1279 (6 Cir.), cert. denied, 404 U.S. 866, 92 S.Ct. 124, 30 L.Ed.2d 110, reh. denied, 404 U.S. 1006, 92 S.Ct. 566, 30 L.Ed.2d 559 (1971); Baker v. United States, 412 F.2d 1069 (5 Cir. 1969), cert. denied, 396 U.S. 1018, 90 S.Ct. 583, 24 L.Ed.2d 509 (1970).

There is no merit to Newkirk’s contention that the trial court erred in failing to instruct the jury that they should consider the lack of evidence in addition to the evidence in determining guilt or innocence. The decision whether or not to give this instruction is within the sound discretion of the trial judge. United States v. Hephner, 410 F.2d 930, 934 (7 Cir. 1969).

Newkirk’s final contention is that the district court committed prejudicial error in charging the jury that “if the jury should unanimously find the accused not guilty of the crime charged in Count 2, then the jury must proceed to determine the guilt or innocence of the accused as to any. lesser offense” and further that if they “should find from the evidence and beyond a reasonable doubt that the defendant was not guilty of the offense contained in the First Count, then it would reasonably follow that he could not be guilty of the offense charged in the Second Count . . . .” This language, of course, erroneously stated the government’s burden of proof in a criminal case. However, because counsel for Newkirk did not object to this part of the charge as required by Rule 30 of the Federal Rules of Criminal Procedure, we must find plain error to reverse on this ground. United States v. Smith, 435 F.2d 832 (5 Cir. 1970). Except for the language quoted above, the district court repeatedly advised the jury that the government had the burden of proving every essential element of the crime charged beyond a reasonable doubt. Additionally, the court fully advised the jury of the presumption of innocence in favor of the defendant. We therefore conclude that plain error was not committed.

Accordingly, we dispense with oral argument and affirm the judgment below.

Affirmed.

      . Now, any willful attempt or threat to inflict injury upon the person of another, when coupled with an apparent present ability to do so, or any intentional display of force such as would give the victim reason to fear or expect immediate bodily harm, constitutes an assault.
      So, a person who has the apparent present ability to inflict bodily harm or injury upon another person, and willfully attempts or even threatens to inflict such bodily harm, as by intentionally flourishing or pointing a pistol or gun at another person, may be found to have assaulted such person.
      Now, a dangerous weapon or device includes anything capable of being readily operated, manipulated, wielded, or otherwise used by one or more persons to inflict severe bodily harm or injury upon another person.
      So, an operable firearm, such as a pistol, revolver, or other gun, capable of firing a bullet or other ammunition, may be found to be a dangerous weapon or device.
      To put in jeopardy the life of a person by the use of a dangerous weapon or device means, then, to expose such person to a risk of death or to the fear of death, by the use of such dangerous weapon or device.


author: HEANEY, Circuit Judge.

text:
    UNITED STATES of America, Appellant, v. Gerald Frank KROLL, Appellee.
    No. 73-1058.
    United States Court of Appeals, Eighth Circuit.
    Submitted May 18, 1973.
    Decided July 10, 1973.

      Sheryle L. Randol, Asst. U. S. Atty., Kansas City, Mo., for appellant.
    Joseph J. Mulvilhill, Kansas City, Mo., for appellee.
    Before VAN OOSTERHOUT, Senior Circuit Judge, HEANEY, Circuit Judge, and TALBOT SMITH, Senior District Judge.

       Eastern District of Michigan, sitting by designation.

   HEANEY, Circuit Judge.

At issue in this case is the validity of a warrantless search of an attache case which the defendant was about to carry aboard a commercial airliner. The search, conducted by a United States Marshal, turned up a small quantity of an amphetamine, and the defendant was charged with possession of a controlled substance in violation of 21 U.S.C. § 844(a).

The District Court, 351 F.Supp. 148, found the following facts with respect to the search:

“* * [0]n July 11, 1972, about 1:00 p. m., the defendant purchased a ticket for TWA Flight #338 to Chicago, Illinois. The ticket seller, through some process which was not fully described, determined that the defendant was a possible hijacker and asked him to produce his driver’s license for identification. The number of the driver’s license was written on the defendant’s ticket, which was notice to the passenger security detail at the boarding gate that the defendant fit the hijacker profile and should be searched.
“The defendant then went to Gate 12 and was checked in. He then passed through the magnetometer, which was activated by the metal hinges and lock on the attache case he carried. The TWA security agent directed him to place the attache case on a table and open it for inspection. A United States Marshal was working with the TWA agent and watched the search. The Marshal became suspicious because the defendant did not open the file section in the upper part of the attache case and he stepped up, identified himself as a United States Marshal and directed the defendant to open the file section. In the file section the Marshal could observe part of an ordinary white business envelope approximately 9% inches x 4 inches. The envelope, in the condition it existed in the attache case, was introduced in evidence and examined by the Court. It was light in weight, had a very small bulge, approximately % inch thick and 2 inches across, at one end of the envelope and was otherwise limp and flat. The Marshal felt that the actions of the defendant were ‘suspicious’ and, therefore, asked the defendant to empty the contents of the envelope into the case. The envelope contained a small plastic bag, which contained the amphetamine, and a partly-consumed marijuana cigarette.”

After an evidentiary hearing, the District Court granted the defendant’s pretrial motion to suppress the amphetamine, holding that while it was reasonable to inspect the defendant’s attache case, it was not reasonable to inspect the contents of the envelope. The government has appealed.

Because the search was conducted without a warrant, the government is required to show that it was justified by exceptional circumstances. It attempts to meet this burden by contending, first, that the defendant consented to the search and, second, that it was a reasonable search for weapons or explosives.

I. Consent.

The burden is upon the government to prove that “consent was, in fact, freely and voluntarily given.” Bumper v. North Carolina, 391 U.S. 543, 548, 88 S.Ct. 1788, 1792, 20 L.Ed.2d 797 (1968). To sustain its burden, the government points out that warnings were posted at the airport advising passengers that they were subject to being searched prior to boarding aircrafts. It reasons that:

“ * * [W]here a person is clearly warned in advance that he will be searched and he still has time to withdraw as defendant did here, his conduct in seeking to board the plane must be inferred to include a free, voluntary and intelligent consent to be searched.”

The District Court found that this did not constitute consent “in any meaningful sense.” We agree. Compelling the defendant to choose between exercising Fourth Amendment rights and his right to travel constitutes coercion; the government cannot be said to have established that the defendant freely and voluntarily consent to the search when to do otherwise would have meant foregoing the constitutional right to travel. United States v. Meulener, 351 F.Supp. 1284, 1288 (C.D.Cal.1972); United States v. Lopez, 328 F.Supp. 1077, 1093 (E.D.N.Y.1971).

II. Search for Weapons and Explosives.

The District Court found that no grounds had been established for believing that the defendant was carrying explosives or weapons, but stated that the inspection of the attache case was justified by the danger of air piracy. It held, however, that inspection of the envelope’s contents exceeded the scope of the search permissible under the circumstances. See, Terry v. Ohio, 392 U.S. 1, 18-20, 88 S.Ct. 1868, 20 L.Ed.2d 889 (1968).

The District Court stated:

“The Court concedes the difficulty in defining precisely what constitutes a [permissible] search. For our purposes, however, we will say that a [permissible] search is an inspection of that which may reasonably be deemed to conceal a weapon or explosives, Reasonableness, in this context, is a matter of probabilities. For instance, a shoe box in a suitcase is as likely a container for a handgun as the suitcase itself. On the other hand, a lipstick tube in a woman’s purse, though it is certainly possible, is not a likely container for nitroglycerin. * * *
“The need to search, however, may be enhanced by additional facts of which the searching officer is aware. That is to say, the generalized need to search can become particularized as additional facts become operative. For instance, if the searching officer finds an unusual device in a suitcase and the passenger cannot give an acceptable explanation for its presence, suspicions are reasonably raised and the need to search farther and more closely is enhanced. In this manner, a greater intrusion into a passenger’s privacy is offset by a greater need to search. Simply put, an officer is limited at the initial stage by the probabilities of a situation and reasonable suspicion is required before the search may be expanded.” (Emphasis included.)

The District Court then held that the probabilities of the situation were such that searching the envelope was unreasonable. It reasoned that given the size and condition of the envelope, and the small size of the bulge therein, the government had not established that it was reasonable to believe that it could contain a weapon or explosives — given the state of the art of miniaturization existing at the time of the search.

We agree with the District Court. The Marshal’s subjective testimony, based on his limited military experience, that nitroglycerin or other explosives could have been placed in the envelope was not sufficient under the circumstances to establish that it was reasonable to examine the envelope’s contents. Indeed, his objective behavior at the time he requested the defendant to empty the envelope is consistent with the trial court’s conclusion that the Marshal “was not searching for weapons of any kind that could be used to hijack the plane but was searching for contraband.” If he, in fact, seriously believed that weapons or explosives were in the envelope, it is likely that he would have cleared the area of other persons, or have taken the case and envelope to an area away from the people.. Compare, United States v. Moreno, 475 F.2d 44 (5th Cir. 1973); United States v. Lindsey, 451 F.2d 701 (3rd Cir. 1971).

Furthermore, in this case, nothing developed during the course of inspecting the attache case to suggest that it contained weapons or explosives. The Marshal testified that he became suspicious because the defendant held the file section of the attache case closed and because the defendant shifted the case’s position as the Marshal approached. We agree with the District Court that these gestures did not supply a sufficient evidentiary justification for believing that the defendant was transporting explosives or weapons. The gestures were ambiguous at best, and could just as easily have been the instinctive response of an innocent person protecting his privacy as a “guilty” person protecting weapons or explosives from discovery.

Affirmed.

      . There is no dispute that the search in the present ease was a governmental one, subject to the Fourth Amendment. Compare, United States v. Wilkerson, 478 F.2d 813 (8th Cir. 1973) ; United States v. Echols, 477 F.2d 37 (8th Cir. 1973) ; United States v. Burton, 475 F.2d 469 (8th Cir. 1973).

      . It might be suggested that a prospective airline passenger will not actually be deprived of his right to travel because there are alternative means of travel available. We do not find this argument persuasive “since, in many situations, flying may be the only practical means of transportation.” McGinley & Downs, Airport Searches and Seizures — A Reasonable Approach, 41 Fordham L.Rev. 293, 322 (1972).

      . That this clanger without more is sufficient to justify warrantless airport searches was rejected in United States v. Moreno, 475 F.2d 44, 47 (5th Oir. 1973) (dictum). But see, United States v. Bell, 464 F.2d 667, 675 (2nd Cir. 1972) (Friendly, J., concurring). It is not necessary for us to resolve this issue in this opinion. See, United States v. Wilkerson, supra (Heaney, J., concurring).

      . The District Court noted in an amendment to its opinion that its opinion was based on:
      “ * * * the present state of the art of miniaturization of dangerous explosive devices, based on all the information possible to secure at this time. * * * [It further noted that it was] entirely conceivable that miniaturization of explosives of sufficient force to constitute a threat to an aircraft could, in the future, be developed to a degree that [might] invalidate the principles expressed [in its opinion].”
      Our holding is similarly limited.


author: FEINBERG, Circuit Judge:

text:
    UNITED STATES of America, Appellee, v. Raimundo HUGUET, Defendant-Appellant.
    No. 1001, Docket 73-1101.
    United States Court of Appeals, Second Circuit.
    Argued June 18, 1973.
    Decided July 9, 1973.
    Helena Pichel Solleder, New York City, for defendant-appellant.
    Nicholas Figueroa, Asst. U. S. Atty. (Paul J. Curran, U. S. Atty., S. D. N. Y., John W. Nields, Jr., Asst. U. S. Atty., on the brief), for appellee.

      Before FRIENDLY, FEINBERG and MANSFIELD, Circuit Judges.
   FEINBERG, Circuit Judge:

After a one-day, non-jury trial in the United States District Court for the Southern District of New York before Marvin E. Frankel, J., Raimundo Huguet was convicted of selling cocaine not pursuant to a written order form, in violation of 26 U.S.C. § 4705(a), and conspiring to violate the federal narcotics laws, 21 U.S.C. §§ 173, 174. Judge Frankel sentenced Huguet to concurrent five-year sentences on each count, on the assumption that a five-year minimum sentence was mandatory. On this appeal, Huguet raises a number of points: Most relate to the trial or proceedings leading up to it; one goes to the question of Huguet’s eligibility for parole. For reasons set forth below, we affirm.

I

The judge, as trier of fact, was entitled to find the following from the evidence: In April 1969, an informer introduced Special Agent Dennis Nargi to Huguet, a merchant seaman, as part of an undercover investigation of the illegal importation of narcotics. At Nargi’s request, Huguet promptly agreed to supply some cocaine to the agent for $2,200; they met again a few days later, and a few days after that the transaction took place between them. Appellant claims that as a matter of law he was entrapped by Nargi and the informant, who allegedly had to entreat him repeatedly to procure some cocaine. However, there is no need to summarize in detail the conflicting stories of appellant and the agents because the trial judge, as he surely had the power to do, found Huguet’s version “totally incredible.” Huguet claims that there was no evidence of his predisposition to sell the cocaine, but the record belies this — e.g., Huguet displayed no hesitation in agreeing to sell, and during the transaction he used a term of the trade (the cocaine “could take at least a two to one cut”).

Similarly unimpressive are appellant’s claims that there was no proof that the cocaine had been imported or that he had been aware of such importation. Evidence was presented that South America is the main source of illegally imported cocaine, that Huguet was a merchant seaman, that he had recently returned from a voyage on a ship that made frequent visits to South America, that Huguet had told Nargi that even though he would not be shipping out for two weeks, he could get Nargi “an % of a kilo of cocaine,” and that the next time he shipped out he would be able to bring back at least a half kilogram. This was ample to support a finding that the cocaine sold by Huguet to Nargi had been illegally imported and that Huguet had known of this fact. Huguet argues that use of the presumption contained in former 21 U.S.C. § 174 was improper, distinguishing United States v. Gonzalez, 442 F.2d 698, 705 (2d Cir.) (en banc), cert. denied, 404 U.S. 845, 92 S.Ct. 146, 30 L. Ed.2d 81 (1971), and United States v. Vargas, 443 F.2d 901 (2d Cir. 1971). But there is no indication that the judge, as trier of fact, used the presumption, and good reason to believe that he did not: The evidence, as we have noted, was more than sufficient on these issues without resort to the presumption, the issue whether the presumption could be used was not raised in the trial court, and the judge never referred to the presumption. Under these circumstances, we see no need to consider even the alternative procedure mentioned in Vargas of remanding to the trial judge “with directions to make a finding concerning knowledge of illegal importation without reliance on the statutorily permitted inference.” 443 F.2d at 903. Huguet claims that the absence of special findings supports the conclusion that the presumption was used. On this record, the contrary conclusion is justified.

Huguet also contends that the “unreasonable” delay between his indictment and trial violated this court’s Rules Regarding Prompt Disposition of Criminal Cases. As indicated, although Huguet was indicted in February 1970, he was not tried until November 1972. The record reveals that a bench warrant for his arrest was issued shortly after the indictment had been filed, and was returned unexecuted the following month; Huguet was finally arrested in August 1972. Since in the interim co-defendant Garcia was promptly tried and convicted, see note 1, supra, it appears that the delay in Huguet’s trial resulted from the Government’s inability to find him. Huguet argues to us that the Government could easily have located him at all times because he had been working since 1969 as a licensed taxicab driver, and that there was no proof that he knew of the indictment or the outstanding, warrant for his arrest. The issue of pre-trial delay was not raised in the district court, and thus the Government never had an opportunity to relate what its efforts had been to find Huguet, and the trial judge, of course, never passed on that issue. Under the circumstances, we decline to consider the matter.

II

We come now to the only potentially substantial question in the case: whether the no-parole requirement of 26 U.S. C. § 7237(d) will prevent Huguet from obtaining parole under the general parole statute, 18 U.S.C. § 4202. Since section 7237(d) was repealed as of May 1, 1971 by the Comprehensive Drug Abuse Prevention and Control Act (Drug Control Act), §§ 1101(a)(2), (b) (4) (A), 84 Stat. 1291, 1292, appellant argues that section 7237(d) should not bar parole for him when he becomes eligible for such treatment after service of one-third of his sentence. The Government says that since appellant’s crime was committed under the old narcotics law, section 7237(d) is still applicable to him under either the savings clause of the Drug Control Act itself, or the general federal statutory savings clause, or both. At first blush, the point seems largely foreclosed by our decisions in United States v. De Simone, 468 F.2d 1196 (2d Cir. 1972), cert. denied, 410 U.S. 989, 93 S.Ct. 1499, 36 L.Ed.2d 188 (1973), and United States v. Ross, 464 F.2d 376 (2d Cir. 1972), particularly the former. Appellant asserts, however, that in those cases we were concentrating upon the availability of early parole as an option to the sentencing judge under 18 U.S.C. § 4208(a), which appellant labels “judicial” parole, rather than upon “administrative” parole by the Parole Board, for which a prisoner becomes eligible when he has served one-third of his sentence. 18 U.S.C. § 4202; see note 7 supra.

It is true that neither in De Simone nor in Ross had the appellant come close to serving one-third of his sentence, so that, strictly speaking, consideration of the issue may have been premature. But our words in De Simone were directed to the point appellant now raises, see 468 F.2d at 1198-1199, and, in view of the later denial of certiorari in that case, we normally would not lightly disregard our prior observations, whether or not they be characterized as dicta, obiter or otherwise. The foregoing assumes, however, that the slate is otherwise clean, whereas in this instance there is a rather large entry upon it in the form of United States v. Bradley, 410 U.S. 605, 93 S.Ct. 1151, 35 L.Ed.2d 528 (1973), to which we now turn.

In Bradley, decided four months after De Simone, a majority of the Court emphasized the very distinction appellant presses upon us, holding that section 1103(a) of the Drug Control Act preserves the limitations of § 7237 on decisions made at the time of sentence for violation of the former drug laws, e. g., whether to suspend sentence, or utilize probation, or impose a prison term. 93 S.Ct. 1151. As to these determinations, the portions of section 7237 that barred suspension of sentence or use of probation and that required a minimum five-year prison term were still effective. Thus, the sentencing judge still could not “make early parole available under § 4208(a).” Id. The Court took pains to point out, however, that whether the judge could, under section 4208(a), “specify at the time of sentencing that the offender may be eligible for early parole,” id., 93 S.Ct. at 1155, was “a rather different matter” from the “availability of parole under the general parole statute, 18 U.S.C. § 4202,” at a later time:

The decision to grant parole under § 4202 lies with the Board of Parole, not with the District Judge, and must be made long after sentence has been entered and the prosecution terminated. Whether § 1103(a) or the general savings statute, 1 U.S.C. § 109, limits that decision is a question we cannot consider in this case.

93 S.Ct. at 1156 & n. 6. In light of the Court’s ruling, any previous expressions of ours on this subject cannot be regarded as controlling.

For the same reasons, we have concluded that we cannot now decide the issue. At no time in the proceedings before Judge Frankel was the question of “administrative” parole considered. The judge, sua sponte, raised the issue whether a minimum sentence of five years was mandatory, and concluded that under the law in this circuit it was, a view later confirmed in Bradley. The judge also made clear that even if that were not so, Huguet deserved “some substantial term of imprisonment” and that it did not necessarily follow that in such a case the judge would impose less than the five-year term already meted out to co-defendant Garcia, since Huguet was “probably more culpable.” It seems clear, then, that even “judicial” parole under 18 U.S.C. § 4208(a) was not considered and that the issue of subsequent “administrative” parole under 18 U.S.C. § 4202 was not raised at all, as under Bradley it could not have been. The Government suggests in its brief that Huguet be required to bring an action against the Parole Board “should it refuse to consider him for parole after one-third of his sentence has expired.” We think the suggestion a good one, although we express no view as to whether Huguet need wait that long.

Judgment affirmed.

      . Accompanying Huguet to that final meeting was one Jose Garcia, who was indicted along with Huguet in February 1970 and convicted on both counts two months later. The conviction was affirmed in open court on November 11, 1970. Huguet’s trial was held much later for reasons indicated in the text, infra.

      . Even if true, this contention would not affect the validity of appellant’s conviction on the first count, as importation and knowledge thereof are not required for a violation of 26 U.S.C. § 4705(a).

      . Huguet, of course, could have requested special findings under Fed.R.Crim.P. 23(c), but did not do so.

      . We note in passing that the judge who tried the case against Huguet’s co-defendant, Garcia, did specifically find that the cocaine had been illegally imported and that Garcia had known of this fact. Transcript of April 3, 1970, at 95, United States v. Garcia, 70 Cr. 78 (S.D.N.Y. 1970) (findings of Judge Ryan). See note 1 supra.

      . Huguet also argues that the trial judge erred -in overruling his objection to the Government’s cross-examination of him concerning his contacts with Garcia after April 10, 1969. The ruling was not an improper exercise of the trial judge’s discretion.

      . Upon conviction—
      (1) of any offense the penalty for which is provided in subsection (b) of this section, subsection (c), (h), or (i) of section 2 of the Narcotic Drugs Import and Export Act, as amended, or such Act of July 11, 1941, as amended,
      sis j{s % %
      the imposition or execution of sentence shall not be suspended, probation shall not be granted and in the case of a violation of a law relating to narcotic drugs, section 4202 of title 18, United States Code, . . . shall not apply.
      The five-year mandatory minimum for violation of 26 U.S.C. § 4705(a) was established by 26 U.S.C. § 7237(b). The same required term of imprisonment for violation of 21 U.S.C. §§ 173, 174 was included in § 174.

      . A Federal prisoner, other than a juvenile delinquent or a committed youth offender, wherever confined and serving a definite term or terms of over one hundred and eighty days, whose record shows that he has observed the rules of the institution in which he is confined, may be released on parole after serving one-third of such term or terms . . .

      . Prosecutions for any violation of law occurring prior to the effective date of section 1101 [repealing, inter alia, 21 U.S.C. §§ 173, 174, 26 U.S.C. §§ 4705, 7237] shall not be affected by the repeals or amendments made by such section ... or abated by reason thereof.
      Drug Control Act § 1103(a), 84 Stat. 1294.

      . The repeal of any statute shall not have the effect to release or extinguish any penalty, forfeiture, or liability incurred under such statute unless the repealing Act shall so expressly provide, and such statute shall be treated as still remaining in force for the purpose of sustaining any proper action or prosecution for the enforcement of such penalty, forfeiture, or liability.
      1 U.S.C. § 109.

      . We are informed that appellant has filed a motion under Fed.R.Crim.P. 35 in the district court, seeking an order specifying that he be “considered a Parole eligible narcotics offender,” and that no disposition of that motion has yet been made. Whether such a motion for modification of “sentence” is a proper vehicle for consideration of the availability of “administrative” parole is not before us on this appeal.

      . See note 1 supra.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. William Alex ROBERTS, Defendant-Appellant.
    No. 73-1406
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    July 17, 1973.

      Roy N. Newman, Rome, Ga., (court appointed) for defendant-appellant.
    John W. Stokes, Jr., U. S. Atty., Richard H. Still, Asst. U. S. Atty., Atlanta, Ga., for plaintiff-appellee.
    Before WISDOM, AINSWORTH and CLARK, Circuit Judges.

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

   PER CURIAM:

William Alex Roberts was convicted of a robbery of a federally insured bank in violation of 18 U.S.C. § 2113(a). We affirm his conviction.

The First National Bank of Dalton, Georgia, was robbed by four men, two of whom were armed and one of whom was wearing a stocking mask over his face. The three unmasked robbers pled guilty to the offense. The primary issue in the trial below was the identification of Roberts as the fourth participant. Five eye-witnesses who were present in the bank were unable to identify unequivocally Roberts as the masked robber. A sixth witness, Mrs. Gentry, who observed the robbers after they had exited from the bank, testified that Roberts resembled the driver of the get-away car.

The appellant contends that the identification testimony here was so equivocal as to entitle him to a directed verdict of acquittal. We disagree. It is a basic rule of evidence that witnesses need not assert that they are certain of their identification beyond a reasonable doubt. Smith v. United States, 358 F.2d 695 (5th Cir.), cert. denied, 384 U.S. 971, 86 S.Ct. 1862, 16 L.Ed.2d 682 (1966). However, where all the eyewitnesses to the commission of the offense express substantial doubt about their identification of the defendant, the government must present some connecting or corroborating evidence in order to sustain a conviction. United States v. Musquiz, 445 F.2d 963 (5th Cir. 1971); United States v. Johnson, 427 F.2d 957 (5th Cir. 1970). In the present case two eyewitnesses, including Mrs. Gentry and a bank employee, testified that Roberts resembled the fourth robber. In addition to this testimony, the trial record shows that the appellant’s fingerprint was found on the get-away car and that on the day following the robbery Roberts was in the unexplained possession of a large amount of cash money. This circumstantial evidence, coupled with the general testimony relative to identification of the appellant, was sufficient to carry the government’s case to the jury. Cf. United States v. Rogers, 455 F.2d 407, 410 (5th Cir. 1972).

Roberts contends that the trial court committed error when it ordered him, at the government’s request, to place the stocking mask worn during the robbery over his face in order to give one witness an opportunity to testify on the similarity of his appearance in this condition to that of the masked robber. The Supreme Court has long held that the Fifth Amendment privilege against self-incrimination offers no protection against compulsion to don an item of apparel worn by the person committing the offense in order to facilitate identification. Holt v. United States, 218 U.S. 245, 252-53, 31 S.Ct. 2, 6, 54 L.Ed. 1021 (1910); see Schmerber v. California, 384 U.S. 757, 763-64, 86 S.Ct. 1826, 1832, 16 L.Ed.2d 908 (1966); 8 Wig-more on Evidence § 2265, at 394 (McNaughton rev. 1961).

We reject the appellant’s contention that the government was required to produce additional individuals wearing similar masked garb to stand with the defendant for comparative identification during this in-court procedure. See United States v. Williams, 436 F.2d 1166, 1168-69 (9th Cir. 1970), cert. denied, 402 U.S. 912, 91 S.Ct. 1392, 28 L.Ed.2d 654 (1971); United States v. Moss, 410 F.2d 386, 387 (3rd Cir.), cert. denied, 396 U.S. 993, 90 S.Ct. 488, 24 L.Ed.2d 455 (1969). The court offered to permit the defense to bring into court additional individuals in masked disguise for the purpose of testing the reliability of the witness' identification of the appellant and that this offer was refused.

The trial court’s action in admitting a pistol identified as being similar to that carried by one of the three unmasked robbers was without error. The appellant was charged both as a principal and as an aider and abetter of the other participants in the robbery. The weapon was relevant to prove intimidation which is a necessary element of the offense under 18 U.S.C. § 2113(a).

Roberts asserts he was entitled to a mistrial because, in response to a question of whether she saw any of the robbers in the courtroom, one of the government witnesses identified one of the former codefendants who had pled guilty and was observing the trial as a spectator from the rear of the courtroom. The appellant wholly fails to explain how this identification of another person prejudiced him. The record also shows that the appellant did not object to this eodefendant remaining in the courtroom during the identification and' that the appellant did not move for a mistrial on this ground until after the jury had returned* its guilty verdict. This belatedly raised point provides no ground for a reversal on appeal.

Finally, Roberts contends that he was prejudiced by the prosecutor’s closing argument during which he incorrectly stated that Mrs. Gentry had positively identified the appellant as one of the robbers in the get-away car. Any adverse effect of this remark was removed by the prompt action of the trial court. Upon defendant’s objection, the court admonished the prosecutor and reminded the jury that Mrs. Gentry had not positively identified the appellant. The court’s corrective commentary on the evidence at least effectively denuded the prosecutor’s misstatement of any prejudice, if it did not affirmatively aid the defendant.

The conviction is

Affirmed.

      . Roberts also attacks the admission of this fingerprint testimony. It is true that his fingerprint could have gotten on the getaway vehicle in a completely innocent manner since Roberts knew the owner of the car prior to the crime. However, in view of testimony as to the freshness of the print, an inference of guilt could also be drawn. This made it a matter for the jury to consider. If the jury chose to accept this latter inference, it would constitute probative circumstantial evidence which could be placed in the identification equation. Its admissibility clearly does not turn upon whether standing alone the evidence would be sufficient to sustain a conviction. Compare United States v. Collon, 426 F.2d 939, 941-942 (6th Cir. 1970).


text:
    UNITED STATES of America, Plaintiff-Appellee, v. Carl Levern ROGERS, Defendant-Appellant.
    No. 73-1518
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Aug. 14, 1973.
    Rehearing and Rehearing En Banc Denied Nov. 5, 1973.
    Raymond R. Epps, Houston, Tex., court-appointed, for defendant-appellant.
    Anthony J. P. Farris, U. S. Atty., James R. Gough, Asst. U. S. Atty., Houston, Tex., for plaintiff-appellee.
    Before BELL, GODBOLD and IN-GRAHAM, Circuit Judges.

       Rule 18, 5 Cir.; See Isbell Enterprises, Inc. v. Citizens Casualty Co. of New York et al., 5 Cir., 1970, 431 F.2d 409.

   PER CURIAM:

In compliance with the mandate set forth in Anders v. California, 386 U.S. 738, 87 S.Ct. 1396, 18 L.Ed.2d 493 (1967), we have carefully reviewed this cause in its entirety, and conclude that there is no arguable merit in the appeal. It is therefore ordered that the motion filed by Ray Epps, counsel who ably represented the defendant at trial, for leave to withdraw as court-appointed counsel for appellant is granted and the appeal is dismissed as frivolous. See • Local Rule 20. See also United States v. King, 456 F.2d 1243 (5th Cir., 1972); United States v. Mills, 446 F.2d 1397 (5th Cir., 1971) ; United States v. Minor, 444 F.2d 521 (5th Cir., 1971).

      . The possible issues which could be raised on appeal are as follows: (1) that the trial court erred in denying defendant’s motion for a severance; (2) that defendant was denied the presence of counsel at post indictment lineups; (3) that in-court identifications of the defendant were tainted by illegal lineups; and (4) that defendant was denied the effective assistance of counsel. An examination of the record reveals that these issues are without merit and that defendant received a fair trial.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. Pedro M. MARTINEZ et al., Defendants-Appellants.
    No. 71-1673.
    United States Court of Appeals, Fifth Circuit.
    Aug. 6, 1973.
    William G. Earle, Miami, Fla., for defendant-appellant Martinez.
    George D. Gold, Miami, Fla., court-appointed, for defendant-appellant Walters.
    Joseph A. Varón, Hollywood, Fla., John W. Prunty, Miami, Fla., Edward M. Kay, Hollywood, Fla., for defendant-appellant Berman.
    Robert W. Rust, U. S. Atty., Neal R. Sonnett, Asst. U. S. Atty., Miami, Fla., for plaintiff-appellee.
   ON PETITION FOR REHEARING (Opinion Sept. 11, 1972, 5 Cir. 1972, 466 F.2d 679).

Before WISDOM, GODBOLD and RONEY, Circuit Judges.

PER CURIAM:

Pedro M. Martinez asserts in his Petition that this Court was in error in finding that Teresa’s testimony was introduced by the Government for the sole purpose of showing intent and knowledge on the part of Berman and that the testimony was thus limited by the Court,

The record demonstrates that the District Court did so instruct the jury:

“[S]ince the other defendants were not present and had no participation in those conversations, are admitted against Mr. Berman alone and they are not to be considered by you as evidence against either of the other two defendants, Mr. Martinez and Mr. Walters.”

Since the District Court limited the use of Teresa’s testimony to the case against Berman, it is a matter of no concern to Martinez.

Barnes v. United States, 412 U.S. 837, 93 S.Ct. 2357, 37 L.Ed.2d 380 [1973], has now resolved against the appellant the argument for rehearing based on United States v. Cameron, 460 F.2d 1394 (5th Cir. 1972).

It is ordered that the petition for rehearing filed on behalf of Pedro M. Martinez in the above entitled and numbered cause be and the same hereby is denied.

On Petition for Rehearing and Petition for Rehearing En Banc

Berman reasserts in his Petition for Rehearing and Petition for Rehearing En Banc his contention that Teresa’s testimony should not be admitted at all, but we have previously decided that this evidence was properly admitted against him.

Barnes v. United States, 412 U.S. 837, 93 S.Ct. 2357, 37 L.Ed.2d 380 [1973], has now resolved against the appellant the argument for rehearing based on United States v. Cameron, 460 F.2d 1394 (5th Cir. 1972).

The Petition for Rehearing filed on behalf of Bernard Berman is denied and no member of this panel nor Judge in regular active service on the Court having requested that the Court be polled on rehearing en banc, (Rule 35 Federal Rules of Appellate Procedure; Local Fifth Circuit Rule -12) the Petition for Rehearing En Banc is denied.


author: PER CURIAM: DAVIS, Commissioner:

text:
    Mrs. Winston CALDWELL, Administratrix, and James J. Shanley v. The UNITED STATES.
    No. 326-70.
    United States Court of Claims.
    June 20, 1973.
    French Caldwell, attorney of record, for plaintiffs. Paul T. O’Neil and Shanley & O’Neil, Washington, D.C., of counsel.
    Michael W. Werth, Washington, D.C., with whom was Asst. Atty. Gen. Harlington Wood, Jr., for defendant.
    Before COWEN,- Chief Judge, and DAYIS, SKELTON, NICHOLS, KASHIWA, KUNZIG, and BENNETT, Judges.
   OPINION

PER CURIAM:

This case comes before the court on plaintiffs’ exceptions to a recommended decision filed July 24, 1972, by former Trial Commissioner James F. Davis pursuant to Rule 134(h). The court has considered the case on the briefs and oral argument of counsel. Since the court agrees with the decision, as hereinafter set forth, it hereby affirms arid adopts the same as the basis for its judgment in this case. Therefore, plaintiffs are not entitled to recover and plaintiffs’ petition is dismissed.

OPINION OF COMMISSIONER

DAVIS, Commissioner:

This is a patent suit under 28 U.S.C. § 1498. Plaintiffs seek to recover “reasonable and entire compensation” for alleged unauthorized use by defendant, the United States, of inventions described and claimed in U.S. Patent Re 24,879 (the ’879 patent or the patent in suit), entitled “Method and Apparatus for Converting Heat Directly Into Electricity.” The ’879 patent was granted to plaintiffs in 1960 on an application filed in 1958 and is a reissue of U.S. Patent 2,759,112 (the ’112 patent) granted to the inventor, Winston Caldwell, in 1956 on an application filed in 1953. The ’879 patent relates to thermionic converters which are devices for directly converting heat into electricity. There are 25 patent claims. Only claims 1, 2, 16, 17, and 21 are in issue. Claim 1 is a method claim while the others define apparatus. Plaintiffs contend that the claims in issue are infringed by thermionic converter devices supplied to agencies of the United States (NASA, AEC and the military services) by various manufacturers. The accused devices, most of which may be characterized as “cesium thermionic converters,” are described in detail in findings 32-38.

Defendant raises the usual issues of patent invalidity and noninfringement. Principal defenses are that the claims are invalid because they define inventions which are “anticipated” under 35 U.S.C. § 102 or “obvious” under 35 U.S.C. § 103, in view of prior art references, most of which were not considered by the Patent Office. Defendant also contends that the patent is invalid under 35 U.S.C. § 112 because it does not “disclose an operative embodiment to carry out * * * [the] invention.” Further, defendant says that there is no infringement because the claims, properly construed, do not read on the accused devices; and, in any event, such devices were used by the United States only in “experimental” programs of thermionic converter development ancl were not used in any practical applications. For reasons discussed below, I hold that the patent claims, construed in light of the disclosure and the prior art, are invalid under 35 U.S.C. § 103. It is therefore unnecessary to consider other issues. Dow Chem. Co. v. Halliburton Oil Well Cementing Co., 324 U.S. 320, 65 S.Ct. 647, 89 L.Ed. 973 (1945); Decca Ltd. v. United States, 420 F.2d 1010, 190 Ct.Cl. 454 (1970), cert. denied, 400 U.S. 865, 91 S.Ct. 102, 27 L. Ed.2d 104; Smith v. United States, 145 F.Supp. 396, 136 Ct.Cl. 487 (1956).

Background and patent in suit

Thermionic converters are electrical generators which operate on a principle of physics called thermionic emission. When some materials, particularly metals, are heated to high temperatures (e. g., above about 1000° C.), they emit electrons into the surrounding space. This is called thermionic emission. In simplest form, a thermionic converter consists of two closely-spaced electrodes, one called the emitter and the other the collector. The space between electrodes is on the order of 0.01-0.001 inches. The interelectrode space is either highly evacuated (hence a “vacuum thermionic converter”) or is filled with cesium vapor at very low pressure, on the order of a few millimeters of mercury (hence a “cesium thermionic converter”). Normal atmospheric pressure is 760 millimeters of mercury. The emitter is heated to a high temperature (about 1000-2000° C.) so as to induce thermionic emission. The collector is maintained at a temperature lower than the emitter (about 600° C.) and captures the emitted electrons, thus creating a potential difference (or voltage) between the emitter and collector. By connecting the collector and emitter through an external circuit, electrical current is made to flow.

Vacuum thermionic converters are inefficient and shortlived. That is to say, the amount of electrical energy generated in relation to heat energy put in is low, on the order of about 5 percent. Cesium thermionic converters are somewhat more efficient, on the order of about 15 percent. There are many reasons for the inefficiency and short life of vacuum thermionic converters, including inherent radiation heat losses from the high-temperature emitter, difficulties of cooling the collector, inefficiencies of electron transfer between emitter and collector, and problems associated with the deterioration of materials of construction. Also, the voltage generated by thermionic converters is limited, among other things, by the temperature difference between electrodes and the nature of the electrode materials. Generally, the voltage generated is on the order of magnitude of about one volt. The electrical current which can be produced varies considerably with the size, temperature and spacing of the electrodes and is on the order of 1 to 100 amperes per square centimeter of electrode surface area. Typical power ratings of experimental cesium converters procured by the Government were on the order of 50 watts.

Thus it can be seen that there are substantial theoretical and practical problems of making a thermionic converter which will produce quantities of electrical power of the magnitude necessary for useful operations. In fact, the record shows that the Government has spent $50 million on thermionic converter research and development and has yet to come up with a device which is useful for long-term practical generation of electricity. For the most part, the Government’s research and development efforts have led only to the conclusion that much more work needs to be done.

Winston Caldwell, the inventor in suit, was an insurance executive and tobacco farmer who, in the late 1940’s and early 1950’s, did some experimental work on thermionic conversion. Caldwell had a technical education but had little practical experience in physics or electronics. His experiments were carried out in his home, with rudimentary equipment, generally consisting of conventional radio tubes and homemade paraphernalia. The gist of his experiments was to show that a radio tube could function ás a thermionic converter by heating one element of the tube (the cathode) to a temperature sufficiently high to induce thermionic emission, in hopes of coming up with a practical thermionic converter. So far as the record shows, his experiments demonstrated nothing more than the principle of thermionic emission, known in the art at least as early as 1884.

In 1953, Caldwell filed a patent application which matured into the ’112 patent and, in turn, the reissue ’879 patent in suit. Caldwell’s application stated that his invention relates to an “electron tube designed to convert heat directly into electricity” and was adaptable “to generate and create a high voltage on commercially useful electric current.” Among the objects of the invention were “to provide a device * * * which will act efficiently and economically to produce power”; “to provide apparatus * * * which is relatively simple and inexpensive in its construction and installation * * * and which when placed in use will operate efficiently and inexpensively substantially continuously or as desired, without interruption or requirement for repairs or services.” Later, during prosecution of the application, Caldwell added as an object to provide “apparatus * * * to utilize large sources of what would otherwise be waste heat, such as heat obtained from solar energy or from the flue gases from power plants, atomic installations, or blast furnaces, or from the exhaust of jet engines and rocket missiles.”

Though all of Caldwell’s experimental work leading up to the patent application was performed with commercial radio tubes, the device disclosed in the patent specification is quite different. It comprises, in essence, two concentric cylinders spaced closely together (the specification says “perhaps something like 2/100 of an inch or less”). The space between the cylinders is “exhausted to a high vacuum,” the purpose of which is “to prevent injury to the electron emitting coating covering the cathode” and “to create a condition of minimum heat loss from the cathode.” The inner cylinder (cathode or emitter) is coated with a “material capable of emitting electrons” (such as thoriated tungsten) and, in one embodiment, is filled with “a large number of lengths of fine gauge refractory insulated wire” which Caldwell’s drawings designate an “electron emissive substance.” The cathode is to be heated by a burner or other heat source. The outer cylinder (plate or collector) is of unspecified material but is to be maintained, during operation, at a temperature below that of the emitter. Caldwell does not state how such lower temperature is to be maintained or what the temperature difference should be. The specification further states that a “commercially useful apparatus would be made with an overall diameter of 5 feet or more, and will be 10 feet to 20 feet tall * * and that the “voltage will be increased by increasing the size of the apparatus.”

Caldwell never built a device as described in the patent specification; and the expert testimony at trial shows that such a device, if built, would not operate as envisioned by Caldwell. (Findings 18 and 19.) In fact, the record establishes that Caldwell’s device and concepts were impractical and were based on misconceptions or misunderstandings of the process of thermionic emission. E. g., Caldwell thought that increasing the size of the device would increase the voltage output. Plaintiffs concede that this is wrong. Caldwell also thought that the “fine gauge refractory insulated wire” used to fill the cathode (or emitter) would increase electron flow from emitter to collector. This also is wrong, as established by expert testimony.

Pertinent, as corroborative of expert testimony at trial, is an exchange of letters in 1954 between Caldwell and W. G. Dow, Professor of Electrical Engineering, at the University of Michigan. Caldwell described his invention to Dow thus:

The tube I am trying to build is a model to demonstrate the fact that you can increase the emission pressure of the electrons, or voltage, by increasing the size of the cathode and having free electrons within the cathode. The idea of this construction would be to make an efficient type of thermo electric battery. For a commercial application the cathode would have to be constructed quite large, possibly a foot or more in diameter, and it would be heated by gas or some other source of heat.
You can readily see that the device would depend for its success on the emission of electrons from a heated surface coated with electron emitting material, which effect is quite well known. It further depends for its effectiveness on having a large diameter cathode and having a large number of free electrons inside the cathode. This is the part which is new and is what I am trying to demonstrate. [Emphasis supplied.]

Dow responded, in essence, that simply increasing the size of the cathode and the number of electrons inside the cathode would have no effect on voltage or current. Further, Dow said:

Therefore, all I can say, on'the basis of a very considerable experience in the electron tube arts and in what is called “physical electronics” is that your plan is unsound in principle. I do not wish you to accept this because I say it; I merely suggest that my saying it makes it worthwhile for you to learn to understand the physics behind the situation a little better. Before you pursue the invention any further, I suggest that you study rather carefully chapters 7, 8, and 9 in my book mentioned above. [“Fundamentals of Engineering Electronics,” published by John Wiley & Sons, in 1952.]
I hope I may have been of some help to you. Under the circumstances, we would not, of course, want to try to build a model for you, for the reason that we are completely convinced beforehand that you would only experience a disappointment.

Caldwell’s patent application, as filed in 1953, had seven claims, defining the invention in varying degrees of specificity but all directed to “an electron tube designed to convert heat directly into electricity.” The application met with considerable resistance in the Patent Office. The examiner rejected all claims as “drawn to an apparatus which is apparently inoperative to carry out the objects of the invention.” Further, the examiner solicited “affidavits as to tests on apparatus identified with that disclosed * * * setting forth test data from which the examiner may judge whether or not the device in question is operative, or by a demonstration of a working model before the examiner.” As noted earlier, Caldwell had not built, nor did he ever build, a device as described and shown in the patent specification and drawings. Nevertheless, to meet the examiner’s rejection, Caldwell built a model which comprised, in essence, a conventional 35Z5 radio tube with a cathode and plate. He demonstrated to the examiner that when the cathode is heated to a high temperature, electrons flow from the cathode to the plate, a demonstration of nothing more than the principle of thermionic emission. The demonstration did not show that the apparatus described in the patent specification would operate as alleged to produce significant quantities of useful power. The examiner apparently was not impressed by the demonstration for he again rejected all claims on grounds of inoperativeness. (Finding 20.)

After some further correspondence between Caldwell’s attorney and the patent examiner (including another interview), and after some minor modifications were made to the claims, the examiner (without explanation) withdrew the rejection on inoperativeness and allowed five claims. At no time were any claims rejected as unpatentable over prior art. The only prior art cited by the examiner was a patent to Hansell (finding 30) which the examiner characterized as being “of interest.” In 1956, the application issued as the ’112 patent.

In 1958, plaintiffs filed for a reissue of the ’112 patent, a principal difference between the ’112 patent and the newly filed application being the addition of claims which defined the invention as “a device for converting heat directly into electricity” rather than “an electron tube designed to convert heat directly into electricity.” (Emphasis supplied.) Two new prior art references were cited by the examiner during prosecution of the reissue application, including a U.S. patent to Wick (finding 29), and the claims were rejected as unpatentable thereover. After further prosecution including an interview with the examiner, the reissue application was allowed with the five original patent claims and 20 new claims.

The invalidity defense

Section 112, 35 U.S.C., requires that patent specifications describe inventions “in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains * * * to make and use the same * -x- *>> impiicit in that requirement is that the invention described be operable for the purpose disclosed. Beidler v. United States, 253 U.S. 447, 40 S.Ct. 564, 64 L.Ed. 1006 (1920) ; E. I. duPont de Nemours & Co. v. Union Carbide Corp., 250 F.Supp. 816 (N.D.Ill.1966); H. C. Baxter & Bro. v. Great Atlantic & Pacific Tea Co., 236 F.Supp. 601 (D. Me.1964), aff’d, 352 F.2d 87 (1st Cir. 1965), cert. denied, 384 U.S. 905, 86 S. Ct. 1338, 16 L.Ed.2d 358 (1966); 2 Walker, Patents §§ 92, 95 (Deller’s 2d ed. 1964). While it is not necessary that the disclosure be of an ultimate commercial embodiment, it must at least be sufficient to teach those skilled in the art how to practice the invention without undue experimentation, especially where the invention is in an art involving sophisticated scientific principles. In re Perrigo, 48 F.2d 965, 18 CCPA 1323 (1931).

Defendant says that Caldwell’s patent specification fails to disclose an “operable” invention because the device described therein has never been built and, if built, would not be practical and would not meet Caldwell’s stated objectives. Accordingly, says defendant, Caldwell’s disclosure does not support the patent claims. That argument is appealing in view of credible expert testimony that Caldwell’s device would be “impractical” and would not produce electrical power as intended by Caldwell. It is appealing also because Caldwell’s disclosure, construed in light of contemporaneous statements by Caldwell regarding the gist of his invention, is riddled with inaccuracies which raise the inference that he did not fully understand the principles of thermionic emission, nor the practical problems associated with building a workable device. However, on this record, it cannot be said as a matter of law that the Caldwell device is totally inoperative and useless. Defendant’s expert conceded that a device built in accordance with Caldwell’s teachings might “operate [as a vacuum thermionic converter] with efficiencies on the order of 1 percent.” However, there is no doubt that the device could not be made to generate high voltages, nor could it be made to produce power economically and efficiently. Caldwell’s patent claims must, therefore, be construed narrowly as defining a “paper” invention and not one which represents a basic or pioneer advance in the art. International Glass Co. v. United States, 408 F.2d 395, 187 Ct.Cl. 376 (1969).

In light of the above, we turn to analysis of the patent claims in view of the prior art. Claim 16 is representative (finding 17) and defines the invention in terms of the elements comprising Caldwell’s device. In essence, the claim calls for a cathode (or emitter) having a surface of electron-emissive material, a plate (or collector) mounted in “closely spaced” relation to the emitter, a “vacuum” between the cathode and plate, means to heat the cathode, means to cool the plate, and electrical connections between the cathode and plate. For purposes here material, claims 2, 17 and 21 are substantially the same as claim 16. Claim 1 is to a method and, in essence, defines the steps of operating the device defined in claims 2, 16, 17 and 21. Defendant says the claims are invalid under 35 U.S.C. § 103 as defining an invention which would have been “obvious at the time the invention was made to a person having ordinary skill in the art,” within the meaning of the statute. Graham v. John Deere Co., 383 U.S. 1, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966).

At trial, defendant introduced prior art not cited or considered by the Patent Office. As will be seen, the prior art is highly pertinent and overcomes the presumption of validity accorded patents under 35 U.S.C. § 282. Ellicott Mach. Corp. v. United States, 405 F.2d 1385, 186 Ct.Cl. 655 (1969); International Glass Co., supra. The prior art is described in detail in findings 22-31 and is here summarized to the extent pertinent. As earlier noted, Thomas Edison demonstrated the principle of thermionic emission in 1884; and plaintiffs do not dispute that thermionic emission was well-known before Caldwell. Though Edison’s work was not expressly directed to producing electric power by thermionic emission (finding 23), the fact remains that he taught that heated metal cathodes emit electrons porportionate to the temperature of the cathode, a teaching pivotal to the idea of generating electricity by thermionic emission and of great significance to later investigations. In 1915, Comstock disclosed a device for generating electricity by thermionic emission. (Finding 24.) Com-stock recognized that thermionic emission was a mechanism for converting heat into electricity and his work was directed to that end. Comstock’s thermionic generator comprised an emitter made of or coated with an electron-emissive material and heated to “red or white heat,” and a collector cooled by a water jacket. The emitter and collector were not closely-spaced but rather were out of direct line of one another so as to minimize heating the collector by radiation from the emitter. Comstock’s device was no doubt inefficient and impractical for generating any significant electric current, but it shows an early recognition in the art that thermionic converters must have an electron-emissive emitter, heated to red or white heat, a cooled collector and a vacuum chamber.

Also in 1915, Schlichter did experimental work on vacuum thermionic conversion. (Finding 25.) Schlichter’s device was similar to Comstock’s except that the electrodes were closely-spaced (about 0.20 inches). Schlichter further recognized that an emitter coated with metal oxide would increase electron emission. Schlichter summed up his work by noting that “thermionic cells are feasible” but operate “uneconomieally” because of radiation heat losses.

In 1923, Langmuir did considerable work investigating the nature of thermionic currents, in an attempt to study the effects of electron “space charge” on thermionic emission. (Finding 27.) “Space charge” is created by the presence of electrons around the emitter during thermionic emission. (Finding 8.) Langmuir found that “space charge” impedes the flow of electrons away from the emitter. Then in 1951, Champeix taught that thermionic converters must have, among other things, closely-spaced electrodes in order to minimize the adverse effects of “space charge.” Champeix therefore postulated a vacuum thermionic converter with an oxide-coated emitter and a cooled collector, the emitter and collector being very closely-spaced. (Finding 28.)

In sum, by 1951 it was known in the art that thermionic conversion was a means of generating electrical current; that two electrodes were needed, a hot emitter (perhaps coated with an electron-emissive material) and a cool collector; that the electrodes should be closely-spaced; and that the space between electrodes should be evacuated. What remained to be done (and still remains to be done) to build an efficient and practical device, is intensive research on materials of construction, as well as further theoretical study on the mechanisms of thermionic emission and electron flow.

Plaintiffs make much of the fact that the prior art does not expressly teach electrode spacing of 0.02 inches or less, which is the spacing disclosed (but not claimed) by Caldwell. Schlichter, in 1915, taught electrode spacing of about 0.20 inches. Langmuir’s work on “space charge” effects in 1923 suggests that electrodes must be closely-spaced in order to get significant current flow. Champeix, in 1951, recognizing the “space charge” problem, taught that the electrodes should be very closely-spaced. In view of such teachings, it seems obvious that one would desire to place the electrodes as close together as possible without actually touching. In any event, it appears that Caldwell’s teaching of 0.-02 inches electrode spacing is based on the fact that the 35Z5 radio tube, with which he did experimental work, had electrode spacing of 0.015 inches. In early correspondence with his patent attorney, Caldwell suggested a spacing of 0.015 inches, but later (for unexplained reasons) changed to 0.02 inches. Caldwell’s disclosure of electrode spacing therefore came from the prior art of radio tubes, and was not based upon any independent finding by Caldwell that such spacing was significant to thermionic conversion. Caldwell taught nothing more than was clearly suggested by the prior art.

In light of the prior art, Caldwell’s patent claims cannot stand. The claims define nothing more than a combination of elements old and obvious to those skilled in the art at the time the invention was made, which combination functions substantially identically to the prior art to produce substantially the same result. Caldwell’s disclosure added nothing to the art of thermionic conversion to help solve the baffling technological problems of building a practical thermionic converter. At best, Caldwell’s disclosure was an invitation to experiment. The Incandescent Lamp Patent, 159 U.S. 465, 16 S.Ct. 75, 40 L.Ed. 221 (1895); Metals Recovery Co. v. Anaconda Copper Mining Co., 31 F.2d 100 (9th Cir. 1929); H. C. Baxter & Bro., supra,.

Finally, plaintiffs would dismiss the prior art as not showing “one single workable thermionic converter.” The short answer to this is that plaintiffs have not shown that Caldwell’s device is any more “workable” than devices taught or suggested by the prior art. In fact, to date and despite extensive research efforts, no one has come up with a practical thermionic converter which meets Caldwell’s objectives. If and when someone does, it will not be the result of any novel or unobvious teachings of Caldwell.

      . Section 112. Specification.
      The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention,

      . In 1954, Caldwell wrote to the StrombergCarlson Company, in an attempt to interest it in his ideas on thermionic converters. Stromberg-Carlson replied that it was not interested in pursuing Caldwell’s ideas and that “One of our engineers has pointed out that the principle involved [in Caldwell’s work] is the well-known ‘Edison effect’ ” described by Edison in 1884. The “Edison effect” demonstrated the principle of thermionic emission. (Finding 23.)

      . Claims 1, 2, 16, and 17, liere in issue, are new to the reissue patent. Claim 21 was claim 1 in the original patent.

      . The record shows that in the 1960’s, progress was made in the art of thermionic conversion by, among other things, introducing cesium vapor into the inter-electrode space, rather than maintaining the space a vacuum; and most of the Government’s research efforts have been along the lines of cesium, rather than vacuum, thermionic converters. (Findings 32-38.) Caldwell does not teach, suggest or claim cesium thermionic converters ; and while it is unnecessary to develop the point, there is considerable doubt whether cesium thermionic converters infringe the patent claims, even if valid.