text:
    HOME INSURANCE COMPANY, a New York corporation, Plaintiff-Appellant, v. Gene B. BURNS, dba Mr. Geno, etc., et al., Defendants-Appellees, Tom Barrett, Party-Defendant Appellee.
    Nos. 71-1109, 71-1253.
    United States Court of Appeals, Ninth Circuit.
    Feb. 6, 1973.
    Lee E. Esch, of Jennings, Strouss & Salmon, Phoenix, Ariz., for appellant.
    Thomas W. Murphy, of Murphy, Pos-ner & Franks, Phoenix, Ariz., Wilson, McConnell & Moroney, Phoenix, Ariz., Filler, Paytas, Shannon, Fleming & Ste-phensen, Phoenix, Ariz., for appellee.
    Before BROWNING and GOODWIN, Circuit Judges, and JAMESON, District Judge.

       Honorable William J. Jameson, Senior United States District Judge, District of Montana, sitting by designation.

   PER CURIAM:

On August 14, 1970, Home Insurance Company, plaintiff-appellant, filed an in-terpleader action against Gene B. Burns, dba Mr. Geno, and creditors of Burns who claimed proceeds of an insurance policy issued by plaintiff to Burns, and deposited $26,061.84 with the registry of the court. On October 5, 1970 the court entered an order requiring in-terpleader, enjoining defendants from instituting actions with respect to moneys due Burns from plaintiff, discharging plaintiff from further liability and setting October 26, 1970 for hearing plaintiff’s application for attorney fees.

On or about September 23, 1970 Burns was adjudicated a bankrupt. On October 26, 1970 an order was entered allowing defendant-appellee, Tom Barrett, Trustee in Bankruptcy, to intervene.

On November 25, 1970, pursuant to a motion filed by the Trustee on November 5, 1970, an order was entered setting aside the October 5, 1970 order; referring the case to the Referee in Bankruptcy for determination of “the rights and priorities of the parties”; directing payment to the Referee of the funds deposited with the clerk; and granting “summary judgment for the defendant” trustee. There was no reference in this order to plaintiff’s claim for attorney fees or anything in the record to indicate that the court ever ruled upon this claim.

On December 10, 1970 plaintiff filed a notice of appeal from the November 25, 1970 order.

On December 30, 1970 the Trustee filed a “reply”, stating that he had “no objection that the court restore the injunction provisions contained in the order of October 5, 1970, and incorporates same in a formal written judgment.” A proposed judgment was submitted by the Trustee, which was entered by the court on January 18, 1971. This judgment granted the Trustee’s motion for summary judgment, directed the registry of the court to pay the $26,061.84 to the appropriate officer in bankruptcy, and enjoined the “interpleaded claimants” 'from instituting any suit pertaining to this sum, “without prejudice to the rights of the claimants to determine the amount and priority of their claims in the bankruptcy proceedings.” On January 21, 1971 plaintiff appealed from this judgment.

Appellant contends that the order of November 25, 1970 should be reversed, “with instructions that this case be reinstated as a federal interpleader suit wherein plaintiff may obtain the relief usually granted plaintiffs in similar actions”, including the recovery of reasonable attorney fees. Appellee trustee argues that the judgment of January 18, 1971 gave appellant “the relief it was seeking, that is, a permanent injunction.”

We agree with appellant that the issue of the allowance of attorney fees should have been determined by the district court in the interpleader action and that the case must be remanded for that determination. After that issue is determined, the district court may, in its discretion, enter an appropriate order discharging appellant from further liability, award reasonable attorney fees, if found proper, and then transfer the ease and balance of the fund, less any attorney fees and costs which may be allowed, to the Bankruptcy Court, where the rights and priorities among the inter-pleaded claimants may properly be determined.

Reversed and remanded for further proceedings consistent with this order and opinion.

      . Tbe complaint alleged that Burns had filed a proof of loss alleging a loss under the policy “in an amount exceeding $26,061.84”, which had been compromised for $26,061.84.

      . In a memorandum filed November 24, 1970 the Trustee stated that Burns had made a claim against appellant for $37,-478.05 and argued that he had been given no opportunity to determine the fairness of the compromise settlement of the claim.

      . Memoranda were filed on October 26, 1970 in support of plaintiff’s claim for attorney fees and in opposition to their allowance. The record does not disclose any hearing on this claim pursuant to the October 5, 1970 order.

      . It is questionable whether the district court had authority to enter the judgment of January 18, 1971 by reason of plaintiff’s prior appeal from the November 25, 1970 order. See Taylor v. Wood, 458 F.2d 15, 16 (9 Cir. 1972). In view of our disposition of the case, it is unnecessary to consider further the various procedural irregularities discussed in appellant’s brief.

      . It is apparent from the brief of appellee trustee that he now concedes that inter-pleader was proper and that a permanent injunction and order discharging appellant from further liability may properly be entered. In other words, the sole remaining issue between appellant and the trustee is the allowance of attorney fees.

      . Since the district court has made no finding or order with respect to attorney fees, we express no opinion on the propriety of allowing fees in this case, but call attention to the general i-ule in this circuit as set forth in Schirmer Stevedoring Co. Ltd. v. Seaboard Stevedoring Corp., 306 F.2d 188, 194-195 (9 Cir. 1962). See also 3A Moore’s Federal Practice paras. 22.16(2), 3143-62.


source: Caselaw Access Project

author: PER CURIAM.

license: Public Domain

text:
    UNITED STATES of America, Appellee, v. Ronald JOURNEY, Appellant.
    No. 72-1703.
    United States Court of Appeals, Eighth Circuit.
    Submitted Feb. 16, 1973.
    Decided March 1, 1973.
    No brief was filed by appellant.
    Daniel Bartlett, U. S. Atty., and Wesley D. Wedemeyer, Asst. U. S. Atty., St. Louis, Mo., on brief for appellee.
    Before LAY and BRIGHT, Circuit Judges, and NICHOL, District Judge.

       Sitting by designation.

   PER CURIAM.

This is an appeal from the denial of post-conviction relief sought by a federal prisoner under 28 U.S.C. § 2255. The petitioner asserts that his plea of guilty was not voluntary on the grounds that there were extraneous coercive circumstances which motivated his plea. The district court denied petitioner a hearing because his petition was too vague and was stated in conclusory terms. We affirm. In addition to the conclusory nature of the petition, other reasons appear on appeal which justify denial of relief. The circumstances stated in petitioner’s brief on appeal allege different facts and conclusions than stated in his petition; additionally, petitioner has failed to allege facts which, if true, would entitle him to relief. Procunier v. Atchley, 400 U.S. 446, 91 S.Ct. 485, 27 L.Ed.2d 524 (1971). Many extrinsic circumstances may serve as motivation for a defendant to enter a plea of guilty and forego a jury trial. However, where the record demonstrates that a factual basis exists for the plea, that at the time of the guilty plea the defendant admitted that it was voluntarily and freely given without promises, and that Federal Rule of Criminal Procedure 11 was given full compliance, the petitioner then faces an uphill climb to overcome the consequences of the plea. As we observed in Langdeau v. South Dakota, 446 F.2d 507, 509 (8 Cir. 1971):

“Petitioner’s deliberate choice to waive trial cannot be easily eradicated years after the event. Many considerations may influence a defendant to plead guilty. However, these influences cannot serve to set aside a guilty plea made where counsel is present and the defendant is shown to be capable of making a deliberate and knowing decision.”

Judgment affirmed.

      . In the present case, petitioner was represented by counsel at the time his guilty plea was made.


author: CHAMBERS, Circuit Judge:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. William Edward COULTER, Defendant-Appellant.
    No. 72-2897.
    United States Court of Appeals, Ninth Circuit.
    Feb. 5, 1973.
    Rehearing Denied March 15,1973.

      John J. Cleary (argued), of Federal Defenders, Inc., San Diego, Cal., for defendant-appellant.
    Thomas M. Coffin, Asst. U. S. Atty. (argued), Catherine Chandler, Stephen G. Nelson, Asst. U. S. Attys., Harry D. Steward, U. S. Atty., San Diego, Cal., for plaintiff-appellee.
    Before CHAMBERS and TRASK, Circuit Judges, and BYRNE, District Judge.

       The Honorable William M. Byrne, Senior United States District Judge for the Central District of California, sitting by designation.

   CHAMBERS, Circuit Judge:

Coulter was charged with and convicted of the robbery of a savings and loan association, during which a person’s life “was put in jeopardy.” We affirm.

The “stickup” was done by a confederate, Murtagh, in the presence of Coulter. A shoe salesman next to the savings and loan building spotted the getaway car and took its license number, which led to Coulter’s apprehension. Prior to the trial, Verdugo, the salesman, received from the savings and loan company a $700.00 reward. Upon arrest, Coulter, after being adequately advised of his rights, made an oral statement, but refused to sign a written waiver.

The indictment in this case charged that Coulter and Murtagh violated 18 U.S.C. § 2113(a) and (d) by holding up a federally insured savings and loan association and, in the course of that holdup, putting in jeopardy the life of the teller they robbed. Section 2113(d) would permit the charging of assault as well as putting life in jeopardy; however, the indictment here did not charge assault. Nevertheless, the trial judge instructed the jury on assault. Coulter’s counsel did not object to the instruction, and in fact agreed to giving it. Coulter suggests that such an instruction is erroneous since it has the effect of broadening the indictment returned by the grand jury.

Coulter invites us to follow the lead of the third circuit and find that such error is reversible as “plain error” where no objection is raised at trial. United States v. Roach, 321 F.2d 1 (3d Cir. 1963). We decline the invitation. First, since this error was one of several that the court in Roach found to be reversible, we are not positive that the ease would have been reversed on that point alone. More fundamentally, however, we do not agree with the reasoning of that case. The third circuit relied on Stirone v. United States, 361 U.S. 212, 80 S.Ct. 270, 4 L.Ed.2d 252 (1961). In Stirone an objection was made at trial. Further, the distinction between “putting a life in jeopardy” and “assault” is not a difference of great magnitude. Assault as used in § 2113(d) requires “an intent to, and in fact generating a reasonable apprehension in a victim .” plus “a threat or attempt to inflict bodily harm coupled with the present ability to commit violent injury upon the person of another.” Bradley v. United States, 447 F.2d 264, 273 (8th Cir. 1971).

Putting life in jeopardy, on the other hand, requires “a holdup involving the use of a dangerous weapon actually so used during the robbery that the life of the person being robbed is placed in an objective state of danger.” Wagner v. United States, 264 F.2d 524 (9th Cir. 1959).

The distinction between “assault” and “put life in jeopardy” as used in § 2113(d) is elusive and overlapping. In fact, the latter may well include the former, a question we do not decide. What we do decide is that the inclusion of an assault instruction where only putting life in jeopardy is charged in the indictment was not plain error on the facts of this case.

There was sufficient evidence that Coulter’s partner used a gun to get the money. The teller’s testimony, together with Coulter’s statement to the FBI that Murtagh used a gun, are sufficient to support the verdict.

The finding that Coulter’s statement was given voluntarily was correct beyond a reasonable doubt. See United States v. Glasgow, 451 F.2d 557 (9th Cir. 1971).

Since Verdugo had already received his reward before trial and it was not contingent on conviction, there was no abuse of discretion in limiting cross-examination.


author: PER CURIAM:

text:
    Charles Thomas BUCHANNON, Petitioner-Appellant, v. Louie L. WAINWRIGHT, Director, Florida Division of Corrections, Respondent-Appellee.
    No. 72-3590
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    March 9, 1973.

      Charles Buehannon, pro se.
    Robert L. Shevin, Atty. Gen., Nelson Bailey, Asst. Atty. Gen., Tallahassee, Fla., Fredrie J. Scott, Asst. Atty. Gen., W. Palm Beach, Fla., for respondent-ap-pellee.
    Before BELL, GODBOLD and IN-GRAHAM, Circuit Judges.

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

   PER CURIAM:

The district court denied the petition of Buehannon, a Florida state prisoner, for a writ of habeas corpus. We affirm.

The appellant was convicted upon trial by jury of robbery and assault with intent to commit first degree murder and was sentenced to concurrent terms of 35 and 20 years, respectively. The conviction was affirmed on direct appeal. Buchannon v. Wainwright, Fla.App. 1970, 239 So.2d 608.

In his habeas petition filed below, appellant alleged several grounds for relief. First he alleged that he was initially arrested pursuant to a justice of the peace warrant, but after a preliminary hearing it was found there was no probable cause for the arrest and he was released. Subsequently the state attorney filed an information against appellant, he was again arrested, and proceeded to trial without a preliminary hearing. Appellant contends he was illegally rearrested and was illegally denied a second preliminary hearing. The contentions are without merit. The state was obviously within its rights to file an information after appellant was initially released. There is nothing in the state law which requires a preliminary hearing after an information has been filed. Also, appellant has no constitutional right to a preliminary hearing. Jackson v. Smith, 5th Cir. 1970, 435 F.2d 1284; Scarbrough v. Dutton, 5th Cir. 1968, 393 F.2d 6.

Appellant contended that his convictions are invalid because he was prosecuted on a bill of information and not on an indictment. The states are free to proceed on an information since the indictment clause of the constitution is not applicable to the states. Gaines v. Washington, 1928, 277 U.S. 81, 48 S.Ct. 468, 72 L.Ed. 793; Hurtado v. California, 1884, 110 U.S. 516, 4 S.Ct. 111, 292, 28 L.Ed. 232; Henderson v. Cronvich, 5th Cir. 1968, 402 F.2d 763. He also contended that the trial court erred in admitting conflicting testimony and admitting evidence regarding a pistol owned by appellant. A state court’s rulings on admissibility of evidence do not present grounds for federal review. Lisenba v. California, 1941, 314 U.S. 219, 62 S.Ct. 280, 86 L.Ed. 166; Pleas v. Wainwright, 5th Cir. 1971, 441 F.2d 56; Williams v. Wainwright, 5th Cir. 1970, 427 F.2d 921.

Appellant contended that his sentence is excessive because his co-defendants received lower sentences. This likewise presents no grounds for federal habeas corpus relief. United States v. Harbolt, 5th Cir. 1972, 455 F.2d 970; Rodriquez v. United States, 5th Cir. 1968, 394 F.2d 825. He also alleged that a determination of the voluntariness of his confession was not made by the trial court. The district court found that no confession or statement was introduced as evidence against him. A review of the trial transcript reveals no clear error in that finding. Finally, appellant contended that housewives and 18-20 year olds were excluded from his jury. Appellant stated only a conclusion, offering no factual allegations to support that conclusion.

There being no merit to appellant’s contentions, the judgment below is affirmed.

Affirmed.


text:
    ESTATE of Mae ELLIOTT, Mrs. J. E. Crabtree, a/k/a Mary Kathryn Crabtree, Executrix, et al., Petitioners-Appellants, v. COMMISSIONER OF INTERNAL REVENUE, Respondent-Appellee.
    No. 72-1999.
    United States Court of Appeals, Fifth Circuit.
    March 21, 1973.
    Joseph H. Staley, Jr., Peter A. Franklin, III, Dallas, Tex., for petitioners-appellants.
    Scott P. Crampton, Asst. Atty. Gen., Meyer Rothwacks, Gilbert E. Andrews, Attys., Tax Div., Dept, of Justice, Lee H. Henkel, Jr., Acting Chief Counsel, William D. Brackett, Daniel B. Rosenbaum, Attys., I. R. S., Washington, D. C., for respondent-appellee.
    Before WISDOM, BELL and COLEMAN, Circuit Judges.
   PER CURIAM:

This is an appeal by the taxpayer from a decision of the Tax Court. Estate of Mae Elliott, et al. v. Commissioner of Internal Revenue, 1971, 57 T.C. 152. Any doubt concerning the question presented was resolved adversely to appellants by the supervening Supreme Court decision in United States v. Chandler, 410 U.S. 257, 93 S.Ct. 880, 35 L.Ed.2d 247.

Affirmed.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. Marion H. MacKENZIE et al., Defendants-Appellants.
    No. 71-1925.
    United States Court of Appeals, Ninth Circuit.
    March 28, 1973.
    Michael K. Halley (argued), Halley & Halley, Reno, Nev., John W. Diehl, Diehl & Recanzone, Fallon, Nev., for defendants-appellants.
    David V. Seaman, Atty. (argued), Dept, of Justice, Washington, Patrick L. Gray III, Asst. Atty. Gen., Civil Div., Russell Chapin, Chief Gen., Claims Div., Bart M. Schouweiler, U. S. Atty., Reno, Nev., Walter H. Fleischer, Dept, of Justice, Washington, D. C., for plaintiff-appellee.
    Before KOELSCH and CARTER, Circuit Judges, and HARRIS, District Judge.

       Honorable George B. Harris, Senior Judge, United States District Court, San Francisco, California, sitting by designation.

   PER CURIAM:

We adopt the opinion of the district court, reported in 322 F.Supp. 1058 (D.C. D.Nev.1971) as the opinion of this court, and affirm the judgment.

In our view, the only real issue on appeal consisted of the trial judge’s determination that the disparity between the fair market value of the real property and the sale price, reflected in the government’s successful bid, was not so great as to shock the conscience and require denial of confirmation of the foreclosure sale. Thus, the sole question was, did that determination constitute an abuse of discretion? As indicated by oup decision affirming the judgment, we cannot say that the answer is “yes.”


author: CLARK, Justice

text:
    60 CCPA
    The UNITED STATES, Appellant, v. ACEC ELECTRIC CORPORATION, Appellee.
    No. 5475, C.A.D. 1091.
    United States Court of Customs and Patent Appeals.
    March 8, 1973.
    Harlington Wood, Jr., Asst. Atty. Gen., Andrew P. Vance, Chief, Customs Section, Patrick D. Gill, New York City, for the United States.
    Siegel, Mandell & Davidson, New York City, attorneys of record, for appellee; Allan H. Kamnitz, Brian S. Goldstein, New York City, of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and CLARK, Justice, (Ret.), sitting by designation.
   CLARK, Justice

This is an appeal from the decision and judgment of the United States Customs Court, Second Division, sustaining appellee’s protest against the assessment of duty at 10 percent ad valorem on merchandise described as a clutch motor used on industrial sewing machines and classified under item 672.25 of the Tariff Schedules of the United States (TSUS) as “Other” parts of sewing machines. Appellee successfully claimed that the merchandise is classifiable under item 682.40, TSUS, as motors of over Vio but under 200 horsepower and dutiable at 8.5 percent ad valorem. We reverse.

The pertinent portions of the statutes involved are:

Tariff Schedules of the United States:

General Headnotes and Rules of Interpretation :
* X X X X X-
10. General Interpretative Rules. For the purposes of these schedules—
X X X X X X
(ij) a provision for “parts” of an article covers a product solely or chiefly used as a part of such article, but does not prevail over a specific provision for such part. Schedule 6, Part 4:
Part 4 headnotes:
1. This part does not cover—
* * * * * -X-
(vi) articles and parts of articles specifically provided for elsewhere in the schedules.
Classified under:
Schedule 6, Part 4, Subpart E: Sewing machines and parts thereof, . . .:
X -X X- X- X X-
Parts:
x x x- x- x-
Item 672.25 Other ... 10% ad val. Claimed under:
Schedule 6, Part 5:
Generators, motors, motor-generators, . . . :
* X- X X X- X
Motors:
X X X X- X X
Item 682.40 Of over Vm but under 200 horsepower..........8.5% ad val.

The imported item is an electric motor with flywheel to which is securely affixed a clutch mechanism. Together the elements form a single operating unit. In operation the motor runs continuously while the clutch mechanism allows a drive pulley to be engaged and disengaged. The parties do not dispute that the sole use to which the assemblage is put is as the power source for industrial sewing machines. However, appellee contends that the unit is merely a special purpose motor and that General Interpretative Rule 10(ij) dictates that the motor be classified under item 682.40, supra, notwithstanding the fact that it can properly be considered to be a part of a sewing machine. Appellant, on the other hand, insists that the addition of the clutch mechanism to the electric motor makes it more than a motor and that classification under item 672.25, supra, as part of a sewing machine would be proper.

We believe that the merchandise is more than a motor and should be classified under item 672.25. We believe United States v. A. W. Fenton Co., 49 C.C.P.A. 45, C.A.D. 794 (1962) and ServoTek Products Co. v. United States, 416 F.2d 1398, 57 C.C.P.A. 13, C.A.D. 969 (1969) are controlling here.

In Fenton the imported article, which was the principal part of an electric floor polisher, was an electric motor with two drive shafts that propel the brushes of the polisher. The frame of the polisher maintains the essential parts of the motor in assembled relationship and supports the gearing assemblies. It also provides a skirt that surrounds the brushes in the assembled machine. The handle of the polisher is attachable and held to the frame by a pair of built-in lugs. This court found:

The article does include a motor. It also includes gears and it clearly is designed for a special purpose. But the additional features it includes do more than make it a special type of motor. They dedicate it to one particular use as a part of a floor polisher. Since it is more than a motor, it is not properly classifiable as a motor for tariff purposes.

In Servo-Tek the imported article consisted solely of an electric motor with an attached gear train which converted the high armature speed (3600 rpm) to a usable speed at the output shaft (18, 40 or 90 rpm) and increased the torque. It had no elements unrelated to the function of the motor which was to provide power. In this respect, the importation differed from that in Fenton which included the specially designed frame, an element unrelated to the transmission of mechanical energy. Nevertheless, it was concluded that the Servo-Tek motor and gear train were more than a motor as they made up “a unitary piece of composite machinery which contains a motor as an element and a gear train speed-reduced as another element.”

The Customs Court distinguished these two cases on the basis that:

* * * in the sewing machine trade which services industrial type sewing machines, a motor is considered to be one of the type involved herein. While there is also a continuous running motor which is used with machines having a built-in clutch, the purchaser would have to specify his need for a continuous running motor. Therefore, in the commerce and industry involved herein, the imported clutch motor is considered a motor. In addition the clutch does not affect the speed or torque of the mechnical output. There are no features, which are nonmechanical, which form part of the article to which it is to supply power. The design of the case of the motor is such as to house the clutch which is fully integrated with the motor. The removal of the dutch portion, by virtue of the design, would leave the motor useless. It is in effect a special purpose motor but nonetheless a motor.

It is true that Fenton does suggest that a “special type” motor might still be classified as a motor. However, here the article imported has two elements forming a unitary piece of composite machinery, i. e., a motor and a clutch. If the article in Fenton was more than a motor, we believe the one here would also be. Furthermore, this ease is on all fours with Servo-Tek where the motor and the gear train were a unitary piece of machinery.

Although appellee’s own witness described the imported article as an electric motor to which is coupled a clutch brake mechanism, it makes much of the fact that, unlike the gear train speed-reducer of Servo-Tek, the clutch mechanism here does not affect the speed or torque of the motor. This is a distinction without a difference. In fact, the similarities between the situation here and that of Servo-Tek loom larger than the distinctions. In each case the imported article comprises what is conced-edly an electric motor with means which allow its output to be more efficiently harnessed. In each case the motor and attachment form a composite unit.

Nor do we think that the Customs Court’s heavy reliance on the testimony that the article here was regarded as “a sewing machine motor” in that trade is of any relevance. In our view, this tag is too parochial. To carry any weight with us, it would have to be shown that commercial circles in general so regarded clutch motors and, in effect, that Congress adopted this view when it enacted the TSUS. To view it otherwise would invite classification on an industry-by-industry basis which would lead to much confusion.

In this case we are convinced that the record does not offer evidence of sufficient probative value to support the lower court’s decision in view of our previous holdings. In reaching this decision, we have considered appellee’s argument and the Customs Court’s opinion insofar as both rely upon the Explanatory Notes to the Brussels Nomenclature, Section XVI, heading 85.01, to support their conclusion that the tei'm “motors” would include a clutch motor. However, those notes do not dictate a different result since we believe that item 682.40 was intended to encompass that which was regarded as a motor under the Tariff Act of 1930. Under the Act, that which might be regarded as a motor (under paragraph 353) could still be classified elsewhere as a part of some other machine. It was the intent of the TSUS to change this situation and allow classification under an eo nomine provision even though there exists a competing parts provision. We do not see that a broader definition of “motor” was indicated than that applied in the Fenton and Servo-Tek cases decided under the 1930 Act. Here we have concluded that classification was not proper under item 682.40 because a clutch motor is more than a motor and hence not a motor for tariff purposes.

We therefore conclude that the instant article is properly classifiable under item 672.25. Accordingly, the judgment is reversed.

Reversed.

       Tom C. Clark, Associate Justice of the United States Supreme Court (Ret.), sitting by special designation.

      . 66 Cust.Ct. 390, C.D. 4220 (1971), reh. den. July 13, 1971.

      . See Tariff Commission, Tariff Classification Study, Explanatory Notes to Schedule 6, Part 5 at p. 303 (1960).


author: LANE, Judge.

text:
    Application of WORLD’S FINEST CHOCOLATE, INC.
    Patent Appeal No. 8846.
    United States Court of Customs and Patent Appeals.
    March 15, 1973.
    Charles A. Laff, Lynn R. Kipnis, Chicago, Ill. (Pendleton, Neuman, Williams & Anderson, Chicago, Ill.), attys. of record, for appellant.
    S. Wm. Cochran, Washington, D. C., for Commissioner of Patents. Fred W. Sherling, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Associate Judges, and WATSON, Judge, United States Customs Court, sitting by designation.
   LANE, Judge.

This appeal is from the decision of the Trademark Trial and Appeal Board sustaining the examiner’s refusal to register a design trademark for “candy.” The design depicts a wrapped bar of candy and is shown below:

For purposes of our opinion, we presume familiarity with the board’s opinion at 166 USPQ 63 (1970) and, therefore, the underlying facts here involved. We reverse.

The principal issue before us is whether or not the board was correct in concluding that the package design “cannot qualify as a mark entitled to registration” notwithstanding de facto distinctiveness.

■ As we see it, the primary position of the Patent Office in the present case is that there is a vital interest in preserving the public right to copy the package sought by World’s Finest to be registered; an interest which overrides the distinctiveness that package may have in fact acquired. The Patent Office feels that the right to package a candy bar in inner and outer wraps in the manner utilized by appellant is one which must not be foreclosed indefinitely by proprietary trademark rights.

In In re Deister Concentrator Co., 48 CCPA 952, 289 F.2d 496, (1961), this court held a design in the form of a substantially rhomboidal outline applied to “ore concentrating and coal cleaning tables” not to be a recognizable trademark. Finding that the outline, which was in the shape of the deck of the table, was in its essence dictated by utilitarian or engineering considerations, the court reasoned that “absent patent protection, the public has the right to copy the shape and enjoy its advantages.” 48 CCPA at 968, 289 F.2d at 505. The court refused to accord legal significance to the evidence of de facto distinctiveness or “secondary meaning,” explaining that the basis for such a refusal is not a conclusion that the alleged mark cannot or does not indicate source, but rather a recognition of a more compelling interest in preventing its monopolization — “of preserving the public right to copy.” 48 CCPA at 966, 289 F.2d at 504.

We do not agree that the package design here is so functionally oriented within the sense of In re Deister that, assuming de facto distinctiveness, a private right to use it exclusively should be denied in favor of a more pressing public interest in copying. We think competitors can readily meet the demand for packaged candy bars by use of other packaging styles, and we find no utilitarian advantages flowing from this package design as opposed to others as was found in the rhomboidally-shaped deck involved in Deister. See In re Mogen David Wine Corp., 51 CCPA 1260, 1269-1270, 328 F.2d 925, 932-933 (1964) (Rich, J. concurring). In other words, although the package design sought to be registered may have utilitarian function, we do not regard it as primarily functional. Cf. In re Shenango Ceramics, Inc., 53 CCPA 1268, 362 F.2d 287 (1966); Best Lock Corp. v. Schlage Lock Co., 56 CCPA 1472, 413 F.2d 1195 (1969). It therefore is a trademark capable of being registered.

We have thus far assumed that de facto distinctiveness has been proved. Appellant submitted evidence for that purpose, and neither the board nor solicitor appear to have contested the sufficiency of that evidence per se. However, the examiner attached to his Answer “two candy bars which * * * [in his] opinion * * * are indistinguishable” in shape from appellant’s packaged candy bars. The examiner felt that those bars demonstrate “that there is nothing distinctive in applicant’s packaging * *

Both the board and solicitor have relied to some extent upon the material added by the examiner. The board utilized the attachments to arrive at the conviction that other manufacturers were availing themselves of the right to make and package candy bars previously protected by a design patent owned by appellant. The solicitor adopts the examiner’s reasoning that the attachments prove lack of distinction and couples that viewpoint with the contention that “appellant does not deny that other manufacturers are producing chocolate bars shaped and packaged in a form indistinguishable from that of appellant’s candy.”

With respect to the candy bars made of record by the examiner in the form of photocopies, appellant argued the following in a reply brief to the board:

We are unable to determine the actual shape of the packages in question from the Xerox copies. Nor were we able to obtain duplicates of these chocolate bars on the open market in the available time. But the shape of these bars is irrelevant to the issues here, because no inference as to the common practices in the industry can be drawn from the mere existence of two wrappers of unknown origin and history.
There is no evidence as to the length of time or the extent of use of • these wrappers. For all this record shows, these products could have first come into existence within the last few months and may no longer be in use. These wrappers could have been copied from applicant’s package in an effort to capitalize on the good will which applicant’s mark has acquired over its many years of use. Imitation of applicant’s package lends weight to applicant’s position that its package is inherently distinctive or, at least, that it is recognized by the public as an indication of source.

The printed record before us includes the photocopies of the two candy bar packages, but we are in agreement with appellant that those copies neither make it clear that the candy bars are “indistinguishable” from appellant’s nor provide a firm basis for drawing any inference with respect to common packaging practices in the trade. We do not find them to be of probative value as to any issue involved herein.

The board’s reference to appellant’s now-expired design patent fails to lend support to a finding of either no distinctiveness in fact or nonregistrability even if de facto distinctiveness is present. The mere existence of design patent rights is independent of, and immaterial to, the ownership of trademark rights. In re Mogen David Wine Corp., 51 CCPA 1260, 328 F.2d 925 (1964); In re Mogen David Wine Corp., 54 CCPA 1086, 372 F.2d 539 (1967).

Finally, the solicitor’s contention that appellant does not deny that other manufacturers are producing candy bars' of shape and package design identical to appellant’s is not supported by any concession or suggestion of one on the part of appellant. The solicitor does make reference to a specific page in the appellant’s main brief, but we find nothing thereon which could reasonably support the solicitor on this point. We do not think appellant has to make such a denial under penalty of prejudice to its position. The proceedings before the Patent Office were based on appellant’s belief that the package design sought to be registered is distinctive of its goods. Evidence has been submitted in support of that belief. Appellant need not undertake the burden of ascertaining whether or not other manufacturers are producing “indistinguishable” packaged candy bars, at least in the absence of some probative evidence, to the effect that they are.

We find no challenge to the evidence offered by appellant for the purpose of proving de facto distinctiveness and no probative evidence or concession to the contrary. Accordingly, we hold that on the record before us the package design does in fact identify appellant’s goods and distinguish them from those of others.

During oral argument, the solicitor invited attention to our decision in In re General Tire & Rubber Co., 56 CCPA 867, 404 F.2d 1396 (1969). In that case, the design trademark consisted of three narrow white concentric rings on the dark sidewall surface of a tire. We concluded that through long familiarity with whitewalls as tire ornamentation, the public would consider a three-ring whitewall as just a refinement of a general ornamental concept rather than a trademark. No evidence of distinctiveness had been submitted. The General Tire case is inapposite here in view of our finding that appellant’s package design identifies and distinguishes the goods to which it is applied. See In re Data Packaging Corp., 59 CCPA 453 F.2d 1300 (1972).

For the reasons stated above, we conclude that appellant is here entitled to registration. The decision of the board is therefore reversed.

Reversed.

      . Trademark application Serial No. 256,703 filed October 19, 1966.


author: ALMOND, Judge.

text:
    Application of John P. GLASS.
    Patent Appeal No. 8787.
    United States Court of Customs and Patent Appeals.
    Feb. 22, 1973.

      John F. A. Earley, Philadelphia; Pa., James W. Dent, Washington, D. C., attorneys of record, for appellant.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Jere W. Sears, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.
   ALMOND, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals affirming the rejection of claims 30, 31, 34, 35, 39, 44, 45, 47-50 and 52-57 of appellant’s application entitled “Method and Apparatus for Making Fibers.” We affirm in part and reverse in part.

Appellant’s invention relates to an apparatus for making crystalline fibers from materials such as silica, aluminum oxide and carbon. Figure 1 of the application is reproduced below:

The apparatus of the drawing comprises a chamber 11 in which a, vapor of the fiber-forming material is generated and maintained. Because of the nature of the suitable materials, this requires high temperatures. In one embodiment, a vaporizer 33 is used to generate the vapor, and heating elements 15 within the chamber walls are used to obtain a temperature within the chamber sufficient to maintain the vapor state.

The fibers are formed by crystallization of the material employed directly from the vapor state. The crystallization takes place at the ends of fibers 23 as they are withdrawn from the chamber through orifice 21 by reel 26. In order for crystallization to occur, a cool zone 19 is established within the chamber. This is accomplished by directing a current of cool gas 18 by means of conduits 37 into the chamber through the orifice.

When the fibers are derived from carbon, vaporizer 33 need not be used. Instead, a hydrocarbon gas such as methane or acetylene can be admitted directly to the chamber, for example, through conduit 37. The high temperature within the chamber cracks the gas into hydrogen and carbon. The carbon becomes the source material for the fibers.

The fiber ends are fanned out by impressing an electrostatic charge upon them. This allows all the fiber ends to be individually exposed to the vapor of crystallizable material within the cool zone. Electrical circuit 24 is used to meásure the electrostatic capacitance of the fibers to ground and operate reel 26 to withdraw the fibers from the chamber at a controlled rate.

Claims 30, 34 and 35, reproduced below, are representative of those on appeal:

30. In apparatus for making fibers, a chamber, means for forming a plurality of elongated fibers by condensing fibrous crystals from a vapor stage of fiber-producing material in the chamber, and means for electro-statically charging the fibers to fan out the ends of the fibers so that the ends are separated and individually exposed to vapor.
34. In apparatus for making fibers, a chamber having growing fibers having ends in the chamber, means for applying sufficient electrostatic charge to the fibers to keep their ends separated, means for gathering the fibers together at a location spaced away from the fiber ends to form a strand, and means for withdrawing the strand from the chamber.
35. In apparatus for making fibers, apparatus for controlling the length of the fibers comprising means for applying an electrostatic charge to growing fibers in a growing zone, and means for withdrawing the fibers from the growing zone when the value of the electrostatic charge reaches a predetermined level.

All the claims stand rejected under 35 U.S.C. § 103 as being obvious in view of a single prior art reference, a patent to Childs. Childs discloses an apparatus for spinning a sliver of rayon. Figure 1 of that apparatus is shown below:

The apparatus provides a chamber 1 into which a heated solution of rayon in acetone is injected through spinneret 4. As the solution emerges from the spinneret, it enters an electrostatic field which serves to separate the rayon as fine filaments from the solution. The electrodes that create the field are the spinneret itself and electrode 17. Spinning solution is charged to the spinneret from supply tank 11 by means of conduit 12, control valve 13, gear pump 14 and filter 5. The filter is surrounded by a heating jacket to warm the spinning solution prior to its injection into the chamber.

Warm air enters the chamber at 2 and exits at 3, carrying with it the separated solvent. The fine filaments of rayon are attracted to the tail of the sliver S as it is withdrawn from the chamber over guide roll 19.

In sustaining the examiner, the board discussed claim 30 only. Although this rejection was nominally sustained under 35 U.S.C. § 103, we think it clear that the board regarded claim 30 as being fully met by Childs within the meaning of 35 U.S.C. § 102. The board summarized its position as follows:

We think the situation here is one in which the claims before us are only nominally in apparatus form equivalent to claiming any and all means for carrying out the portions of the process to which they allude, and thus are nothing more than a paraphrase of the method, similar to the situation presented in In re Taylor, * * * [52 App.D.C. 249, 285 F. 983 (D.C.Cir. 1923)]. Certainly they present no structural differences over the apparatus of Childs, [Emphasis added.]

The board equated the chamber, fiber-forming means, and electrostatic charging means of claim 30 with Childs’ chamber, spinneret and associated charging means, and electrodes, respectively.

We disagree with the board’s decision relative to claim 30 whether it be construed under § 102 or § 103. In particular, we cannot agree that the spinneret and associated charging means of Childs are the equivalent of the claimed element “ * * * means for forming a plurality of elongated fibers by condensing fibrous crystals from a vapor stage of fiber-producing material * * * »

The board rationalized its equation of Childs’ spinneret to the fiber-forming means of the claim in the following manner:

* * * the “means for forming a plurality of elongated fibers” is met by spinneret b of this patent operating in conjunction with its associated charging means. Patentee solidifies his material to fibers from a liquid phase and not “by condensing fibrous crystals from a vapor stage of fiber producing material,” but we have been given no reason why his fiber forming means cannot operate in this way, depending upon the proper selection of materials and process conditions. It appears, in fact, that the present dis-' closure provides the fiber-forming vapors by means of an only diagrammatically illustrated “vaporizer 33,” which apparently may be heated, or by a conduit 37 which projects hydrocarbons through the orifice 21 onto the chamber. In the former case, the nature of the vaporized material and of the “condensing” action are not disclosed; in the latter case, the hydrocarbon is decomposed to deposit carbon. It is apparent from this and the exemplary materials of page 9, lines 3-4, that the concept of fiber formation “by condensing fibrous crystals from a vapor stage of fiber-producing material” is an extremely extensive one and that any and all means for accomplishing it could hardly exclude the fiber-forming means in Childs.

We cannot agree with this interpretation of the claim language. The disclosure and the claim itself make it clear that the “condensing” action referred to by the board involves crystallization of the fiber from material in the vapor state. • The exemplary materials from which crystalline fibers can be made are silica, aluminum oxide and carbon. The features common to each of these are that they are high-melting inorganic solids. It is our view that the board engaged in unwarranted speculation when it concluded that Childs’ apparatus could form fibers in the manner claimed if a proper selection of material and process conditions was made.

At the very least, Childs would seem to have to describe elements which would be capable of converting a vapor of some material itself capable of forming a crystalline fiber into such a fiber even though those elements are disclosed as having other functions. From our analysis of Childs we think that the apparatus disclosed there is incapable of forming crystalline fibers by vapor condensation from inorganic materials such as silica, aluminum oxide or carbon. Furthermore, from the record before üs we can find no basis for the board’s conclusion that any material the Childs’ apparatus can handle is capable of forming a crystalline fiber. Certainly neither the board nor the solicitor has suggested the material or the conditions which would be employed in the Childs’ apparatus to make crystalline fibers. Unsupported speculation as to the qualities of that apparatus can form no basis for rejecting claim 30.

We have not been persuaded by our own analysis of the reference or the arguments made that the claimed combination is an obvious one. As indicated above, we do not think that the Childs’ apparatus can be used to make crystalline fibers from a vapor of fiber-forming material. Furthermore, it is our view that the use to which that apparatus is put and its apparent capabilities would not suggest to one of ordinary skill in the art obvious modifications of the apparatus which would allow it to be employed for making crystalline fibers. Such modifications as would be required are apparent only in retrospect having advantage of appellant’s own disclosure.

Having concluded that appellant’s claim 30 would not be obvious in view of Childs, we reverse the board’s decision as to that claim. This holding also dictates reversal of the decision as to claims 31, 44, 45, 47-50 and 52-57, all of which in one way or another claim means for making crystalline fibers.

Claims 34 and 35 stand on a different footing than claim 30. Neither was discussed by the board but, as the examiner pointed out in the Examiner’s Answer, they are not limited to an apparatus having means for forming crystalline fibers from a vapor state.

We affirm the board’s decision relative to claim 34. That claim, in effect, calls for a chamber, electrostatic charging means, means for gathering the fibers and means for withdrawing the strand from the chamber. We think equivalent elements are found in Childs. Appellant has not shown that the corresponding elements in Childs do not actually possess the same characteristics as his apparatus and since he has failed to do so, we are required to affirm the rejection. In re Ludtke, 441 F.2d 660, 58 CCPA 1159 (1971).

We reverse the board’s decision as to claim 35. An element in claim 35 is “means for withdrawing the fibers from the growing zone when the value of the electrostatic charge reaches a predetermined level.” The specification makes it clear that this is done so as to synchronize the rate of fiber withdrawal with that of fiber formation. Childs possesses no similar element nor is there any basis to conclude that the electrostatic charge used should be related to the rate of withdrawal of the sliver. We find, therefore, no basis for the rejection under 35 U.S.C. § 103. This holding relative to claim 35 dictates reversal of the decision sustaining the rejection of claim 39 as well.

For the foregoing reason, we affirm the board’s decision sustaining the rejection of claim 34 and reverse that decision as to claims 30, 31, 35, 39, 44, 45, 47-50, and 52-57.

Modified.

      . Serial No. 480,018 filed August 19, 1965.

      . U. S. No. 3,338,570, issued January 4,1944.


author: RICH, Judge.

text:
    Application of Laurent SEIGNEURIN.
    Patent Appeal No. 8832.
    United States Court of Customs and Patent Appeals.
    March 22, 1973.
    James H. Littlepage, Washington, D. C., attorney of record, for appellant. Keith V. Rockey, Chicago, Ill., (McDougall, Hersh, Scott & Ladd, Chicago, Ill.), of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Fred E. McKelvey, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.
   RICH, Judge.

This appeal is from the decision of the Patent Office Board of Appeals affirming the examiner’s rejection of claims 1-5, all of the claims of appellant’s application serial No. 721,600, filed April 16, 1968, for a patent on a “Process for Preparing Fluoro-Halogen-ated Propane Derivatives and Use Thereof.” All appealed claims are directed to the process for preparing. We reverse.

The Invention

The invention is a process of preparing fluoroehloropropane by reacting fluoro or fluoro-chloro ethylene with chlorinated methane in the presence of a catalyst consisting of gallium chloride, gallium bromide, or mixtures thereof. Claim 1 is representative, all other claims being dependent thereon and adding limitations thereto so that claim 1 is the broadest claim:

1. In the process of preparing fluoro-chlorinated propane compounds by the reaction of a compound selected from the group consisting of fluori-nated and fluoro-chlorinated ethylene compounds with chlorinated methane compounds, the improvement which comprises catalyzing the reaction with a catalytic compound selected from the group consisting of gallium chloride, gallium bromide and mixtures thereof.

Admittedly known in the prior art is the process as above described except that the catalyst is preferably aluminum chloride (Aids), a Friedel-Crafts catalyst, or some other catalyst in that category such as boron trifluoride, zinc chloride, or ferric chloride. Appellant’s specification says,

It is well known to obtain halogenated propane derivatives by condensation of halogenated methane derivatives with ethylene derivatives in the presence of such catalysts as BF3, ZnCl2, FeCl3, and preferably A1C13.

Drawbacks of the prior art process using the preferred A1C1S are described in the specification as follows (our emphasis)':

However, the use of aluminum chloride catalyst leads to the formation of the desired fluoro halogenated propane derivative in admixture with other reaction products from which it is difficult and expensive to separate and in which the desired end product is secured in low yields. * * * Another drawback resulting from the use of aluminum chloride stems from the ready exchange of halogens during the catalytic reaction between the chlorine atoms of the aluminum chloride and fluorine atoms of the initial fluorinated compound or the fluorinat-ed reaction product * *

Explaining the last-mentioned drawback, appellant’s brief states that “the A1C13 catalyst is converted to a mixed halide, frequently A1C12F, and, consequently, is difficult to regenerate to restore the catalyst back to the form of A1C13.”

Appellant alleges that by using gallium chloride or gallium bromide as catalyst instead of aluminum chloride the drawbacks are overcome in that the desired product is obtained in greater yield, higher purity, and in a state from which the desired product can be easily separated and the gallium catalyst can be recovered more readily.

The Rejection
The references relied on are:
British Patent 581,254 Oct. 7, 1946
Ulich et al., Z. Elektrochemie, 41, 7b, 1935, article entitled in translation "Reaction-Kinetic Tests in Friedel-Crafts Ketone and Hydrocarbon Synthesis," pages 509-514.

The rejection, which is fully stated only in the examiner’s final rejection, appears in essence in the following extracts therefrom:

Claims 1-5 are rejected as unpat-entable [under] 35 U.S.C. 103 over the British patent in view of Ulich et al. The former discloses a reaction which differs from that instantly claimed only in the Friedel-Crafts (F-C) catalysts employed and the latter discloses gallium chloride to be a better F-C catalyst than A1C13 in a particular F-C reaction, thus teaching that gallium chloride is not only a FC catalyst, but possibly superior to A1C13 in [a] reaction employing F-C catalysts. * * * Applicant has merely followed the teaching in the British patent of the use of “any other Friedel-Crafts catalyst” by employing yet another F-C catalyst shown to be better than A1C13 in the art. Unlike other variables found in chemical reactions, the number of F-C catalysts is quite small so that no patenta-bility or unobviousness is involved in finding that gallium chloride gives superior results.

In affirming, the board, in a brief opinion, expressed full agreement with the examiner’s reasoning, finding that the advantages and improvements emphasized by appellant would be “expected.”

OPINION

Appellant’s brief reduces the issue we must decide to a simple single proposition: “whether or not it would be obvious in view of the teachings of the Ul-ich publication to employ gallium chloride as a catalyst in the process disclosed by the British patent.” It seems to be assumed that if the use of gallium chlo-ide is obvious the use of gallium brom-mide is likewise and eontrarywise if one is unobvious so is the other. The same assumption applies to mixtures of the two.

There is no doubt that the process of the appealed claims is a Friedel-Crafts type of reaction and that gallium chloride is a recognized Friedel-Crafts catalyst, having been disclosed as such by Ulich in 1935. There also can be no doubt that appellant has taught the art certain advantages of using gallium chloride as the catalyst in his particular reaction, which advantages are neither disclosed in or suggested by the references. The Patent Office Solicitor’s brief contains the following admission (references to record omitted):

The objective evidence shows that when carbon tetrachloride (CC14) is reacted with l,2-difluoro-l,2-dichloro-ethylene (CFC1 = CFC1) in the presence of an aluminum chloride or gallium chloride catalyst, under optimum conditions, and the desired product (C3F2CI6) is recovered, that the yield of desired product is higher in the case where gallium chloride is used as the catalyst.

What appellant’s “objective evidence” shows is that under the described conditions yield of C3F2CI6 using the gallium chloride is 6.5 times the yield using the hitherto preferred aluminum chloride catalyst. There is nothing in either reference to suggest such an advantage. The British reference expressly states that the “preferred catalyst is aluminum chloride.” Although Ulich disclosed gallium chloride to be a Friedel-Crafts catalyst in 1935 and, according to the examiner, showed it “to be better than AICI3 in the art,” what the British patent says about other F-C catalysts some 8 years later is that “any other Friedel-Crafts catalyst, such as boron trifluoride, zinc chloride or ferric chloride, may also be used.” Nevertheless, in spite of this knowledge of other F-C catalysts, aluminum chloride is preferred. Gallium chloride is not mentioned. That was still the preference of the art for appellant’s type of reaction when he filed his application 20 years after the convention filing date of the British patent, which belongs to Imperical Chemical Industries, Ltd.

Ulich was not concerned with appellant’s type of reaction or the production of any compound containing fluorine. The Patent Office brief does not accurately characterize the Ulich article in saying it is “a report on comparisons between the use of aluminum chloride and gallium chloride in two Friedel-Crafts reactions.” The comparison between those two catalysts was merely incidental to the main purpose of the investigations reported which, in the authors’ own words, was this (translation from the German):

Reaction-kinetic test methods have as yet hardly been applied to the large and important group of organic catalytic reactions named after Friedel and Crafts. In the hope of contributing to the clarification of the mysteries which still cloak these reactions, we have conducted a few measurements of this type which constitute only a first step into this extensive field but have already produced a few results worth reporting.

We limited ourselves to the reactions between:

I. benzoyl chloride and benzene, and
II. n-propyl chloride and benzene and investigated both, using A1C13 and GaCL as catalysts.
We examined the chronological progress of the reactions by measuring at constant pressure the volume increase which accompanied the HC1 development.

In contrast to the characteristic hydrogen chloride (HC1) development of the Ulich research, it is noted at this point that appellant’s reactions liberate no HC1. It is also noted that both reaction I and reaction II involve the addition of an organic group to an aromatic nucleus, benzene, whereas no aromatic nucleus is involved in appellant’s reactions. For these and other reasons it appears to us that the work Ulich was doing was not such as would produce any information relevant to the elimination of the drawbacks found in the preparation of fluoro halogenated propane derivatives using aluminum chloride catalyst with which appellant was concerned.

Ulich’s reaction I is described in detail under the heading “The Ketone Synthesis.” The bulk of the description concerns work using A1C13. What was done with GaCl3 is briefly described in a single concluding paragraph as follows:

GaCls as catalyst, which was also used in the form of the compound GaCl3 • C6H5C0C1 promotes the reaction even more than A1C13. However, within a short time a yellow compound is precipitated whereby the reaction is delayed considerably. The composition of this compound has not yet been clarified.

We do not think this can be characterized as an unqualified recommendation of gallium chloride as superior to aluminum chloride even in the Ulich ketone synthesis and it is certainly no suggestion that it would be advantageous to replace the “preferred” A1C13 in the process of the British patent with GaCl3.

The Ulich reaction II is “The Hydrocarbon Synthesis” and it was carried out in “a carbon disulfide solution; i. e., to 20 cc CS2 varying quantities of benzene (0.2 to 3 cc) propyl chloride (0.2 to 1 cc) and a catalyst were added.” This shows the scale on which the Ulich investigation was conducted. Appellant’s reaction does not take place in a carbon disulfide solution, nor does that disclosed in the British patent. As in reaction I, one of the reactants is benzene which neither the British patent nor appellant uses. The paragraph containing the disclosure on which the examiner principally relied, parts of which are repeated later in the Ulich article, reads:

More exact assertions can be made regarding the mechanism of the reactions catalyzed by gallium chloride. The use of GaCl3 is of great advantage in reaction-kinetic measurements, because GaCl3, in contrast to A1C13, is readily soluble in carbon disulfide and other solvents of a lower dielectric constant. Thus, a homogenous system is available from the beginning. It is possible that this would also have a favorable effect for some of the preparatory operations with the aid of the Friedel-Crafts reaction, and we should, therefore, like to call the attention of all organic chemists to this catalyst(²). To this must be added that GaCl3, in the cases examined by us, even exceeds A1C13 in activity. However, it is a disadvantage that this high activity is easily and greatly impaired through impurities as well as reaction products. [Emphasis ours.]

The footnote (2) refers to the fact that “the Ga metal is now available at prices which correspond approximately to those of platinum.” In this connection the Patent Office brief has invited our consideration of the general discussion of Friedel-Crafts reactions in Kirk-Othmer, Encyclopedia of Chemical Technology, 1st ed., 1951, Yol. 6, pages 883-891, from which we have noted with interest that aluminum chloride was then selling for 11 cents a pound and that the article nowhere refers to gallium chloride or any other gallium catalyst, notwithstanding Ulich’s 1935 disclosures.

Upon full consideration of Ulich we are unable to find therein the apparently unqualified recommendation to use gallium chloride in place of aluminum chloride which the Patent Office seems to see. We find, on the contrary, a disclosure of greater activity immediately qualified by disadvantages, laboratory tests involving different reactants than appellant’s in a different system in which the drawbacks referred to in appellant’s specification are not involved. We are therefore of the view that Ulich would not suggest to one of ordinary skill in the art to use, in the process of the British patent, gallium chloride as the catalyst in place of the preferred aluminum chloride or the other not preferred Friedel-Crafts catalysts which that patent mentions. In other words, we do not find that the Patent Office has made out a prima facie case of obviousness. That concludes the matter and the decision of the board is reversed.

Reversed.

      . This application is stated to be a continuation of an earlier copending application, serial No. 313,444, filed October 3, 1963, and the rejection herein is a first-action final.

      . According to Example 1 of the specification this catalyst recovery is by washing the reaction product with hydrochloric acid solution, separating the solution by decantation, submitting it to low tension electrolysis, and recovering the gallium content in a metallic state on the cathode. It is then chlorinated with gaseous chlorine to obtain gallium chloride to be reused as catalyst.


text:
    Application of Henry L. PISTILLI.
    Patent Appeal No. 8883.
    United States Court of Customs and Patent Appeals.
    March 22, 1973.
    Rehearing Denied April 26, 1973.
    Andrew R. Klein, Philadelphia, Pa., attorney of record, for appellant.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; John W. Dewhirst, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN, and LANE, Judges.
   LANE, Judge.

This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the examiner’s rejection of claims 7, 8, 9 and 11 of appellant’s application entitled “Vibration Dampener Support for Lenticular Devices” as unpatentable over the prior art under 35 U.S.C. § 103. We affirm.

The claims on appeal are directed to a structure carried on the body of a user for supporting a camera or binoculars at eye level. The application states:

An objective of this invention [is a support] which may allow the body to dampen some vibrations from outside the body but is also capable of dampening vibrations generated within the body such as those due to breathing.

Figure 1 of appellant’s application drawing is illustrative of the invention.

The support includes a telescoping rod having upper and lower portions 13 and 10. The upper end of rod portion 13 is provided with a support or holder adapted to mount a “lenticular” device, which appellant defines as “a device capable of being focussed [sic] * * such as binoculars (shown) or a camera. Rod portion 10 terminates at its lower reduced end 14 in a ball 15 loosely fitted in a socket member 11. The socket member is riveted to a backing plate 18 which is supported on the user’s belt 12 through structure including two flexible flaps 16 and 16a provided with snap fastener elements 17 for attachment to the belt. The rod is further supported at another point by a flexible band or strap 25 attached to a clamping collar 22 which is adjustable along rod portion 10 to a selected position or height above the belt. Appellant states in his brief:

[A] portion of the band 25 extends from a mid-point on the rod 10, over the shoulder of the user (thereby dampening vertical vibrations, since the band is under tension in that area) whereas a second band portion extends around some of the wearer’s body under one arm on the side opposite the shoulder strap location (thus extending transversely across a portion of the chest to dampen lateral vibration) .

In his application, appellant further states:

[I] t is believed to be within the scope of my invention or my broadest claim for two separate bands to be used, although the illustrated embodiment using only one band is preferred.

Claim 11, the sole independent claim on appeal, reads (with subparagraphing ours) as follows:

In an apparatus for supporting a lenticular device such as a camera or field glasses from the body without a tripod,
said apparatus including an upstanding belt-supported rod long enough to bring said device to about the level of the wearer’s eyes
and including a first flexible band portion extending over a wearer’s shoulder,
and a second band portion secured to said rod at a mid-portion, extending around some of the wearer’s body under an arm on an opposite side of the wearer’s body from the first mentioned band portion,
the combination therewith of the improvement for dampening vertical and lateral vibrations of said rod due to the wearer’s body, said improvement including
each band portion being secured to said rod adjacent a mid-portion thereof,
the first band portion being secured to said rod at a small enough angle to oppose substantially some of the longitudinal vibrations in said rod,
the second mentioned band portion forming a much larger angle to said rod for opposing lateral vibrations in said rod,
whereby all vibrations of the wearer’s body are opposed.

Dependent claims 7 and 8 recite additional features of the support for the lower end of the rod. Claim 9 adds to claim 11 a recitation of “yieldable” fastener means on the upper end of the rod that “clampingly” engages the lenticular device.

The board affirmed the rejection of claims 7, 8, 9 and 11 under 35 U.S.C. § 103 as obvious from Wheeler alone or in view of Neuburger.

Wheeler discloses a camera support similar to appellant’s with a telescoping rod. The rod is pivotally mounted at its lower end on a support member attached to the user’s belt and a band extending around the user’s body furnishes additional support. The reference device differs from appellant’s device as claimed primarily in that its support bánd is secured to an upper portion of the rod instead of to its midportion.

Neuburger relates to a device for supporting field glasses on the body of the user. It shows clamping means at the end of a support rod for the field glasses, which means need be considered only with respect to appealed claim 9.

OPINION

Both Wheeler and Neuburger disclose means similar to appellant’s for supporting lenticular devices at the eye level of the user. The principal issue before us is whether modification of Wheeler to locate the point of attachment of the shoulder-underarm band at a midportion of the telescoping rod would have been obvious to a person having ordinary skill in the art. The board held that it would, stating:

[T]he claimed and argued differences and alleged advantages in the attachment of the belt [(band)] ends at the mid-point of the rod, rather than at the point disclosed in Wheeler, involve an obvious redistribution of the weight to a more comfortable position and an obvious redistribution of forces according to elementary mechanics, without resulting in anything unobvious or unexpected.

The board further concluded:

[T]he dampening of vibrations in Wheeler’s and appellant’s devices is primarily effected by the application of tension to the shoulder-underarm belt by forward movement of the rod, rather than by the exact angularity of the ends of said belt with the rod.

In reaching its ultimate conclusion of obviousness, the board considered an affidavit showing of appellant under Rule 132. That affidavit apparently purports to disprove the examiner’s view that “the attachment of the strap means at the midpoint of the rod would [not] have any material [sic] different results over Wheeler.” The board regarded the showing as unconvincing.

We find no error in the board’s conclusions. The location of the strap attachment at a midpoint on the rod is, in our view, a structural choice which would have been obvious to one of ordinary skill in the art. Different people would be likely to find different locations of the strap more comfortable and any distinction in effects of the location of the attachment would appear to be obvious. We find nothing in the arguments or affidavit evidence to persuade us that any unobvious improvement in vibration effects would result from the use of the claimed device.

As to the yieldable clamping means for a lenticular device additionally recited in claim 9, we fully agree that Neu-burger demonstrates that the use of that feature in Wheeler would be obvious.

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

Affirmed.

      . Serial No. 683,556 filed November 16, 1967.

      . U.S. Patent No. 817,207 issued April 10, 1906.

      . U.S. Patent No. 1,018,771 issued February 27, 1912.


text:
    00 CCPA
    The UNITED STATES, Appellant, v. BAYLIS BROTHERS COMPANY, Appellee.
    Customs Appeal No. 5413.
    United States Court of Customs and Patent Appeals.
    March 20, 1973.
   PER CURIAM.

Appellant, the United States, filed a motion on February 23, 1973, informing us (1) that the parties agree that, contrary to the stipulation before us at the time of our opinion dated November 11, 1971, 451 F.2d 643, the thread employed in the smocked dress fronts was not of American origin and (2) that the parties by stipulation dated September 20, 1972 stated that the only American dress fronts are the fabric pieces, the value of which is $65.47.

Accordingly, the aforesaid stipulation of September 20, 1972, is accepted as stating the facts controlling this appeal and our opinion dated November 11, 1971, is modified to the extent that all references to the thread as being of American origin are hereby deleted. Further, this appeal is hereby remanded to the Customs Court so that appropriate relief can be granted under these circumstances.

Remanded.


text:
    Application of Robert E. DOLLINGER and Robert H. Kallenberger.
    Patent Appeal No. 8761.
    United States Court of Customs and Patent Appeals.
    March 15, 1973.
    Donald J. Quigg, L. Malcolm Oberlin, Louis N. French, Philip R. Cloutier, Bartlesville, Okl., of record, for appellants.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patent; John W. Dewhirst, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.
   LANE, Judge.

This is an appeal from the decision of the Board of Appeals, adhered to on reconsideration, sustaining the rejection of claims 29, 30, 31, 38, 39 and 41-44 (hereafter referred to as the rejected claims) and dismissing the appeal as to claims 33-37 and 40 (hereafter referred to as the dismissed claims) of appellants’ application entitled “Method and Apparatus for Producing Carbon Black.” All of the claims involved in this appeal are process claims. We affirm the decision of the board.

The Subject Matter

Claim 29 is representative of the rejected claims and, with subparagraphing ours, is as follows:

In a process for producing high structure carbon black, the steps which comprise
injecting a hydrocarbon feed stream axially into a first generally cylindrical zone,
injecting a first gas stream containing air into said zone and passing it along the outer portion thereof in a direction concurrent with the flow of said feed,
passing the resulting streams successively through generally cylindrical second and third zones, the diameter of the second zone being substantially greater than that of the first and third zones,
introducing a second gas stream produced by burning fuel with air into the outer portion of said second zone, the volume of air in said first gas stream being at least 15 per cent of the combined volume of air in the first and second gas streams, adding sufficient heat with said gas streams to heat the feed to a carbon black forming temperature as it traverses said zones, and recovering carbon black from the gas stream leaving the third zone.

The other rejected claims depend from claim 29 and impose various limitations on the process defined therein.

Figure 1 of appellants’ specification illustrates the apparatus used:

In their brief, appellants explain the claimed subject matter as follows:

The claims involved in this appeal * * * define processes for producing carbon black of increased structure by introducing at least 15% of the process air in a generally axial direction through a first generally cylindrical zone along with a hydrocarbon feed. The hydrocarbon and air flow through an enlarged second zone into a smaller third zone. The remainder of the process air (85% or less) is introduced into the enlarged second zone along with fuel. The resulting heat of combustion converts the hydrocarbon feed to carbon black which is recovered at the end of the third zone.
With reference to Figure 1 of the drawing * * *, the hydrocarbon feed is injected axially through a nozzle 48 into a first generally cylindrical zone 12. Air is injected axially into zone 12 through a conduit 26 and passes concurrently with the hydrocarbon feed into an enlarged cylindrical second zone 14 and then through a third zone 18 which is of smaller diameter than zone 14. The first gas stream recited in the claims may consist of the air axially introduced into conduit 26, or it may be a mixture of the air and fuel gas which is introduced through a conduit 34. This fuel gas serves to increase the yield of carbon black. The remainder of the process air is introduced in admixture with fuel through a tunnel 16 which communicates with zone 14. This portion of the air enters the outer region of zone 14 as the second gas stream recited in the claims, which is produced by burning fuel with air. The heat produced by combustion converts the hydrocarbon feed to carbon black which is recovered at the downstream end of the third zone 18.
The term "structure” refers to the tendency of the individual carbon black particles to form chain-like agglomerates. Structure is measured by the amount of oil which can be absorbed on a given mass of carbon black. A high oil absorption value means that the black has high structure. Such blacks have superior extrusion properties when compounded with rubber, and are easier to mix with the rubber. The processes defined by the claims involved in this appeal produce carbon black having a high structure.

In this appeal, the issues raised with respect to the rejected claims are different than those raised with regard to the dismissed claims. We consider the two sets of claims seriatim.

The Rejected Claims

Rejections of these claims under both 35 U.S.C. § 112 and 35 U.S.C. § 103 have been sustained by the board. Since we agree with the board that the claims are unpatentable for obviousness, we need not reach any § 112 issues.

Several alternative § 103 rejections were affirmed by the board. The only ones we need consider are the following:

(1) Claims 29, 30, 31, 39, 41 and 43 as unpatentable over Krejci et al. (hereafter Krejci);

(2) Claims 38 and 42 as unpatentable over Krejci in view of Peters;

(3) Claim 44 as unpatentable over Krejci in view of Helmers.

Krejci discloses the manufacture of high structure carbon black by a method very similar to appellants’. Krejci explains that the prior art commonly used so-called “tangential flame” processes wherein a carbonaceous reactant and an oxidizing or combustion gas are introduced axially into a generally cylindrical multi-zone reaction chamber. Tangential flame processes sometimes include the use of a small stream of air, called "jacket air,” which keeps the feed line cool to prevent premature carbon black formation therein. Krejci discovered that the structure of carbon blacks could be made higher by the substitution of free oxygen for at least some of the jacket air.

The examiner’s uncontroverted characterization of the Krejci process is as follows :

[A process comprising] a hydrocarbon feed stream * * * injected axially into a first cylindrical zone, a gas stream containing free oxygen injected into said zone along the outer portion thereof in a direction concurrent with the flow of said feed, the streams passed into a second zone having a diameter greater than the diameter of the first zone, oxygen-containing combustion gases introduced tangentially into said second zone establishing a mass of hot gases surrounding the admixture introduced from the first zone, the admixture and surrounding mass of hot gases passed into a third cylindrical zone having a diameter less than the diameter of said second zone, and separating carbon black from the gaseous effluent from said third zone.

Appellants assert that Krejci differs from the claimed process in that there is neither disclosure nor suggestion of the requirement that at least 15% of the total air be introduced in the first zone. Upon careful review of the record before us and arguments of counsel, we conclude that the process set forth in the claims to which rejection (1), supra, applies would have been prima facie obvious from Krejci and that appellants’ assertion of unexpected results has not been established by any evidence of record including an affidavit of coinventor Dollinger offered for the purpose of proving that assertion.

One of ordinary skill in the art would readily recognize that Krejci envisions some distribution of the oxygen-containing gases introduced in the first and second zones. Since the jacket gas introduced into the first zone “can be a mixture of air and added free oxygen * * * [containing] at least 33, preferably at least 50, volume percent of free oxygen” while the oxygen-containing element of the combustion mixture introduced in the second zone may be air, a division of the total air injected in the system is disclosed.

The board regarded a specific example of the Krejci disclosure as suggesting the proportional distribution of air claimed by appellants. A considerable portion of appellants’ argument is directed to contesting the board’s conclusions based on this example, and the solicitor has challenged the assumptions upon which appellants’ contentions are based. We see no reason to focus on the controversial example.

We agree with the more general observations of the solicitor to the effect that the thrust of the Krejci disclosure is that high oxygen content in the first zone jacket gas leads to improved structure and that a high relative proportion of air in the first zone gas stream is, prima facie, an obvious mode of insuring high oxygen content in that stream: We are of the view that the selection of an optimum proportion of first stream air content to total air content would be obvious to one of ordinary skill in the art and find nothing in Krejci which would steer one away from the use of at least 15% air in the first stream. Cf. In re Sebek, 465 F.2d 904, 59 CCPA-(1972).

The Dollinger affidavit purports to prove that the use of air at a first stream to total proportion of 15% yields carbon black of higher structure than that obtained by the procedure set forth in the aforementioned Krejci example wherein the proportion of air in the first stream was 7.9%. The examiner did not find it convincing of nonobviousness for various reasons, including the fact that the structure achieved at 15% falls within the broad disclosure of Krejci. The examiner concluded, and the board agreed, that no unexpected results were demonstrated.

We agree with the Patent Office conclusions with respect to appellants’ affidavit evidence. We think it could be reasonably expected from Krejci that a higher proportion of air in the first stream would result in higher structure. The degree of oil absorption, which is a measure of structure, obtained by appellants at 15% is within the purview of that which is attainable through the Krejci process. Appellants’ evidence also fails to establish any significance in the 15% figure. Although appellants consider that the examiner specifically requested a comparison between products obtained by their process and that resulting from Krejci’s example and are distributed by the examiner’s failure to be convinced of patentability by the comparison once it was presented, a fair reading of the examiner’s rejection does not indicate that he was suggesting that such evidence would necessarily rebut the rejection he had made. In any event, the evidence must, of course, be persuasive, and it is not.

For the stated reasons, we find no error in the decision of the board sustaining the principal rejection (1) based on Krejci alone. Rejections (2) and (3), supra, differ in that Peters and Hel-mers, respectively, were added in response to various limitations imposed in the claims to which those rejections apply. Appellants have advanced no separate argument concerning those rejections except to contend that neither Peters nor Helmers fills the voids appellants find in Krejci. In view of our conclusions with respect to the rejection based on Krejci, we likewise find no error in the board’s decision sustaining rejections (2) and (3).

The Dismissed Claims

The board dismissed the appeal as to claims 33-37 and 40 of appellants’ application. Claim 33 reads as follows:

33. The process of claim 31 wherein the volume of the first gas stream is 15 to 60 per cent of the combined volumes of the first and second gas streams.

The examiner expressed the following rejections in his Answer:

Claims 33-37 and 40 are indefinite and lack basis in the specification as to the volume of the “first gas stream” being 15-60 percent of .the combined volumes of the “first and second gas streams”. It is noted that the disclosure on page 6, lines 12-16 of the specification relates to the volume of air used in the process and not to the gas streams recited in the present claims which obviously are not limited only to air.
* * * * *■ -x-
Claims 33-37 and 40 are rejected under 35 U.S.C. 132 as drawn to new matter as to the volume of the first gas stream being 15 to 60 percent of the combined volumes of the first and second gas streams which lacks basis in the original disclosure. It is again noted that the disclosure on page 6, lines 12-16 of the specification relates to the volume of air used in the process and not to the gas streams recited in the present claims which obviously are not limited only to air.

In its original decision, the board stated the following:

At the hearing, counsel for Appellants admitted that claims 33 through 37 and 40 are in error in referring to 15-60% of the gas streams, instead of air streams. Accordingly, the appeal is dismissed as to claims 33 through 37 and 40.

Appellants requested reconsideration asserting that counsel had not made such a concession, or at least could not recall it, and urging that the board review the propriety of the examiner’s rejection of the relevant claims on the merits. However, the board adhered to its action dismissing the claims and stated:

The dismissal was based upon an oral statement by counsel at the hearing, conceding that the rejection was proper. Appellants seek to withdraw that concession and ask for a decision on the merits of the rejection.
Appellants' sole argument in their brief is that these claims refer to volumes of air. The Examiner’s answer points out that they refer only to gas. No reply brief was submitted. As it appears that appellants agree with the Examiner that these claims should refer to air, instead of to gas, there is no issue here requiring adjudication. Accordingly, the appeal remains dismissed as to these claims.

It is not here asserted by appellants that the underlying rejections are erroneous or that the facts assumed by the board to have been admitted are in any event untrue. Appellants merely urge that the board erred in dismissing the appeal, and they request we reverse and remand the case to the board.

The position of the solicitor is that the dismissal of the involved claims was “not a ‘decision’ which this court has jurisdiction to review. In re James, 57 CCPA 1371, 432 F.2d 473 (1970).” Quoting from James, the solicitor contends that the board here was not acting “in any statutory capacity, reviewing, on its merits, an adverse decision of the examiner,” but was rather “acting only under authority of the rules — as an agent of the Commissioner * *

The statutory jurisdiction of this court to review “decisions” of the board, 35 U.S.C. § 141, depends in turn on the statutory jurisdiction of the Board of Appeals to review “adverse decisions of examiners * * 35 U. S.C. § 7; see also 35 U.S.C. § 134. We may inquire into whether or not the board reviewed, in the present case, an adverse decision of the examiner relating to matters involved in the rejection of claims. See In re Hengehold, 440 F.2d 1395, 1404, 58 CCPA 1099, 1111 (1971). Compare Pat.L.Persp. § A.12 (1970 Dev. A.12-3). We do not agree with the implicit suggestion of the solicitor that the mere label “dismissal” would necessarily exclude board action from the purview of “decision” within the meaning of § 141. What the board did is the pertinent fact regardless of the tag placed on its action.

In the present case, it is apparent that the board did not review the decision of the examiner with respect to the dismissed claims, but instead determined that appellants had acquiesced therein on the basis of an alleged oral concession and, at least in part, the nature of appellants’ argument in their brief before the board which has not been placed in the transcript of record certified to this court. We have been offered neither evidence nor substantial argument which would tend to support a finding of error in the board’s refusal to review the examiner’s action. Moreover, appellants have not indicated to us any reason for believing the examiner to have been incorrect in his action. Under the circumstances here present, we are not disposed to review the board’s dismissal of these claims.

The appeal as to claims 33-37 and 40 is accordingly dismissed. The decision of the board with respect to claims 29, 30, 31, 38, 39 and 41-44 is affirmed.

Affirmed.

        . Serial No. 560,493 filed June 27, 1966, as a continuation-in-part application of Serial No. 515,104 filed December 20, 1965.

      . U.S. Patent No. 3,355,247 issued November 28, 1967, on an application filed May 25, 1964.

      . U.S. Patent No. 2,800,394 issued July 23, 1957.

      . U.S. Patent No. 2,967,090 issued January 3, 1961.