author:
BUTZNER, Circuit Judge:
      DONALD RUSSELL, Circuit Judge

text:
    UNITED STATES of America, Appellee, v. William Charles EPPINETTE, Jr., Appellant.
    No. 73-1362.
    United States Court of Appeals, Fourth Circuit.
    Argued July 17, 1973.
    Decided Oct. 3, 1973.
    Donald Russell, Circuit Judge, filed a dissenting opinion.

      Deborah G. Mailman, Raleigh, N.C. [court-appointed counsel], for appellant.
    Malcolm J. Howard, Asst. U. S. Atty. (Thomas P. McNamara, U. S. Atty., for the E. D. N. C., on brief), for appellee.
    Norman B. Smith and Smith, Patterson, Follín & Curtis, Greensboro, N. C., on brief for amicus curiae, North Carolina Civil Liberties Union Legal Foundation, Inc.).
    Before CRAVEN, BUTZNER, and RUSSELL, Circuit Judges.
   BUTZNER, Circuit Judge:

William Charles Eppinette, Jr. appeals from a judgment of conviction for failure to keep his selective service registration certificate and classification notice in his personal possession. We reverse the judgment and remand the case to the district court with instructions to enter a judgment of acquittal because nonpossession of these forms is not a crime punishable under § 12(b)(6) of the Selective Service Act of 1948, 50 U.S.C. App. § 462(b)(6) (1970).

On December 13, 1971, Eppinette returned his registration certificate and notice of classification to his local selective service board as a protest against the Vietnam War. In response, the board sent Eppinette a letter advising him that the law required him to keep the cards in his personal possession. The board also enclosed a form for requesting new cards. When Eppinette advised the board that he did not want any new cards, he was indicted for violating § 426(b)(6), convicted, and sentenced to two concurrent one year prison terms.

The section of the Act that the government accused Eppinette of violating provides:

“Any person . . . who knowingly violates or evades any of the provisions of this title or rules or regulations promulgated persuant thereto relating to the issuance, transfer, or possession of [a Selective Service] certificate, shall, upon conviction, be fined not to exceed $10,000 or be imprisoned for not more than five years, or both.” 50 U.S.C. App. § 462(b)(6) (1970).

The United States does not contend that Eppinette violated any of the specific prohibitions in the Act. Instead, it asserts that Eppinette violated § 462(b) (6) by failing to comply with selective service regulations that require a registrant to have his registration certificate and notice of classification in his personal possession at all times. The government claims that the statute makes failure to comply with these regulations a crime punishable by imprisonment or fine. In support of this contention, it cites recent decisions upholding similar convictions based on indictments brought under § 462(a). We decline to follow the decisions on which the government relies because they do not accord with our interpretation of the statutes and the regulations. See generally Dranitzke, Possession of Registration Certificates and Notices of Classification by Selective Service Registrants, 1. Sel.Serv.L.Rptr. 4029 (1968).

Section 462(b) (6), as the general clause which follows the description of five specific crimes, must be construed in light of the statute of which it is a part. See Weyerhaeuser Steamship Co. v. United States, 372 U.S. 597, 600, 83 S.Ct. 926, 10 L.Ed.2d 1049 (1963); Jarecki v. Searle & Co., 367 U.S. 303, 307, 81 S.Ct. 1579, 6 L.Ed.2d 859 (1961). This canon of -statutory construction is particularly applicable to § 462(b)(6) because the section is part of a criminal statute that must be strictly construed. Cf. United States v. Campos-Serrano, 404 U.S. 293, 297, 92 S.Ct. 471, 30 L.Ed. 2d 457 (1971); Rewis v. United States, 401 U.S. 808, 812, 1056, 28 L.Ed.2d 493 (1972). The first five subsections of § 462(b) outlaw fraudulent transfers of registration certificates, fraudulent possession of a certificate that has not been duly issued to the person possessing it, alteration or destruction of a certificate, fraudulent printing of a likeness of a certificate, and knowing .possession of a forged or altered certificate. All five of the subsections are concerned with the destruction or fraudulent use and possession of certificates; none of them mention any requirement that a registrant possess certificates that have been duly issued to him. Therefore, the natural construction of the sixth subsection is that it reaches frauds which the statute did not expressly cover, but it does not punish the nonpossession of a validly issued certificate when no fraud has been committed.

This construction of § 462(b) (6) accords with the congressional intent as expressed in the legislative history. Statutes enacted prior to the Selective Service Aot of 1948 contained no statutory provisions analogous to § 462 (b). The Senate Report of the 1948 Aet explains the new provision as follows.

“False certification. — This subsection does not appear in the 1940 act. It establishes a fine of not to exceed $10,000, or imprisonment not to exceed 5 years, or both, as the penalty for the false use of selective-service certificates and related papers.” S. Rep.No.1268, 80th Cong., 2d Sess., 2 U.S.Cong.Serv. 1989, 2008 (1948).

There is no suggestion in the report that the Senate intended the Act to punish simple nonpossession of draft cards when no fraudulent conduct is involved. The House version of the Act did not have a provision similar to § 462(b), but the conference committee accepted the Senate version. The conference managers of the House explained the conference bill as follows:

“The Senate bill provided specific penalties for those forging or altering certificates issued under the act and for persons possessing or using any such forged or altered certificates. The House amendment contained no comparable provisions. The conference agreement adopts the provisions of the Senate bill with respect to this matter.” Conf.R.No.2438, auth Cong., 2d Sess., 2 U.S.Cong.Serv. 2011, 2017 (1948).

We attach particular importance to this legislative history because the Act contains no language expressly making the nonfraudulent failure to possess validly issued draft cards a crime. Only a strained construction of the Act, inconsistent with its legislative history, would countenance Eppinette’s punishment for his simple failure to retain in his personal possession the draft cards that were issued to him. “But when choice has to be made between two readings of what conduct Congress has made a crime, it is appropriate, before we choose the harsher alternative, to require that Congress should have spoken in language that is clear and definite. We should not derive criminal outlawry from some ambiguous implication.” United States v. Universal C. I. T. Credit Corp., 344 U.S. 218, 221, 73 S.Ct. 227, 229, 97 L.Ed. 260 (1952). We, therefore, hold that Congress did not intend § 462(b) (6) to punish nonpossession of validly issued Selective Service documents in the absence of fraud.

Our interpretation of § 462(b) (6) is also consistent with the regulations that the government accused Eppinette of violating. At the outset, we observe that the provision that a registrant “must” have in his personal possession certain documents does not require us to interpret the regulations as mandatory. Dependent upon the context, verbs that ordinarily denote the imperative sometimes should be construed as directory only. Because the administrative history of the regulations evidences an intent to limit criminal penalties to fraudulent use or possession of certificates, we believe the requirement that registrants have their draft cards in their personal possession is directory, not mandatory. Cf. United States v. Reeb, 433 F.2d 381, 383 (9th Cir. 1970), cert. denied, 402 U.S. 912, 91 S.Ct. 1391, 28 L.Ed.2d 654 (1971); Thompson v. Clifford, 132 U.S.App.D.C. 351, 408 F.2d 154, 158 (1968).

The administrative purpose is most explicit with regard to the regulation requiring possession of registration certificates, which provides:

“Effect of failure to have unaltered registration certificate in personal possession.
Every person required to present himself for and submit to registration must, after he has registered, have in his personal possession until his liability for training and service has terminated his Registration Certificate . . . The failure of any person to have his Registration Certificate ... in his personal possession shall be prima facie evidence of his failure to register. . . .” 32 C.F.R. § 1617.1 (1972).

The regulation on its face refutes any intention to make nonpossession a criminal violation. The title, indicates that the regulation is designed to explain the effect of nonpossession of a registration certificate, and the second sentence of ■the regulation says that nonpossession is prima facie evidence of failure to register. There is no warning that nonpos-session is a violation of the regulations punishable by criminal penalties. The omission of an explicit statement that nonpossession is a violation is especially significant because a predecessor regular tion contained a provision making non-possession a violation, but this portion of the regulation was later repealed Moreover, a parallel regulation, which prohibited fraudulent use of certificates, contained a “violation” clause, and the current regulations expressly make fraudulent use of a notice of classification a violation.

The service’s explanation for adopting the regulation supports our interpretation :

“In the early stages of the 1940-47 operation, it was found most difficult to affirmatively establish that a person required to do so, had not registered. To avoid this difficulty Selective Service provided by regulation that all registered persons must have with them at all times their ‘registration cards.’ It was a far simpler matter to ask a man for this certificate than to establish that he had not registered in any of the 120,000 places where he might have registered.” Selective Service System, Evaluation of the Selective Service Program 122 (Special Monograph No. 18, 1967).

We hold, therefore, that the regulation should be read as it is written. The effect of the failure to have an unaltered registration certificate in one’s personal possession is prima facie evidence of one’s failure to register. There is no justification for judicially engrafting a provision that the omission is also a crime punishable by imprisonment. The nation’s youth are entitled at the very least to have their selective service obligations stated with clarity.

The service’s regulatory framework compels a similar interpretation of the notice of classification regulation, which provides:

“Persons required to have Notice of Classification ... in personal possession.
Every person who has been classified by a local board must have in his personal possession until his liability for training and service has terminated a valid Notice of Classification . . . issued to him showing his current classification.” 32 C.F.R. § 1623.5 (1972).

The regulation omits any statement that nonpossession is a violation of the regulation. In contrast, the following regulation prohibiting fraudulent possession or use of classification notices, expressly says that this conduct “shall be a violation of these regulations.” 32 C.F.R. § 1623.6 (1972).

In sum, the texts of the statute and of the regulations and the relevant legislative and administrative history convince us that Congress did not intend § 462(b)(6) to make nonpossession of a registration certificate or of a notice of classification a criminal offense in the absence of fraud. Accordingly, the judgment of conviction is reversed. The case is remanded to the district court with instructions to enter a judgment of acquittal

DONALD RUSSELL, Circuit Judge

(dissenting):

Selective Service Regulations explicitly command all registrants to have in their possession at all times their classification card. The authority to issue such Regulations is specifically conferred in Section 10(b) of the Selective Service Act of 1948, later codified as Section 460 (b)(1), 50 App.U.S.C., 1970, which vested the President with the power “to prescribe the necessary rules and regulations to carry out the provisions of this title.” Section 12(b) of that Act, later codified as Section 462(b), 50 App.U. S.C., 1970, provides that a violation of any regulation so issued may be punishable as a crime.

The defendant admittedly violated the Regulation with reference to the possession of his classification card. Indeed, he violated it intentionally, purposefully, even defiantly. For such defiant and intentional violation he was prosecuted and convicted.

The majority opinion reverses his conviction arising out of such defiant violation. I dissent.

The majority opinion posited its reversal largely on the conclusion that Congress never intended, by enacting the statutory authorization under which the prosecution was had, to authorize prosecution under a regulation for non-possession of a classification card, where some element of fraud was not a part of the offense. It arrives at this conclusion by finding that, though § 462(b) (6), which is the section under which the prosecution was had, makes no reference whatsoever to fraud but provides simply that any violation of a regulation promulgated under “any of the provisions of this title" is punishable, fraud must be read into it as an essential element of any regulation that would support a prosecution thereunder. It justifies this result by reasoning that, since the five specific offenses earlier listed in § 462(b) include, by express language, an element of fraud, subdivision (b)(6) must be read as requiring likewise fraud as an essential element of the crime provided thereunder, even though, as I have said, there is absolutely no language in subdivision (b)(6) to support this construction. The opinion passes over without comment that subdivision (b)(6) is detached from the preceding five parts of § 462(b) by the disjunctive “or”, which, under normal rules of statutory construction, “indicates alternative circumstances” and is “intended to identify and define a wholly separate and distinct offense * * *.” Adolfson v. United States (9th Cir. 1947) 159 F.2d 883, 886, cert. denied 331 U.S. 818, 67 S.Ct. 1307, 91 L.Ed. 1836, Barkdoll v. United States (9th Cir. 1945) 147 F.2d 617, 618. Contrary to the view of the majority opinion that subsection (b)(6) is merely a “catch-all” to authorize regulations providing for punishment involving some element of fraud similar to the other parts of subsection (b), the language of (6) makes it clear that the regulation, the violation of which was made punishable by (6), was not narrowly confined in character by the preceding parts of (b) but was as broad and as inclusive as “the provisions of this title.” And “title”, a term repeatedly used throughout the Act, had a very definite application; it covered all the provisions of the Act. It was not limited to the fraudulent aspect of the preceding parts of (b) but embraced all the other parts of the Act, including § 462(a). This is conclusively established by the use of the term “title,” repeatedly in other provisions. Thus, in the very section which vests the President with the power to prescribe regulations, the Act provides that such power extends to any rules and regulations “necessary * * * to carry out the provisions of this title.” That is the scope of the regulations, the violation of which may be punishable under § 462(b)(6), with one limitation stated in (6) itself and that is that any such regulation must relate to “the issuance, transfer, or possession of such certificate.” This regulation met that test: it did relate to possession and it was issued under the power of the-President to issue regulations “necessary * * * to carry out the provisions of this title.”

That (b)(6) is not restricted by the preceding parts of (b) in the type of regulation thereby made punishable finds additional support in the “editorial assistance” attached to the section. Thus, after the provision of the section authorizing punishment for a violation of any regulation promulgated under “any of the provisions of this title,” the editors in the official code have added in brackets “said sections.” This term, “said sections,” refers back to an earlier use of the term, “provisions of this title,” which the editors, in brackets, then identified as “sections 451, 453, 454, 455, 456 and 458-471 of this Appendix,” in other words, the requirements of the Act as a whole.

To sum up this phase of the matter: Subsection (b) (6) does not by its terms or by implication limit the power to punish thereunder for a violation of a regulation that involves an element of fraud but, on the contrary, expressly authorizes punishment for a violation of any regulation issued under the general authority to prescribe regulations if the regulation relates, among other things, to “possession” of a registrant’s classification card.

And I find nothing in the legislative history cited in the majority opinion that will give support to the forced construction adopted. There was nothing really new in subsection (b)(6). With little variation in language, it had been a part of every Selective Service Act enacted over the years since 1917. It appeared as Section 6 of the 1917 Act and Section 11 of the 1940 Act and was in the House bill as the initial sentence in' Section 11. It was repeated in both Sections 12(a) and (b)(6), and prosecution may be had under either. See, United States v. Demangone (3rd Cir. 1972) 456 F.2d 807, 811, cert. denied 407 U.S. 914, 92 S.Ct. 2435, 32 L.Ed.2d 689. However, the first five parts of § 462(b) were new and were added, as the Conference Report states, in the Senate. It is normal legislative procedure to indicate in the Conference Report any new sentences or terms that may have been added by the Senate to a bill originating in the House. There is, of course, no necessity to point out terms or provisions that are not new. I find, therefore, no significance in the absence of any reference to subsection (b)(6) or any reference to Regulations promulgated thereunder by the Selective Service Director in the Conference Report on Section 462 (b). Certainly, the scanty reference to subsection (b)(6) in the Conference Report will not justify giving to that provision a meaning and a construction that does not accord with its plain language or that would give to the term “this title” a different meaning from that in which that term is used throughout the Act.

The majority opinion, it is true, does not entirely predicate its conclusions on a construction of the statute itself but would find that the intent of the regulation in its requirement of possession by the registrant of his classification card at all times was that its requirement was “directory” rather than “mandatory” and without punitive purposes. It is difficult to understand how such intent can rationally be assumed in the light of the fact that, since 1945, at least, there have been repeated prosecutions of registrants for nonpossession under the provision. Such action is a convincing answer to this assumption in the majority opinion. See, also, United States v. Couming (1st Cir. 1971) 445 F.2d 555, 556, cert. denied 404 U.S. 949, 92 S.Ct. 291, 30 L.Ed.2d 266.

This conclusion of mine is in accord with the decisions of the other Circuits which have considered the issue. In an unbroken line of decisions stretching back to 1945, federal courts, without a single dissenting voice, have consistently-held that a violation of this regulation or one similar to it, and having similar statutory basis, requiring the registrant to have on his person at all times his registration card, was punishable as a crime. No one of those decisions found any invalidity in the regulation or want of authority in the enabling provisions as expressed in (6), or in earlier provisions of the preceding Acts. In one of these decisions, the Court meticulously analyzed -the points made in the majority opinion favoring invalidity of the very regulation involved here, including Professor Dranitzke’s thesis, and concluded that the Regulation was valid and would support a conviction. United States v. Couming, supra. On at least three occasions the Supreme Court had an opportunity to correct that construction of such a regulation and its supporting statutory authority if it deemed that construction incorrect. It did not do so. It is significant that one of those decisions in which the Supreme Court refused certiorari, was the one which had dismissed as without merit the very considerations on which the majority opinion largely bases its conclusions. United States v. Couming, supra. It is even more significant that Professor Dra-nitzke, in the article which the majority opinion cites as support for its conclusion, concedes: “(A)nd United States v. O’Brien, the only Supreme Court case near point, states ‘we are not concerned here with the nonpossession regulations * * *.’ Yet it should be noted that the Court does imply that nonpossession is punishable as a felony.” 1 SSLR 4034.

Since 1940, scores of individuals have been indicted, convicted and imprisoned for violation of this regulation or one substantially like it based on earlier legislation having a provision similar to 462(b)(6). In the period between 1940 and 1946, there were 189 convictions relating to possession of a registration certificate and 70 convictions relating to possession of notice of classification. It is quite likely that violations and prosecutions accelerated during the Korean and Viet-Nam involvements. If these prosecutions were, as the majority opinion finds, based on an erroneous construction of executive power never authorized or intended by Congress, it is inconceivable that Congress would have stood silently by, permitting the executive by such a misuse of Congressional authority, to convict and imprison scores of citizens over a period of more than three decades. To conceive otherwise is to suggest that Congress was either ignorant of how its laws were being executed or was crassly indifferent to a flagrant and long-continued misuse of its authorizations by the executive department. Such an assumption is, in my judgement, unwarranted. Congress could not have been ignorant of the power exercised by the executive department and it has never shown itself to be indifferent to any misuse of its authorizations by the executive department. Congressional acquiescence in a judicial construction of legislation, consistently followed for more than thirty years, thus hardly justifies the conclusion that this construction is contrary to Congressional intent.

Nor should the construction of Section 462 as authorizing the regulation in question have been unanticipated by Congress or deemed unapproved by it. The Act of 1948 drew upon the Selective Service Act of 1917, 40 Stat. 76. That Act was found to support a regulation requiring every registrant to have “always in his personal possession his registration certificate” and criminal prosecution for a violation of such a regulation had been upheld. United States v. Olson (D.C.Wash.1917) 253 F. 233, 234. It would seem safe to assume that Congress, in enacting the similar Acts in 1940 and 1948 knew of and foresaw that the Selective Service System would issue a similar regulation under the new Acts, and thereby approved by implication the issuance of such a regulation. See, District of Columbia v. Johnson & Wimsatt (1947) 82 U.S.App.D.C. 81, 160 F.2d 913, cert. denied 332 U.S. 760, 68 S.Ct. 63, 92 L.Ed. 346; City of Burlington v. Turner (D.C. Iowa 1972) 336 F. Supp. 594.

In the face of these compelling considerations, I cannot agree to the belated discovery that this regulation of the Selective Service System was issued in defiance of Congressional intent or that such regulation was not intended to have punitive consequences, and that all the convictions for violations of the regulation occurring over the last thirty years, approved by the Courts and acquiesced in by Congress, were invalid.

I would affirm the conviction.

      . The indictment charged:
      “FIRST COUNT
      “Beginning on or about the 20th day of December, 1971, and continuing thereafter, in the Eastern District of North Carolina, WILLIAM CHARLES EPPINETTE, JR. willfully and knowingly did fail and neglect to perform a duty required of him under and in the execution of the Military Selective Service Act, as amended, and the rules, regulations and directions duly made pursuant thereto, in that he did fail and neglect to have in his personal possession his registration certificate (SSS Form No. 2-A), in violation of the provisions of Title 50, App., United States Code, Section 462(b) (6).
      “SECOND COUNT
      “Beginning on or about the 20th day of December, 1971, and continuing thereafter, in the Eastern District of North Carolina, WILLIAM CHARLES EPPINETTE, JR. willfully and knowingly did fail and neglect to perform a duty required of him under and in the execution of the Military Selective Service Act, as amended, and the rules, regulations and directions duly made pursuant thereto, in that he did fail and neglect to have in his personal possession his Notice of Classification (SSS Form 110), in violation of the provisions of Title 50, App., United States Code, Section 462(b)(6).”

      . Although the district court granted Ep-pinette’s motion for a bill of particulars, the record on appeal does not contain any written specification of the exact regulations upon which the government was relying. The apparent failure to file the bill of particulars creates some confusion because the regulations were amended once just before Eppinette returned his cards and they were amended again shortly before his trial. See 36 Fed.Reg. 23373, 23378 (1971) ; 37 Fed.Reg. 17964, 17965, 17967 (1972). The assistant United States attorney, however, orally informed the court and Eppinette’s counsel that he relied on the regulations in effect when Eppinette returned his draft cards, and since the changes in the regulations are not material to the question before us, the omission of the bill of particulars does not affect his appeal.
      The pertinent regulations provide:
      “Effect of failure to have unaltered registration certificate in personal possession.
      Every person required to present himself for and submit to registration must, after he has registered, have in his personal possession until his liability for training and service has terminated his Registration Certificate . . . prepared by his local board which has not been altered and on which no notation duly and validly inscribed thereon has been changed in any manner after its preparation by the local board. The failure of any person to have his Registration Certificate . . . in his personal possession shall be prima facie evidence of his failure to register. When a registrant is inducted into the Armed Forces or enters upon active duty in the Armed Forces, other than active duty for training only or active duty for the sole purpose of undergoing a physical examination, he shall surrender his Registration Certificate ... to the commanding officer of the Armed Forces Examining and Entrance Station or to the responsible officer at the place to which he reports for active duty. Such officer shall return the certificate to the local board that issued it. 32 O.F.R. § 1617.1 (1972).
      “Persons required to have Notice of Classification (SSS Form 110) in personal possession.
      Every person who has been classified by a local board must have in his personal possession until his liability for training and service has terminated a valid Notice of Classification . . . issued to him showing his current classification. When any such person is inducted into the Armed Forces or enters upon active duty in the Armed Forces, other than active duty for training and only or active duty for the sole purpose of undergoing a physical examination, he shall surrender his Notice of Classification ... to the commanding officer of the Armed Forces Examining and Entrance Station or to the responsible officer at the place to which he reports for ■active duty. Such officer shall return the notice to the local board that issued it.” 32 C.F.R. § 1623.5 (1972).

      . United State v. Demangone, 456 F.2d 807 (3d Cir. 1972) ; United States v. Couming, 445 F.2d 555 (1st Cir.), cert. denied, 404 U.S. 949, 92 S.Ct. 291, 30 L.Ed.2d 266 (1971) ; Zigmond v. Selective Service Local Board No. 16, 396 F.2d 290 (1st Cir.), cert. denied, 391 U.S. 930, 88 S.Ct. 1831, 20 L.Ed. 2d 851 (1968). See also United States v. Kime, 188 F.2d 677 (7th Cir.), cert. denied, 342 U.S. 823, 72 S.Ct. 41, 96 L.Ed. 622 (1951) ; United States v. Hertlein, 143 F. Supp. 742 (D.Wis.1956). The Supreme Court granted certiorari in a case presenting the issue, but did not decide the point. United States v. O’Brien, 391 U.S. 367, 372, 88 S.Ct. 1673, 20 L.Ed.2d 672 (1968). O’Brien dealt with the mutilation and destruction of draft cards — conduct expressly proscribed by § 462 (b).

      . 50 U.S.C.App. § 462(b) provides:
      “Any person (1) who knowingly transfers or delivers to another, for the purpose of aiding or abetting the making of any false identification or representation, any registration certificate, alien’s certificate of non-residence, or any other certificate issued pursuant to or prescribed by the provisions of this title, or rules or regulations promulgated hereunder; or (2) who, with intent that it be used for any purpose of false identification or representation, has in his possession any such certificate not duly issued to him; or (3) who forges, alters, knowingly destroys, knowingly mutilates, or in any manner changes any such certificate or any notation duly and validly inscribed thereon; (4) who, with intent that it be used for any purpose of false identification or representation, photographs, prints, or in any manner makes or executes any engraving, photograph, print, or impression in the likeness of any such certificate, or any color-able imitation thereof; or (5) who has in his possession any certificate purporting to be a certificate issued pursuant to this title [said sections], or rules and regulations promulgated hereunder, which he knows to be falsely made, reproduced, forged, counterfeited, or altered; or (6) who knowingly violates or evades any of the provisions of this title [said sections] or rules and regulations promulgated pursuant thereto relating to the issuance, transfer, or possession of such certificate, shall, upon conviction, be fined not to exceed $10,000 or be imprisoned for not more than five years, or both. Whenever on trial for a violation of this subsection the defendant is shown to have or to have had possession of any certificate not duly issued to him, such possession shall be deemed sufficient evidence to establish an intent to use such certificate for purposes of false identification or representation, unless the defendant explains such possession to the satisfaction of the jury.”

      . See note 2, supra.

      . 6 Fed.Reg. 1796 (1941).

      . 7 Fed.Reg. 9683 (1942).

      . 7 Fed.Reg. 2086 (1942).

      . 32 C.F.R. § 1623.6 (1972).

      . Section 32 C.F.R. § 1623.6 provides:
      “It shall be a violation of these regulations for any person to have in his possession a Notice of Classification ... issued to some other person, or to permit a Notice of Classification . . . issued to him to be in possession of any other person except as provided in the instructions upon such form; or to falsely make, alter, forge, or counterfeit, or cause or procure to. be falsely made, altered, forged, or counterfeited, or to willingly aid or assist another to falsely make, alter, forge, or counterfeit, any Notice of Classification . . . or to utter or publish as true, or cause to be uttered or published as true, or have in his possession with the intent to utter or publish as true, any such false, altered, forged, or counterfeited Notice of Classification . . . or to exhibit or present to any person any such false, altered, forged, or counterfeited, Notice of Classification knowing the same to be false, forged, altered or counterfeited.”

      . In view of our disposition of the case, we find it unnecessary to reach Eppinette’s defenses of constructive possession and selective prosecution. To support those claims, Eppinette sought discovery of the number of prosecutions for returning draft cards as a means of dissent. The statistics published by the Selective Service System do not provide this information. Selective Service System Special Monograph 14 at page 89 (1950) states that the 189 convictions for failure to possess registration certificates and the 70 convictions for failure to - possess classification notices include cases of possession of false or altered certificates and notices. The district court, nevertheless, denied discovery. The record, therefore, does not show the extent to which persons have been prosecuted for returning draft cards as an expression of dissent or even for simply failing to possess the cards when no fraud was involved.

      . Selective Service Regulations, 32 C.P.R. § 1623.5.

      . See, U.S.Code Congressional Service, 80th Congress, 2nd Sess. at 632.
      The majority opinion in its discussion, goes back to the 1948 Act itself. I have done so, too; and subsequent references are generally to that Act, unless otherwise stated.

      . See Section 1(d) Section 4(a) and the very title of the Act of 1948, in all of which the term “this title,” in fixing the scope of the section, was used.

      . The cases to this effect are cited in note 3 of the majority opinion. To these should be added United States v. Minder (D.C.Cal.1945) 63 F.Supp. 369, aff. per curiam, 157 F.2d 856; Wills v. United States (9th Cir. 1967) 384 F.2d 943, 946, cert. denied 392 U.S. 908, 88 S.Ct. 2052, 20 L.Ed.2d 1366, reh. denied 393 U.S. 898, 89 S.Ct. 66, 21 L.Ed.2d 185; United States v. Smith (D.C.Iowa 1966) 249 F.Supp. 515, 518, aff. 368 F.2d 529.

      . It has, of course, been often stated that a a denial of certiorari “imports no expression of opinion upon the merits of the case” United States v. Carver (1923) 260 U.S. 482, 490, 43 S.Ct. 181, 182, 67 L.Ed. 361, but merely that “not four members of the Court [who] thought the case should be heard,” Brown v. Allen (1953) 344 U.S. 443, 492, 73 S.Ct. 397, 439, 97 L.Ed. 469, reh. denied, 345 U.S. 946, 73 S.Ct. 827, 97 L.Ed. 1370 (Justice Frankfurter’s opinion), yet the fact remains, as Justice Jackson so trenchantly expressed it in his concurring opinion in Brown v. Allen, 344 U.S. at 543, 73 S.Ct. at 428 that, “ [Lawyers and lower judges will not readily believe that Justices of this Court are taking the trouble to signal a meaningless division of opinion about a meaningless act. It is just one of the facts of life that today every lower court does attach importance to denials [of certiorari] and to presence or absence of dissents from denials, as judicial opinions and lawyers’ arguments show.” See, also, Shapiro v. King (D.C.Mo.1941) 38 F.Supp. 33, 35, aff’d. 125 F.2d 890.

      . United States v. Kime (7th Cir. 1951) 188 F.2d 677, cert. denied 342 U.S. 823, 72 S.Ct. 41, 96 L.Ed. 622; Zigmond v. Selective Service Local Board No. 16 (1st Cir. 1968) 396 F.2d 290, cert. denied 391 U.S. 930, 88 S.Ct. 1831, 20 L.Ed. 851; United States v. Couming, supra (445 F.2d 555).

      . Selective Service System Special Monograph No. 14 at 89.

      . 54 Stat. 885.

      . 62 Stat. 622.


source: Caselaw Access Project

author: INGRAHAM, Circuit Judge:

license: Public Domain

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Joseph HORTON and Willie F. Jordan, Defendants-Appellants.
    No. 72-3574.
    United States Court of Appeals, Fifth Circuit.
    Nov. 28, 1973.
    Rehearing and Rehearing En Banc Denied Jan. 3, 1974.

      William C. Starke, Chicago, 111., Albert Armendariz, El Paso, Tex., Gerald M. Werksman, Chicago, 111., for defendants-appellants.
    William S. Sessions, Edward S. Marquez, Asst. U. S. Atty., San Antonio, Tex., for plaintiff-appellee.
    Before AINSWORTH, GODBOLD and INGRAHAM, Circuit Judges.
   INGRAHAM, Circuit Judge:

Defendants Horton and Jordan appeal from their convictions under 21 U.S.C. § 841(a)(1) for possessing with intent to distribute three pounds and two ounces of heroin, a Schedule I controlled substance. In a trial before the court, Horton and Jordan were found guilty and each sentenced to ten years imprisonment with a special parole of ten years. There are three principal issues on this appeal: (1) whether the defendants were properly arrested on the basis of probable cause; (2) whether Horton validly consented to the search that revealed the heroin; and (8) whether there was sufficient evidence to convict Jordan. We hold that probable cause existed for their arrest, that Horton consented to the search, but that there was insufficient evidence to convict Jordan. We therefore affirm Horton’s conviction, but reverse as to Jordan.

The events that led to the arrest of the defendants commenced on September 1, 1972, when a customs agent in Chicago, Diogenes Galanos, received a telephone call from an anonymous informer. The caller gave Galanos the following information: (1) that Willis Minnie-weather, a black male approximately thirty years of age and weighing 180 to 190 pounds, was en route from Chicago to El Paso, Texas, to procure a substantial quantity of heroin; (2) that Minnie-weather was driving a 1966 Oldsmobile with a black vinyl top and a brown bottom and bearing the license number BM 1390; and (3) that Minnieweather was to be accompanied by another black male approximately twenty-five to thirty years of age. Galanos attempted to verify the ownership of the vehicle bearing this license, and an investigation revealed that the license was issued to a 1967 Buick registered in the name of Willis Minnieweather. Galanos relayed the information he had obtained to Agent A. L. Fears in the El Paso Customs Office. On receiving this information, Agent Fears began checking at the hotels and motels in the El Paso locality and located the 1966 Oldsmobile at the Travelodge-Central Motel. Fears learned from the manager of the motel that a man named Jordan was registered in rooms 408, 409 and 412, and that a person named Minnieweather had made several telephone calls from the hotel to numbers located in the west side of Chicago, an area where problems with narcotics are prevalent. The automobile was placed under intermittent surveillance and was last seen on September 3, 1972, when it left the Travelodge occupied by two males, a female and a child, all unidentified, and proceeded east on Interstate Highway 10.

On September 11, 1972, Agent Galanos received a second call from a person identifying himself as the one who had called previously about Minnieweather. The caller informed Agent Galanos that the persons discussed in their previous conversation were returning to El Paso to procure a quantity of heroin to bring back to Chicago. Galanos immediately related this latest information to Agent Fears in El Paso. Fears conducted an investigation and found that two men, Joseph Horton and Willie Jordan, were registered in the Downtowner Motor Inn in El Paso and were accompanied by two females.

Fears initiated surveillance of Horton and Jordan’s activities. At approximately 6 P.M. Horton left the Down-towner Motel in a taxi and went to the Knights Club, a bar in the El Paso Rodeway Inn. After waiting there for a short period of time, he returned to the waiting taxi and went back to the Down-towner. At 8 P.M. both Horton and Jordan returned, via taxi, to the Rode-way bar, but remained there for only five to ten minutes. They then went back to the Downtowner. Later that evening Horton, traveling alone and by taxi, left the Downtowner carrying a grey attache ease and went to yet another hotel, the Airways Holiday Inn. Although he never entered this hotel, Horton stood near the entrance with the grey attache case for approximately thirty minutes. The surveillance team reported that he appeared to be waiting for someone, but no one appeared.

From the Airways Horton proceeded, again by taxi, to the Midtown Holiday Inn. He was still carrying the attache case when he arrived there. Shortly thereafter, Jordan arrived at the Midtown in a 1971 black Chrysler. After loitering around the vehicle for a few minutes, Jordan joined Horton at the entrance of the hotel. Horton and Jordan walked to a telephone booth adjacent to the hotel’s parking lot and apparently made two telephone calls. They then traveled from the Midtown Holiday Inn back to the Airways Holiday Inn, where Jordan got out of the automobile and waited at the entrance of the Flame Room located at the Airways. Horton returned to the car, and as the automobile proceeded east on Interstate 10, surveillance was discontinued.

Horton and Jordan were next observed on the following day when they arrived at the Rodeway in the 1971 Chrysler accompanied by the two females. Horton entered the Knights Club located there and met with a Mexican male for approximately five minutes. The Mexican left the club through the rear entrance, and Horton followed within about three minutes. Meanwhile Jordan had entered the motel through the front entrance. Both Horton and Jordan were next seen returning to the Chrysler through the front entrance of the Rodeway. The defendants entered the 1971 Chrysler and went to a gasoline service station where they apparently had the automobile serviced. Surprisingly, the four occupants of the ear got into a taxi and drove to the El Paso airport. While two agents remained at the service station where the 1971 Chrysler was located, other agents followed the taxi to the El Paso airport. When the cab was near the passenger entrance to the terminal, it was stopped. The agents, with weapons drawn, ordered the four occupants out of the cab. The males and the taxi were searched as were the ladies’ purses, and the four suspects were placed in handcuffs.

After Agent Fears identified himself, Horton gave his name and stated that they were all flying to Chicago. Fears inquired as to who owned the 1971 black Chrysler that was left at the service station. Although subsequent investigation revealed that the automobile actually belonged to Jordan, Horton replied that the vehicle was his and the appropriate keys were found on Horton’s person. Agent Fears testified that “[a]t this time I told Mr. Horton that we were going to search the Chrysler and wanted to know whether or not he had any objections to us taking him back to the vehicle and searching that vehicle.” Horton responded that he had no objection.

The agents and the four suspects returned to the service station where the 1971 Chrysler was located. The suspects again were asked who owned the vehicle, and Horton replied that it was his. Agent Fears testified that Horton was asked for the second time “whether or not he had any objection to us searching the vehicle and again he stated he had no objection.” As the car was searched a locked grey attache case was found in the trunk. Horton stated that the case was his, and he produced the key. Inside the case the agents discovered three pounds, two ounces of heroin.

Immediately after the seizure, the defendants were given their Miranda warnings and taken to the customs office in El Paso. At the customs office Agent Fears asked Horton if he would like to make a statement regarding this incident. Agent Fears testified that “[a]t this time Horton stated the heroin was produced with his money, that the heroin was his, and that the two females did not know anything about the heroin.” When asked whether Jordan knew of the heroin, Horton first stated “Yes” then “No,” and then that “he thought that Mr. Jordan knew what was going on.” Agent Fears also testified that Horton wanted to assume the blame for the incident.

In a second interview with Horton later that evening, Agent Fears advised Horton of his constitutional rights and asked for a detailed account of the events. Horton reiterated that the heroin was his, that it was purchased with his money, and that he was taking the heroin back to Chicago. He had gone to the El Paso International Airport to meet a man named Minnieweather. Horton stated that Minnieweather had been with him in El Paso the previous day, but had flown back to Chicago that same day.

Jordan also made a statement regarding the incident. After receiving his Miranda warnings, Jordan said that he and the two females had driven from Chicago and met Horton and Minnie-weather at the Downtowner Motor Inn. While staying at the Downtowner, a Mexican male had called upon Horton and the two had left the presence of Jordan. The substance of the conversation with the Mexican was unknown to Jordan. Horton subsequently asked Jordan to meet him at the hotel on September 11, 1972. Jordan did not know why he was to meet Horton at this hotel, but believed that Horton was going to meet someone there. Jordan also stated that he had been cooperating with another agency in Chicago, although he did not say which agency, in an effort to provide information of illicit activities. Jordan stated that he knew Minnie-weather and that Minnieweather had been in El Paso on at least two prior occasions to purchase narcotics.

I.

We turn first to the issue whether the customs officials had probable cause for the initial arrest of the defendants when they arrived at the El Paso airport. The Supreme Court in Draper v. United States, 358 U.S. 307, 79 S.Ct. 329, 3 L.Ed.2d 327 (1959), recognized that, in a warrantless arrest situation, probable cause may be established based upon an informant’s tip if there is subsequent corroboration of the details of the tip to insure reliability. Although the informer in Draper had previously given accurate and reliable information, he did not state the means by which he obtained his information. Instead the informer described in great detail the surrounding facts and circumstances of the reported crime. The informant stated that Draper had traveled to Chicago the previous day and would be returning by train to Denver. Draper was to arrive in Denver on one of two particular mornings, and he would be possessing three ounces of heroin. The informer further described the clothing that Draper would be wearing when he returned to Denver. As these facts were specifically corroborated by on-the-scene observation when Draper arrived in Denver, the Court held that probable cause had been established, and Draper’s arrest was therefore valid.

Applying the Draper principle to the facts of this case, we hold that probable cause for the arrest was established. Although the informant under these facts was anonymous, there was sufficient corroboration of the details of the report to establish both the reliability of the informant and that the informant had obtained his information in a reliable way. See Spinelli v. United States, 393 U.S. 410, 416-417 and n. 5, 89 S.Ct. 584, 21 L.Ed.2d 637 (1969); United States v. Legato, 480 F.2d 408, 412, n. 10 (5th Cir., 1973); United States v. Berry, 150 U.S.App.D.C. 187, 463 F.2d 1278, 1281 (1972); Government of the Canal Zone v. Wright, 460 F.2d 1402, 1403 (5th Cir., 1972); United States v. Squella-Avendano, 447 F.2d 575, 582-583 (5th Cir., 1971); United States v. Crane, 445 F.2d 509, 519 (5th Cir., 1971); United States v. Dzialak, 441 F. 2d 212, 216 (2nd Cir., 1971); United States v. Ardle, 435 F.2d 861, 862-863 (9th Cir., 1971); United States v. Viggiano, 433 F.2d 716, 718-719 (2nd Cir., 1970); Cali. v. United States, 338 F.2d 974, 977 (1st Cir., 1964). See also United States v. Evans, 481 F.2d 990, 992 (9th Cir., 1973). As to the first excursion in El Paso and the informant’s first report, the information was corroborated in that the described persons were in fact in El Paso, they were driving the black and brown 1966 Oldsmobile, and the license was issued to Minnieweather.

In addition to the investigating officer’s observations that corroborated the specific details of the informer’s report, the customs agents observed other circumstances indicating possible criminal conduct. During the surveillance previously described, the agents observed that the suspects were simply not conducting themselves in the manner of typical tourists or businessmen.

In arriving at the conclusion that probable cause existed, we recognize that there were actually two excursions to El Paso and that the unidentified informer gave information on,two separate occasions. The detailed information was more specifically corroborated in the first report than in the second report. We do not feel, however, that probable cause must be established independently as to each sojourn to El Paso. We consider both informants reports to be in regard to a single continuing criminal occurrence that involved two trips to El Paso. The type of criminal activity, the locations and the parties to the illicit activities are basically the same. Therefore, based upon the specific detailed information of the informant’s reports, in addition to the agents’ observations of the appellants’ activities indicating criminal conduct, we hold that the constitutional requirement of probable cause is satisfied.

II.

We turn next to the issue whether the trial court improperly admitted into evidence the heroin that was discovered as a result of the search of the 1971 Chrysler. The trial court failed to make findings of fact and conclusions of law regarding defendants’ motions to suppress, and there is no indication in the record as to the legal theory upon which it relied in admitting the evidence. Although such findings are purely discretionary, this court can depart from them only if found to be clearly erroneous. Since no findings were entered, however, we must independently review the record to determine whether there is any reasonable view of the evidence that supports the admissibility of the heroin. United States v. Montos, 421 F.2d 215, 219 n. 1 (5th Cir., 1970), cert. den., 397 U.S. 1022, 90 S.Ct. 1262, 25 L.Ed.2d 532 (1970). Because of the limitation imposed upon the search incident to arrest, the search cannot be upheld on this principle. It is not contended that the search was an investigatory search, a border search or that the search falls within the automobile exception to the Fourth Amendment. Therefore, the only possible theory upon which this search may be upheld is on the basis of a voluntary consent search.

It is well settled that a search authorized by consent results in a relinquishment of Fourth Amendment rights. Schneckloth v. Bustamonte, 412 U.S. 218, 93 S.Ct. 2041, 36 L.Ed.2d 854 (1973); Katz v. United States, 389 U.S. 347, 358, n. 22, 88 S.Ct. 507, 19 L.Ed.2d 576 (1967); Zap v. United States, 328 U.S. 624, 630, 66 S.Ct. 1277, 90 L.Ed. 1477 (1946); Davis v. United States, 328 U.S. 582, 593-594, 66 S.Ct. 1256, 90 L.Ed. 1453 (1946). When consent is the alleged justification for a search, the burden is on the government to demonstrate that it was “freely and voluntarily given” and not simply “acquiescence to a claim of lawful authority.” Bumper v. North Carolina, 391 U.S. 543, 548-549, 88 S.Ct. 1788, 1792, 20 L.Ed.2d 797 (1968); see Johnson v. United States, 333 U.S. 10, 16-17, 68 S.Ct. 367, 92 L. Ed. 436 (1948). Moreover, the defendant need not be informed specifically of his Fourth Amendment rights, United States v. Jones, 475 F.2d 723, 731 (5th Cir., 1973); United States v. Canseco, 465 F.2d 383, 385 (5th Cir., 1972), nor must the investigating officer state that he will refrain from searching if the defendant refuses to give permission. United States v. McCann, 465 F.2d 147, 158 (5th Cir., 1972); United States v. Resnick, 455 F.2d 1127, 1133 (5th Cir., 1972). Finally, voluntariness is to be determined from all the facts and circumstances surrounding the defendant’s alleged consent. Schneckloth v. Bustamonte, supra, at 233 of 412 U.S., 93 S. Ct. 2041 ; United States v. Jones, supra, at 728-731 of 475 F.2d; United States ex rel. Harris v. Hendricks, 423 F.2d 1096, 1099 (3rd Cir., 1970); United States v. Boukater, 409 F.2d 537, 538 (5th Cir., 1969); Phelper v. Decker, 401 F.2d 232, 238 (5th Cir., 1968).

With these principles before us, we turn to the facts and circumstances surrounding the defendants’ apprehension and the subsequent search of the 1971 Chrysler. Defendant Horton was first asked if the agents could search' the 1971 Chrysler when the taxi in which the suspects were riding was stopped near the entrance of the El Paso airport. After driving from the airport to where the vehicle was located, Horton was again asked if he had any objection to the search of the vehicle, and he replied that he had no objection. Moreover, as the automobile was searched and the suspects’ luggage was removed from the trunk, each person readily identified his or her luggage. More specifically, Horton identified the grey attache case where the three pounds, two ounces of heroin was found.

The arrest of the defendants was based on probable cause, and there is no indication in the record that the investigating officers used tactics that would augment the degree of the coercion that is inherent in any arrest. There is no evidence in the record of any intimidation, physical or psychological abuse, or threats tending to invalidate the consent. Although the suspects were not informed of their right to remain silent and that anything they said might be used against them, this is only one consideration in assessing voluntariness. In light of all the surrounding facts and circumstances, we are convinced that the consent was voluntary.

III.

The final issue we must consider is whether there is sufficient evidence in the record to sustain the conviction of defendant Jordan. We recognize that all the evidence and reasonable inferences therefrom must be viewed in a light most favorable to the government. Glasser v. United States, 315 U.S. 60, 62 S.Ct. 457, 86 L.Ed. 680 (1942). Furthermore, in circumstantial evidence cases, the trier of fact must “reasonably find that the evidence excludes every reasonable hypothesis, except that of guilt.” United States v. Sidan-Azzam, 457 F.2d 1309, 1310 (5th Cir., 1972). In measuring the sufficiency of evidence against this standard, “we must affirm any conclusion that could be reached by reasonable minds.” United States v. Squella-Avendano, 478 F.2d 433, 437 (5th Cir., 1973).

Because there is no evidence in the record demonstrating that Jordan was ever in actual possession of the heroin, the evidence must support a finding of constructive possession. Constructive possession has been defined as exercising dominion or control over the proscribed substance. United States v. Martin, 483 F.2d 974 (5th Cir., 1973); United States v. Stephenson, 474 F.2d 1353, 1355 (5th Cir., 1973); United States v. Mendoza, 433 F.2d 891,1896 (5th Cir., 1970); Garza v. United States, 385 F.2d 899, 901 (5th Cir., 1967).

The informant’s first tip stated that Minnieweather would be accompanied by another black male, and the evidence in this ease places Jordan in El Paso with Minnieweather during the first excursion to that city. It is well established that Jordan was with Horton during the period of the second trip to El Paso. But while the record demonstrates Jordan’s proximity to the illegal substance and to the person who did have control over the heroin, we believe it is insufficient to sustain his conviction. In questioning at the customs office after their apprehension, Horton stated that he thought Jordan “knew what was going on.” During this questioning Horton stated that the heroin was his, that it was purchased with his money, and that he was willing to take the blame for it. Jordan denied knowledge of the existence of the heroin or of any transactions involving drugs. As previously stated, the attache case containing the heroin belonged to Horton although it was found in Jordan’s automobile. The case was locked and apparently only Horton had keys to open it. Furthermore, the evidence does not establish any type of “working relationship” between the parties regarding the heroin but merely an association. United States v. Stephenson, supra, at 1855 of 474 F.2d. We do not believe that control or dominion of the substance necessary to establish constructive possession is supported by this evidence. Therefore, Jordan cannot be held to have violated § 841(a) (l).

Because the defendants did not move for a new trial in this case, we reverse and remand with instructions to enter a judgment of acquittal with respect to defendant Jordan. United States v. Restaoo, 449 F.2d 485, 488 (5th Cir., 1971); United States v. Musquiz, 445 F.2d 963, 966 (5th Cir., 1971). We affirm as to defendant Horton.

      . Sec. 841(a) (1) provides as follows:
      “(a) Except as authorized by this sub-chapter, it shall be unlawful for any person knowingly or intentionally — •
      (1) to manufacture, distribute, or dispense, or possess with intent to manufacture, distribute, or dispense, a controlled substance.”

      . Miranda v. Arizona, 384 U.S. 436, 86 S.Ct. 1602, 16 L.Ed.2d 694 (1966).

      . Jordan has standing to challenge the admissibility of the heroin because he has been charged with its possession. Jones v. United States, 362 U.S. 257, 264, 80 S.Ct. 725, 4 L.Ed.2d 697 (1960) ; United States v. Legato, supra, at 410, n. 6 of 480 F.2d.

      . We recognize that the defendant in Bclmecldoth was not in custody or under arrest at the time he gave consent to search, but the standard is no different where the defendant is under arrest or in custody.

      . Significantly, the consent was not obtained after an illegal arrest. For in such a case, the government would have the even more substantial burden of showing voluntariness untainted by an illegal arrest. Wong Sun v. United States, 371 U.S. 471, 83 S.Ct. 407, 9 L.Ed.2d 441 (1963) ; Bretti v. Wainwright, 439 F.2d 1042 at 1045; Agius v. United States, 413 F.2d 915, 919-920 (5th Cir., 1969) ; Phelper v. Decker, supra, at 237-238 of 401 F.2d.

      . While Jordan may actually be the owner of the 1971 Chrysler, Horton is nevertheless authorized to give consent to search it. As Horton possessed the keys to the vehicle and represented that he was the owner, without objection from Jordan, it may be plausibly argued that Horton was a joint user of the automobile. Frazier v. Cupp, 394 U.S. 731, 740, 89 S.Ct. 1420, 22 L.Ed.2d 684 (1969).

      . In Robinson v. United States, 325 F.2d 880 (5th Cir., 1964), we were concerned with a search of defendant Robinson’s automobile based upon consent. Prior to searching the vehicle, one of the investigating officers asked Robinson for the keys to the vehicle and stated that he wanted to search it. Without objection, Robinson gave the keys to the officer, and this court upheld the search based upon a valid consent. Id. at 884.

      . Jordan was not charged with conspiring to possess the heroin, 18 U.S.C.A. § 371 (1966), nor with aiding or abetting the offense of heroin possession, id. § 2(a).


author: COFFIN, Chief Judge.

text:
    DALE ELECTRONICS, INC., Plaintiff, Appellant, v. R. C. L. ELECTRONICS, INC., Defendant, Appellee. DALE ELECTRONICS, INC., Plaintiff, Appellee, v. R. C. L. ELECTRONICS, INC., Defendant, Appellant.
    Nos. 73-1203, 73-1204.
    United States Court of Appeals, First Circuit
    Heard Oct. 3, 1973.
    Decided Dec 5, 1973.

      Donald H. Zarley, Des Moines, Iowa, with whom Martin L. Gross, Sulloway, Hollis, Godfrey & Soden, Concord, N. H., Michael G. Voorhees, Zarley, McKee, Thomte & Voorhees, Des Moines, Iowa, and James J. Holmberg, Columbus, Neb., were on brief, for Dale Electronics, Inc.
    Arnold Sprung, New York City, with whom Nathaniel D. Kramer, and Burgess, Dinklage & Sprung, New York City, were on brief, for R.C.L. Electronics, Inc.
    Before COFFIN, Chief Judge, MOORE  and MeENTEE, Circuit Judges.

       Of the Second Circuit, sitting by designation.

   COFFIN, Chief Judge.

These cross appeals stem from a patent infringement action, involving five patents relating to electrical resistors, their structure, method of construction, and design. The proceedings also in-eluded a claim of unfair competition. The district court, after an extensive trial, made a number of rulings. Since these are cross appeals, we shall refer to plaintiff below in the major action, Dale Electronics, Inc., simply as Dale, the owner of the patents, and defendant, the original defendant and counterclaimant, R.C.L. Electronics, Inc., as R.C.L. Since we do not reach many of the rulings, we shall not list them here but shall indicate our holding under each heading and shall indicate the rulings in the court below which are not reached. At the conclusion of the opinion we shall summarize our holdings.

The electrical resistors involved in these patents consist of an initial resistor wire wound around a ceramic core. Their purpose is to conduct electricity in an electrical circuit while converting part of the electricity to heat. The quality of “resistance” is the ability of the wire to use up electricity. The function of the core, whether a tube or cylinder, is to support the coiled wire, without taking electricity from the wire. The core, in other words, must be an insulator. But, since much heat is associated with resistance, a resistor core also must be able to absorb and dispose of heat through terminals at its ends. In short, a core should not only be a good insulator; it should be a good conductor. Generally, a good conductor of heat is also a good conductor of electricity; and a poor conductor of electricity, 1. e., a good insulator, is a poor conductor of heat. The ceramic known as beryllium oxide (BeO), has the distinction of being both a good electrical insulator and a good thermal conductor. Herein lies much of our story.

The '090 Patent

The district court, 356 F.Supp. 1117, characterized the essence of this patent as “the use of beryllium oxide of at least ninety percent purity as the core of the resistor.” This is consistent with Dale’s description in its brief: “The single claim of this patent sets forth the BeO core in combination with the conventional resistor components, and requires further that the BeO comprise at least 90 percent by weight of the core to insure that the requisites of certain load life test be met.” The court fully acknowledged the fact that the use of BeO as a core in electrical resistors, first devised by Dale’s assignor and employee, Hay, was eminently successful, enabling resistors, avoiding concentrated build-up of heat by BeO’s high conductivity, to achieve longer life at higher temperatures than traditional ceramic cores and to be produced in smaller size, fitting “the miniaturization revolution”. Nevertheless, the court held the patent invalid for obviousness.

In so doing the court relied, in varying degrees, on several sources of prior art. The first, and the only prior art referred to in the file wrapper, consisted of two patents: the Von Wedel Patent (No. 2,075,876) granted April 6, 1937, which observed that BeO, when mixed with materials such as fluorides, made an admirable insulating coating for twisted wires operating at high temperatures; and the Lindenblad Patent (No. 2,734,344), granted February 14, 1956, which used BeO as rings or sleeves around banks of thermo-couples, because they were both thermally conductive but electrically insulating, thus giving excellent heat transfer from one bank of thermo-couples to another. The court cited these patents as bearing “directly on the issue”, but did not rely heavily on them.

The court then referred, without further exegesis, to a number of scientific articles published in the 1950’s explaining the use of BeO as a combination insulator and conductor. It then went on to what it termed more “crucial” aspects of the prior art which it said lay not in the patents or scientific articles but in the “manner” in which the inventor, Hay, came to use BeO. The court noted that Hay’s acquaintance with BeO resulted from a conversation with a salesman of a company supplying ceramic cores to Dale, leading to an order for BeO which was never fulfilled. Next came Hay’s visit to a trade show in August of 1961 where Hay ordered sample cores of BeO from National Beryllia Corporation. National Beryllia, the court observed, had, in 1959, advertised in a trade journal the availability in quantity of “Ber-lox” (pure BeO), “extremely high in thermal conductivity and electrical resistivity”, in various shapes and forms for insulators and other uses. The court found that in 1961 Hay himself received a graph, prepared by National Beryllia, illustrating a dramatic exponential increase in thermal conductivity for materials comprising a BeO component of at least 90 per cent in weight. The court concluded that “the adaptation by Hay of beryllium oxide was obvious to him and would have been to anyone skilled in the art.”

We agree. We begin with observing that the file wrapper history leaves us somewhat puzzled. The thrust of Dale’s effort before us, and before the district court has been the uniqueness of using 90 per cent BeO as the core of a resistor. Yet this application required almost five years of siege before the Patent Examiner yielded. He had firmly, up to almost four years after filing, resisted a positive reeommen-dation, saying knowledge of the properties of 90 per cent BeO was old in the art. Finally, the examiner, while rejecting all of the structural claims, stated that a new claim, describing the performance of the core at maximum temperature for a fixed period of time, specifying a maximum temperature and a minimum deviation in resistance value for the resistor, would be acceptable. Whereupon without explanation for the about-face, all the previously rej'ected structural descriptions, conj'oined with the new performance assurance, gained a favorable decision.

We therefore face a Patent Office ruling that approaches the point where “[w]e are at a loss to explain the Examiner’s allowance on the basis of such a distinction.” Graham v. John Deere Co., 383 U.S. 1, 34, 86 S.Ct. 684, 702, 15 L.Ed.2d 545 (1966). While the grant of a patent carries with it a presumption of validity, we tend to view the strength of the presumption in this case as minimal. See Hawley Products Co. v. United States Trunk Co., 259 F.2d 69, 72, 74 (1st Cir. 1958). On the other hand, we deal with a decision made by a district court in a field which lends itself to several “factual inquiries”: “the scope and content of the prior art”, the “difference between the prior art and the claims at issue”, and “the level of ordinary skill in the pertinent art”. 383 U.S. at 17, 86 S.Ct. at 694. These factual determinations are entitled to weight in our deliberations. See discussion infra.

Dale does not challenge reference to the VonWedel and Lindenblad patents and the scientific articles we have referred to in n. 3. As we have implied, these are more than insubstantial bases for a finding of obviousness, particularly when coupled with the 1959 National Beryllia advertisement. Dale concentrates its fire on the propriety of the court’s heavy reliance on Hay’s conversation with the salesman, his attendance at the trade show, and the National Beryllia graph. Preliminarily, Dale argues that none of these can constitute prior art because they are not or have not been proven to be “publications”. Dale seems to be seizing on one category of prior art as exclusive. In Graham, supra, 383 U.S. at 15, 86 S.Ct. at 692, the Court refers to the Congressional reports in relation to § 103 defining the condition of obviousness as referring to “the difference between the subject matter sought to be patented and the prior art, meaning what was known before as described in section 102.” Section 102 refers to the conditions which foreclose invention. Among them are that the invention was known ... by others”, § 102(a), and that the supposed inventor “did not himself invent the subject matter”, § 102(f). Since § 102 is the referent for § 103, we draw the conclusion that if the facts that the whole of an invention was known to others or that none of the invention was created by the patent applicant bar entitlement under § 102, the condition of knowledge by others or the borrowing by the applicant of a sufficient body of lore to make the invention obvious bars entitlem’ent under § 103. General Instruments Corp. v. Hughes Aircraft Co., 399 F.2d 373, 384 (1st Cir. 1968) (notebooks recording experimental work were accepted as evidence of prior art); see Colourpicture Publishers v. Mike Roberts Color Productions, 394 F.2d 431, 434-435 (1st Cir. 1968) (common objects were contemplated as eligible prior art).

Coming to the facts, the whole significance of Hay’s conversation with the salesman is muted somewhat by the fact that Dale could not find a copy of Hay’s letter to the salesman following the conversation. But enough remains. Hay testified that, had it not been for his conversation with the salesman, in which the latter suggested BeO as a core material with high thermal conductivity, the idea of making a resistor core from BeO “wouldn’t come up in my mind”. He also testified that the salesman, whose company was already selling Dale a material for a capacitor product, did not mention BeO for that use and that the only product Dale was making to which the salesman’s suggestion could be relevant was a resistor.

Hay’s subsequent visit to a trade show, where he inquired of National Beryllia about the availability of BeO, does not seem significant. But flowing from this contact, was Hay’s receipt of samples of BeO rods in November, 1961, from National Beryllia. Before that time he had received data sheets. Asked if the graph showing the remarkable conductivity of BeO exceeding 90 per cent purity had come with the data sheets, Hay replied, “I don’t know if it came in that particular group of mail.” In any event, it was this graph, which Hay referred to as a “publication” of National Beryllia, which told him not only that the thermal conductivity of BeO was related to its purity but that at around 90 per cent purity there was a sharp increase in such conductivity.

On receipt of the BeO rods, Hay wound resistor wires around them, thus making his first resistors. This took place in mid-November. In December temperature rise tests were run, showing excellent conductivity. In January of 1962 load life tests showed that the resistors proved more stable, with smaller resistance deviations, than Dale’s standard resistors made with aluminum cores. On January 26, 1962, Hay signed a patent disclosure which essentially described his concept as that of using BeO as a core. No reference to the required relative purity of BeO was made. On February 15, 1962 Hay signed the patent application which was filed on February 26. It summarized the temperature and load life tests, described his method of preparing his core material “by mixing substantially 95 per cent by weight of beryllium oxide with substantially 5% by weight of earth clay.” One of the claims specified that BeO must be approximately 90 per cent by weight of the core.

The record reveals, despite some initial testimony to the contrary, that no tests showing the critical necessity for BeO of approximately 90 per cent purity were conducted prior to the filing of the patent application. Hay testified that the National Beryllia graph would tell one looking for a core material of high thermal conductivity to pick BeO of more than 90 per cent. Three years later, in buttressing efforts in the Patent Office, Hay included, without attribution to National Beryllia, a replica of its graph as an exhibit illustrating BeO’s conducting properties, calling particular attention to the sharp changes in the slope of the curve at the point where the concentration of BeO is at least 90 per cent.

It seems abundantly clear to us that, given the latitude possessed by the district court in resolving the “factual inquiries” required in determining the issue of obviousness, the record supports the court’s conclusion. Graham v. John Deere Co., 383 U.S. 1, 5, 17, 86 S.Ct. 684, 15 L.Ed.2d 545 (1966); Nashua Corp. v. RCA Corp., 431 F.2d 220, 222 (1st Cir. 1970); Columbia Broadcasting Sys. v. Sylvania Electronic Prod. Inc., 415 F.2d 719, 728 (1st Cir. 1969); General Instrument Corp. v. Hughes Aircraft Co., 399 F.2d 373, 384 (1st Cir. 1968); Koppers Co. v. Foster Grant Co., 396 F.2d 370, 372 (1st Cir. 1968). The allowance of the patent, after a long and arduous process, on the basis of a description of performance of the structure which had steadily been rejected, renders more significant in our eyes any idea sources which were not revealed to the examiner. The existence of widespread literature in the 1950’s and early 1960’s including advertisements, concerning the increasing feasibility for many uses of the highly conductive and insulative BeO would have suggested to a wider reader than Hay what in fact he learned from the salesman — that BeO had arrived at the point where it might be excellent material for a resistor core. The National Beryllia graph, described constantly by Hay as a publication, provided Hay with the precise information as to purity required in a high performance resistor. Hay struck a rich lode only after all of the technology had led him to the marked spot. The knowledge of BeO’s qualities and the new processes that made it more readily available combined in drawing the map. Hay needed only the knowledge of one skilled in the art to come upon the discovery. His advantage was only one of time. That is not enough.

So holding, we do not have occasion to review the court’s conclusion that Hay had met the novelty requirement of 35 U.S.C. § 102(f); that '090 contained sufficient instruction to satisfy the requirements of § 112; or that, were the patent valid, R.C.L.’s BeO core resistors infringe ’090.

The ’704 and '855 Patents

These patents concern the method (’855) of producing a resistor inbedded in a metal housing (’704). Both relate to an insulative fluid injected under pressure between the resistor core and the housing. Both patents refer to the recommended hardenable insulative material as “materials in the classification of epoxys, phenolics or silicones.” To find a particular material which would work, according to Hay, the inventor, one would have to experiment. He also testified that at the time he filed his applications, he knew a specific material that worked very well, Rogers RX 600. Indeed, he had failed to make work many other materials in the classes described.

The district court held that “the plaintiff’s desire to bring all types of insulating material within the scope of its patent claim without disclosing the one material that worked effectively has resulted in a description too vague for an accurate and effective disclosure of the invention” and ruled the patent invalid-under the “best mode” language of § 112. We agree.

Dale’s major argument is that the nondisclosure of Rogers RX 600 was not intentional. We do not accept the proposition that where an inventor, as here, clearly knows a specific material that will make possible the successful reproduction of the effects claimed by his patent, but does not disclose it, speaking instead in terms of broad categories, he may nevertheless be considered as having described the best mode contemplated by him. The statutory language seems to contemplate precisely this situation. In Indiana General Corp. v. Krystinel Corp., 297 F.Supp. 427 (S.D. N.Y.1969), aff’d, 421 F.2d 1023 (2d Cir. 1970), the court upheld a finding of failure to disclose best mode, but at the same time refused to order attorney’s fees, finding no deliberate fraud. Unintentional obtuseness or obfuscation might be a reason not to penalize someone; we do not see it as a reason for granting a seventeen year monopoly.

This holding makes unnecessary any review of the court’s holding that these two patents met the nonobviousness requirement of § 103; that ’704 met the no-public-sale-for-a-year requirement of § 102(b); that, if ’855 and ’704 are valid, R.C.L.’s in-house molding process and resulting product infringe; or that R. C.L.’s resistors made by the “stuffing” method do not infringe ’704.

Dale’s Rule 59 Motion

Dale challenges the district court denial of its Rule 59(e) motion to amend the judgment to read: “Nothing in this Opinion or Judgment shall be prejudicial to plaintiff’s right to obtain and bring suit for infringement of reissue patents emanating from Patent 3,201,855 and U.S. Patent 3,206,704.”

This, Dale suggests, was “not typical of the usual motion to amend judgment”. This seems to us an understatement, the motion not being aimed at the judgment but at implications which might be drawn from it. Upon the district court’s denial, Dale insisted on digging itself in deeper by asking if the denial was “on the merits”, to which the court gave an affirmative answer.

It seems to us that the parties are trying to litigate something that as yet does not exist. We do not know whether or not Dale may be able to obtain a reissue patent, or, if it may, on what grounds. The eases cited by R.C.L. to support the district court ruling are appeals from denials of the reapplications or claims of infringement with counterclaims of invalidity of reissue patents. Application of Hafner, 410 F.2d 1403 (Cust. & Pat.App.1969); Application of Nelson, 280 F.2d 172, 47 C.C.Pa. 1031 (1960); Bendix Corp. v. Balax, Inc., 421 F.2d 809 (7th Cir. 1970); Maxant Button & Supply Co. v. Sears Roebuck & Co., 388 F.2d 912 (7th Cir. 1968). They are distinguishable from this case where there is no challenge to a reissue patent nor a claim that a reissue has been improperly denied.

We think it inappropriate that the court’s decision be construed as wider than the issues which were before it. We accordingly hold that the court’s denial of the motion was within its discretion, Walker v. Bank of America Nat’l Trust & Saving Ass’n, 268 F.2d 16 (9th Cir.), cert. denied, 361 U.S. 903, 80 S.Ct. 211, 4 L.Ed.2d 158 (1959); Boaz v. Mutual Life Ins. Co. of New York, 146 F.2d 321 (8th Cir. 1944), but has no broader substantive effect.

R.C.L.’s Counterclaim

R.C.L. challenges the court’s dismissal of its counterclaim seeking an affirmative ruling that the ’356 patent be declared invalid. This counterclaim was interposed to Dale’s claim of infringement. Before trial, Dale moved to withdraw its claim of infringement of the ’356 patent and for dismissal of R.C.L.’s counterclaim alleging invalidity. The court reserved judgment on this motion until after trial at which time it granted the plaintiff’s motion and dismissed the counterclaim on the theory that there was no longer a justiciable controversy. R.C.L. cites several cases for the proposition that a counterclaim in a patent suit which seeks a declaration of invalidity of a patent can remain for independent adjudication, notwithstanding a stipulation of noninfringement.

In response, Dale claims that R. C.L. waived the right to proceed on the basis of a letter dated almost a year before trial began and well before Dale moved to drop its claim of infringement. The letter, on another point entirely, does not affect R.C.L.’s rights. Legal authorities support R.C.L.’s position that it was entitled to a decision on the validity of the ’356 patent. Hawley Products Co. v. United States Trunk Co., 259 F.2d 69, 75-76 (1st Cir. 1958); Trico Products Corp. v. Anderson Co., 147 F.2d 721, 722 (7th Cir. 1945); Marshall v. RCA Corp., F.Supp., 177 U.S.P.Q. 426, 430 (S.D.Ind.1973); International Min. & Chem. Corp. v. Golding-Keene Co. (W.D.N.Y.1958), 164 F.Supp. 101.

Accordingly, this issue must be remanded, and, if R.C.L. wishes to pursue it, the district court has discretion to consider it on the record made to date or may receive further evidence if it sees fit.

The ’884 Design Patent

This patent described an ornamental design for a housed resistor of the kind shown in the ’855 and ’704 patents. Housed resistors do not have much opportunity for originality of basic design. They must cover the core and wire. They require external ribbing to help dissipate heat. They also need a flat surface on which a manufacturer’s label can be imprinted. Prior patents, one of which was not disclosed to the Patent Office, had the ribs running along the top of the housing. ’884 had the ribs on the sides and the flat surface for the label on top. The court held that “It was not only the prior art, but the dictates of the manufacturing process that made the design obvious.” It also held that ’884 did not describe “any new, original and ornamental design”, as required by § 171. Despite the Patent Office’s approval and the testimony of a hostile witness that somehow the virtue of ’884 lay in a design consistent with other computer equipment, we cannot bring ourselves to say that the district court overlooked “some exceptional talent beyond the skill of the ordinary designer”. G. B. Lewis Co., et al. v. Gould Products, Inc., 436 F.2d 1176, 1178 (2d Cir. 1971). “It seems to us at the most to call only for such routine skills as might be expected of any designer in the field . . . .” The design patent shows “some minor variation of the prior art well within the competence ‘of an ordinary practitioner of the craft exercising merely the skill of his calling’ ”. Hawley Products Co. v. United States Trunk Co., 259 F.2d 69, 74 (1st Cir. 1958).

Unfair Competition

Dale had merchandized its panel housed resistors, using the letters PH. Dale’s Vice President disavowed any trademark claim. Dale’s products had been used for years with panel housed (or mounted) resistors. One of Dale’s customers asked R.C.L. to copy Dale’s units. R.C.L. supplied its own resistor, noting thereon “RCL PH-10-150”. The customer returned some of these units to Dale. The court held that only the buyer was confused, that any prospective buyer could ascertain the source by looking at the marking, that “PH” was a generic term, meaning “panel housed”, that R.C.L. attempted to sell to no one but the customer who asked R.C.L. to manufacture to Dale’s specifications. It concluded that Dale had not proven a case of unfair competition. We affirm.

Costs and Fees

Dale seeks fees and costs in connection with the class action phase of this litigation. The complaint, filed in March of 1971, naming R.C.L. as representative of a class including twelve other alleged infringers. Expensive, court-approved notices were prepared and published. Finally, the court dismissed the action as to the class. Dale claims that R.C.L. sat back in bad faith and that the court abused its discretion in refusing to approve Dale’s request. R.C.L. denies any bad faith alleging that it could care “less if it was led to the courthouse as a lone sheep or as part of a herd”. R.C.L. for its part claims an abuse of discretion in the court’s refusal to award reasonable attorney’s fees and taxing certain costs.

As to Dale’s claims for class action related fees and costs and R.C.L.’s claim for fees, we see no basis for concluding that the court abused its discretion. In such a trade-off situation it would be particularly difficult to try to second guess the district court. The taxing of the prevailing party’s deposition costs in his favor is also a matter committed to the sound discretion of the trial court. The trial court’s exercise of discretion will normally not be interfered with by an appellate court. Emerson v. National Cylinder Gas Co., 251 F.2d 152 (1st Cir. 1958). We readily recognize that daily copy in such a long and complex trial as this may be deemed essential by the parties. Their agreement to share the costs witnesses their similar belief. The court apparently felt that each side had realized benefit from the agreement and decided to allow the burdens to rest where they lay. We cannot say the court abused its discretion in denying reimbursement of some of R.C.L.’s costs.

We therefore summarize our holdings as follows:

—We affirm the judgment of invalidity of the ’090 patent for obviousness;
—We affirm the judgment of invalidity of the ’855 and ’704 patents for failure to describe the best mode of implementation, in violation of 35 U.S.C. § 112;
■ — We affirm the judgment of invalidity of the ’884 patent for obviousness and failure to meet the standard of originality of 35 U.S.C. § 171;
—We affirm the judgment for defendant in plaintiff’s claim of unfair competition;
—We affirm the denial of plaintiff’s Rule 59 motion;
—We reverse the judgment dismissing defendant’s counterclaim and remand for further proceedings;
—We affirm the court’s denial of fees and costs requested by plaintiff in connection with the class action; we also affirm the court’s denial of counsel fees requested by defendant and its denial of costs of defendant’s share of court reporters’ fees and deposition.

      . The patents in suit are the following:
      No. 3,295,090 (hereinafter ’090), filed February 26, 1962, granted December 27, 1966 — product patent for resistor using beryllium oxide (BeO) as its core material;
      No. 3,201,855 (hereinafter ’855), filed February 21, 1961, granted August 24, 1965 — a method patent dealing with the making of a metal housed resistor;
      No. 3,206,704 (hereinafter ’704), filed November 19, 1962, granted September 14, 1965 — product patent for the resistor made by the ’855 method;
      No. D-201,884 (hereinafter ’884), filed July 3, 1963, granted August 10, 1965 — a design patent relating to. external design of a metal housed resistor.
      A fifth patent, No. 2,878,356 (hereinafter ’356), filed November 16, 1955, granted March 17, 1959, relates to a housed resistor adapted to be secured to a supporting panel. The charge of the infringement was withdrawn before trial. Dale, which counterclaimed asserting invalidity, cross appeals from the order dismissing its counterclaim for lack of a controversy.

      . “A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived by the manner in which the invention was made.” 35 U.S.C. § 103.

      . Much more could he said about these articles, roughly a dozen in number. Covering the period from 1947 to 1961, they demonstrated continuing and increasing interest in BeO as an excellent heat conductor, over a wide temperature range, with increased supply being noted in 1957, and with control of the toxicity problem being noted in 1961.

      . The court also referred to other promotional material, beginning in the late 1950’s, published by National Beryllia to promote BeO. While we do not consider all these materials, because they are unnecessary to our conclusion and because the dates are contested by Dale, we do note that three of these publications were admitted by Dale to have been received by Hay prior to the patent date, with or shortly after a letter from National Beryllia dated September 19, 1961. These pamphlets, entitled “BeO Booms in Space Age”, “Beryllia Aids Equipment Cooling”, “Belox ‘Off the Shelf’ Transistor Heat Sinks”, were submitted into evidence by both parties.

      . The latter is challenged on the procedural ground of lack of notice, in violation of 35 U.S.C. § 282, a challenge which the district court rejected. We do not disturb its ruling. See n. 11, infra.

      , The premise does not, on scrutiny of the record, apply to the graph. This was referred to by Hay as one of the National Beryllia’s “publications” and was sent to Hay with other publications. Dale’s speculation in the brief that it could have been specially prepared for Hay’s private use might be considered a good college try at the trial level. In the face of an adverse factual ruling below, it is less than that here.

      . At another point he said that he believed that he received the graph prior to the filing of his patent application.

      . Hay’s precise testimony on this point is as follows:
      “A. Did I realize that the thermal conductivity was dependent on the purity prior to looking at a publication from National?
      Q. Yes. Did you?
      A. I don’t recall any other publication. The one that National Beryllia put out is the only one that I recall at the present time that did show this.
      Q. Did you independently make this determination, or did you get this information from that publication?
      A. From that publication.
      í¡« sjs }{* * *
      Q. Do you recall if this publication had a chart or indication showing the exact relationship of the purity of Beryllium Oxide to its thermal conductivity?
      A. Yes.
      !«! S»S S{i * *
      Q. And this is what told you that the thermal conductivity of Beryllium Oxide increases with its purity?
      A. Yes.
      Q. And did this chart also tell you that around 90 per cent you get a sharp increase in the thermal conductivity?
      A. Yes.”

      . Hay’s affidavit contained other exhibits based on tests conducted at Dale. Counsel’s written remarks to the Patent Office and, subsequently, to the Board of Appeals, referred to the “affidavit pertaining to certain tests and data [sic] conducted”, without revealing that Exhibit A (the graph) was a copy of National Beryllia’s graph, the experimental basis for which was not known to Hay. B..C.L. contends that the court should have held the patent unenforceable because of nondisclosure and misrepresentation to the Patent Office. The court did not deal with Dale’s failure to disclose some published materials and, as to the graph, found no deliberate misrepresentation. We are not sure that an innocent but not insignificant misleading, in a Patent Office proceeding so long contested and so narrowly decided, would not compel invalidation. We do not reach this issue.

      . This description made central to the performance “the operative engagement between said terminal elements and the surface of said insulative core”. Nothing in the testimony revealed to us any importance stemming from the engagement between terminals and the core.

      . Implicit in our holding is affirmance of the court’s overruling of Dale’s objections under 35 U.S.O. § 282 that R.C.L. failed to give thirty days’ written notice of the June, 1959, National Beryllia advertisement, the conversation with the salesman, and Hay’s visit to the trade show. The statute gives the court discretion. We have reviewed the evidence as to those items, none of which we deem of dispositive significance to our holding, and conclude that the court was well within its discretion. Also implicit in our affirmance of the court’s conclusion of obviousness is our rejection of Dale’s argument that the court violated that provision of § 103 forbidding the negativing of a patent because of the “manner” in which the invention was made. The court began its discussion of the specific sources which influenced Hay by using the word “manner”. “Manner” is a blanket word. The court was clearly using it to connote “events which led up to”, not as a characterization of the efforts of the inventor in making his discovery. Indeed, the court was narrating the contribution of others.

      . “Q. But, at the time you filed this application, you had in mind a specific material that did work very well, did you not?
      A. Yes.
      Q. What was that material?
      A. Rogers RX 600.
      Q. And that was the best mode that you contemplated in carrying out this invention at that time?
      A. I don’t understand what you mean.
      Q. Is that the best way you could think of carrying out your invention with Rogers RX 600?
      A. Yes.
      Q. Did you set it forth in your patent?
      A. No.”

      . “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.” 35 U.S.C. § 112.


author: PER CURIAM:

text:
    Garfield JEFFERSON, Petitioner-Appellant, v. UNITED STATES of America, Respondent-Appellee.
    No. 73-2874
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Jan. 14, 1974.

      Garfield Jefferson, pro se.
    W. E. Smith, Asst. U. S. Atty., Fort Worth, Tex., for respondent-appellee.
    Before THORNBERRY, GOLDBERG and RONEY, Circuit Judges.

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

   PER CURIAM:

We vacate the denial of petitioner’s collateral attack on his 1970 sentence as a second narcotics offender, and remand for further proceedings concerning the validity of his first offense, a 1951 conviction for failure to comply with the transfer provisions of the Marijuana Tax Act (26 U.S.C.A. § 4744).

The appellant was convicted in 1951 for violating the Marijuana Tax Act, 26 U.S.C.A. § 4744(a)(1), now repealed. During those proceedings he waived his right to counsel, pled guilty, and was given a two-year sentence, which has now been fully served.

On March 19, 1970, Jefferson was convicted of unlawful transportation, receiving and concealing heroin in violation of 21 U.S.C.A. § 174. On the basis of the 1951 conviction, the trial court sentenced him to serve fifteen years as a second narcotics offender.

Three years later, the appellant filed this 28 U.S.C.A. § 2255 motion to have the 1951 conviction set aside on authority of Leary v. United States, 395 U.S. 6, 89 S.Ct. 1532, 23 L.Ed.2d 57 (1969), and to be resentenced as a first offender on his present conviction.

The Government answered the pro se petition and has briefed the pro se appeal in the case at bar as if petitioner’s 1951 conviction was under 21 U.S.C.A. § 176a. The District Court assumed as much and denied the petition on the ground that Leary is inapplicable to a conviction based on a plea of guilt to a § 176a offense. This ruling would be proper had the appellant pled guilty to a charge under § 176a. The record, however, clearly reflects that the 1951 conviction was based upon a violation of 26 U.S.C.A. § 4744(a)(1).

The application of Leary to a prior § 4744(a)(1) violation is entirely different from its effect on a § 176a conviction. In Leary two questions were before the court: (1) whether Leary’s conviction for failing to comply with the transfer tax provisions of the Marijuana Tax Act (26 U.S.C.A. § 4744) violated his Fifth Amendment privilege against self-incrimination; and (2) whether he was denied due process by allowing the jury to presume from his mere possession that he knew that the marijuana was illegally imported, in a prosecution for violation of 21 U.S.C.A. § 176a. The Court held that § 176a included an unconstitutional presumption that the possessor of marijuana knew it was illegally imported. The presumption becomes a factor only if the case is tried. A guilty plea eliminates the defect in 176a because the presumption is not used by a trier of fact. Mejia v. United States, 430 F.2d 1273 (5th Cir. 1970).

Section 4744(a)(1), however, was found to violate an accused’s privilege against self-incrimination, because in order to comply with the Act, a person necessarily must incriminate himself. The failure to comply with the Tax Act, therefore, could be defended on the right not to incriminate oneself. This constitutional defense to charges under § 4744 is to be accorded retrospective application in both guilty plea and jury verdict convictions. Harrington v. United States, 444 F.2d 1190 (5th Cir. 1971). As this Court recently held in Grier v. United States, 472 F.2d 1157 (5th Cir. 1973), an accused who enters a voluntary plea of guilty cannot be presumed to have waived a defense that later became available through judicial decision.

Thus, unless it can be determined that petitioner knowingly and understandingly waived his Fifth Amendment defense to the tax violation by his guilty plea to the 1951 charge, his prior conviction must be vacated and the District Court must resentence him as a first offender, without consideration of the prior invalid conviction. United States v. Tucker, 404 U.S. 443, 92 S.Ct. 589, 30 L.Ed.2d 592 (1972). See Franchi v. United States, 464 F.2d 1035 (5th Cir. 1972).

Accordingly, we vacate the judgment appealed from, and remand the cause for further proceedings in accordance with the procedures set down in Lipscomb v. Clark, 468 F.2d 1321 (5th Cir. 1972).

Vacated and remanded.

      . The penalty provision under 21 U.S.C.A. § 174 provides that a first offender shall be imprisoned not less than 5 or more than 20 years. For a second or subsequent offense, the offender shall be imprisoned not less than 10 or more than 40 years.

      . As the District Court held, and the Government argues, this Court held in Mejia v. United States, 430 F.2d 1273, 1275 (5th Cir. 1970), that Leary did not hold § 176a unconstitutional but only that the application of § 176a which allows a trier of fact to “infer” certain knowledge from the facts of possession violated due process. Leary is patently inapplicable to a plea of guilt which eliminates the necessity for a trial.

      . Petitioner pled guilty to an indictment charging that he “unlawfully and knowingly acquir[ed] and obtain [ed] marijuana without paying the special tax upon the transfer thereof as is required and provided for in Marijuana Tax Act of 1937.” This was a violation of 26 U.S.C. § 2593(a) (ch. 23A, 53 Stat. 281), superseded by § 4744(a)(1) in 1954. In 1970, § 4744(a)(1) (ch. 736, 68A Stat. 562) was repealed. 21 U.S.C.A. § 176a (ch. 629, title I, § 106, 70 Stat. 570) was added in 1956. There appears to be no good explanation as to why the Government asserted to the District Court and this Court that the 1951 indictment charged a § 176a violation. The information filed with the 1970 sentencing court correctly set forth that petitioner was convicted in 1951 for a violation of § 2593(a).