author: BALDWIN, Judge. MARKEY, Chief Judge RICH, Judge

text:
    Application of Thomas R. JOHNSTON.
    Patent Appeal No. 9088.
    United States Court of Customs and Patent Appeals,
    Sept. 19, 1974.
    Markey, C. J., and Rich, J., dissented and filed opinions.
    Morton C. Jacobs, Philadelphia, Pa.,attorney of record, for appellant, McClure, Millman & Jacobs, Philadelphia, Pa., of counsel.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents, Jere W. Sears, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   BALDWIN, Judge.

This appeal is from the decision of the Patent Office Board of Appeals rejecting claims 20-24 of appellant’s application.

The Invention

Appellant’s invention relates to an automatic financial record-keeping system which employs a digital computer. The application states:

Automatic data processing equipments employing digital computers have been developed for the handling of much of the record-keeping operations involved in a banking system.

The checks and deposit slips are automatically processed by forming those items as machine-readable records; that is, magnetic ink characters are imprinted on the check, so that magnetic readers are enabled to process these checks and enter the data in a computer system in the form of coded electrical signals. Other character-reading machines operating on an optical principle for automatically reading special optical type fonts are also employed. With such machine systems, most of the extensive data handling required in a bank can be performed automatically.

It has been found that such data processing equipment, with certain additions and modifications, can be employed to process automatically much, if not all, of the individual record keeping required by a bank’s customers to maintain their own personal and business financial records. That is, as a supplement to the conventional, periodic bank statement furnished to a bank customer, a record summary is provided with [sic] makes unnecessary much or all of the tedious bookkeeping and accounting that the customers would otherwise have to perform. •x * * * * -X-

In accordance with an embodiment of this invention, an automatic record-keeping system is provided which is especially adapted for use with automatic banking devices • for machine handling of the transactions (i. e. checks or deposits) of demand-deposit accounts of bank customers. Machine-readable records of each bank transaction are generated directly on the check or the deposit ticket. The data of such records incorporate those required for conventional banking systems presently carried on cheeks (or deposit tickets); namely, the customer’s account number, amount of the transaction, and the type of transaction (that is, whether a check or a deposit) . Another set of data forming a machine-readable record is provided on each transaction, namely, a set of code characters that identify the bookkeeping classification of each transaction; this classification code is called the “category number.” [e. g., categories indicating different sources of income for which deposits are made and categories indicating different types of expenses for which checks are written.] The category number is entered by the customer on each transaction slip (check or deposit) at the time it is prepared, in the form of a machine-readable record by means of an appropriate device, or in the form of a set of hand-written numeric characters which are converted to a machine-readable record by the customer’s bank.

In the customer’s bank, upon a deposit being made or a check clearing the bank, the machine-readable transaction records on the imprinted cheeks or deposit tickets are read by a suitable document-reader device and stored in a transaction file. To process the transaction file, the automatic record-keeping system employs a data processor, such as a programmable electronic digital computer, having certain data storage files and a control system. In addition to the transaction file, a master record-keeping file is used to store all of the records required for each customer in accordance with the customer’s own chart of accounts. The latter is individually designed to the customer’s needs and also constructed to cooperate with the control system in the processing of the customer’s transactions. The control system directs the generation of periodic output reports for the customer which present the customer’s transaction records in accordance with his own chart of accounts and desired accounting procedures.

The control system is described as comprising a general control which is applicable to the processing operations that are common to most customers and a master control for the operations that vary on an individual basis with each customer. The general control, as allegedly reduced to practice, is in the form of a software program, and the master control is a series of sub-files, one for each customer, which are in the form of a sequence of records containing suitable control mechanisms and the customer’s financial data.

The application contains schematic block and flow diagrams of the entire apparatus including detailed descriptions of each diagram which set forth the interrelationships between all the disclosed elements of the apparatus. The application also discloses a print-out of a complete program and a detailed flow chart thereof for use with a known commercial general-purpose computer, the IBM 1400 series, to provide the special-purpose computer which forms the apparatus of appellant’s invention.

Claim 20 is exemplary:

20. A record-keeping machine system for financial accounts, said system comprising a data processor including a memory for storing eombi-natorially coded signal records;
a processor for combining and comparing the coded signals of said records;
input and output devices;

and a control system for supervising and directing said other parts of said data processor to perform a certain sequence of operations;

said memory including a storage file of a plurality of machine-readable records formed of coded combinatorial signals, a master section of said file including a plurality of predeter-minedly sequenced sub-files of said records, each said sub-file including a different signal group record for a certain one of a plurality of account identifications, a plurality of predeter-minedly sequenced different signal group records for different record-keeping category codes individually associated with reach of said account identification records, a plurality of different group records each for an amount total associated with a different one of said category records, and a plurality of totalizing operation records individually associated with certain pluralities of said category records and sequenced with the associated category records, a transaction section of said file including different pluralities of sub-files of said records, each of said transaction sub-files including one of said account identification signal group records, one of said associated category signal group records, and a separate transaction amount signal group record associated with each of said category records;

said control system including means for directing the processing of said files in accordance with the predetermined sequences of said master sub-files and of said category records of each sub-file, said processing directing means including means for locating in said master file section, for each of said transaction sub-files, that one of said category records corresponding to the transaction account identification record and the transaction category record and for augmenting the associated master amount total record by the amount records of the corresponding transaction sub-file; and

means for producing an output record for each of said master sub-files ;

said output record producing means including means for identifying each of said master sub-file category records and for producing an output listing of the sub-file category codes and of the associated category amount total from said records, means for directing the accumulation of the amount totals of successive ones of said category records, and means for identifying each of said totalizing records and for producing an output record of said accumulation of totals of the preceding category records, [paragraphing ours].

The Rejections

The examiner rejected all the claims in appellant’s application under 35 U.S. C. § 112 and 35 U.S.C. § 102; however, the board did not consider .the underlying bases for these rejections to be valid and did not sustain these rejections. However, under the provisions of Rule 196(b), Rules of Practice in Patent Cases, the board then entered five new rejections under the provisions of 35 U. S.C. § 112, 35 U.S.C. § 101, and 35 U.S. C. § 103.

Rejections Under 35 U.S.C. § 112

The board’s first rejection of the claims is under the provisions of the second paragraph of § 112 in that the claims fail to particularly point out and distinctly claim that which appellant considers to be his invention.

The board stated:

Appellant * * * [in] his specification acknowledges that automatic data processing equipment has already been developed for the financial record-keeping and statement-furnishing operations of a bank so that the rendering of these services merely by some form of automatic data processing, not including appellant’s improvements thereover, was not considered to be appellant’s invention.
Turning now to the appealed claims, both apparatus and method, we find them not directed to improved record keeping machinery, but rather to a broad system of keeping financial records where the distinction over acknowledged prior record-keeping is either in the identity of the person or institution which has custody of certain phases of the bookkeeping operation or in the financial meaning of, or the relationship existing between, the various records. Thus, the broad sweeping reference in the claims to the automation of the banking industry serves only as a dress for claims that spell out, in effect, the relationship of a bank and its customers, not any particular configuration of business machinery.

The board’s second rejection under the provisions of § 112, second paragraph, was labeled indefiniteness. The board reasoned that portions of appellant’s apparatus are defined as means for identifying an account or type of transaction and that this “identification of the meaning represented by a section of the computer memory is in the mind of the user and cannot define any characteristic of the apparatus.” Relying upon the following passage from In re Foster, 438 F.2d 1011, 1015, 58 CCPA 1001, 1006, (1971):

Judge Baldwin in the second Prater opinion [Application of Prater, 415 F.2d 1393, 56 CCPA 1381 (1969)] made it clear that means-plus-function language such as that used in the present apparatus claims does not encompass the human being as the

“means” or any part thereof [,] the board held the claims to be indefinite insofar as they purportedly encompassed a human being as a part of the claimed apparatus.

Rejection Under 35 U.S.C. § 101

Under the provisions of § 101 the board rejected all the claims as claiming non-statutory subject matter. After reviewing the holdings of prior opinions of this court, e. g., In re Foster, supra; and In re Musgrave, 431 F.2d 882, 57 CCPA 1352 (1970), which held that computer related inventions were “statutory” subject matter if they were within the “technological arts,” the board inferred that computer related inventions which “extend beyond the field of technology are not within the ‘technological arts’ and are non-statutory.” After noting that the term “ ‘technological arts’ should [not] embrace processes of using machines so as to dominate practices in the ‘liberal arts,’ such as social or political sciences, humanities, music and art,” the board stated:

A granting of the instant claims would, in effect, grant a monopoly to appellant on a method of conducting the banking business since banks would thereby be restricted to the use of their data processing equipment only for their own bookkeeping and not being allowed to freely expand into the business of keeping books for their customers.
The granting of claims which would allow the intrusion of the patent system into the social sciences already under regulation by governmental agencies would exceed the constitutional grant of authority to issue patents in the “technological arts.”

Rejections Under 35 U.S.C. § 103

All the claims were further rejected under the provisions of § 103 as being “obvious variations of either the system of bookkeeping by banks that was acknowledged to be old by appellant . ■ [in his] specification [] or the system of bookkeeping of the Dirks patent. [] when applied to banking rather than industrial business.”

The board noted that individual bank customers frequently have plural accounts, such as “trust” or “escrow” accounts, and that the names of these accounts is a “category code” as required by the claims. The board acknowledged that, although a bank may regard those accounts as separate accounts, its treatment of those accounts is the same as that accorded appellant’s different category codes, inasmuch as “the bookkeeping in the separate special accounts of a single customer correctly credits and debits the same and renders periodic summary statements of account to the customer.” Therefore, the board opined:

Merely printing the summary sheets for all the special accounts of an individual on a single document with totals for all accounts would be an obvious convenience to both the bank and the customer.

As to the rejection of the claims as unpatentable over the Dirks patent, the board stated:

Dirks discloses a comprehensive automatic data processing system for many different purposes in networks of individual departments of a large business corporation * * *. This system allows personalized files for localized areas of responsibility * * *. Each area is assigned an account number in which transaction and balance files are kept and updated * * *. The bookkeeping is on a cost accounting basis * * * such as for sales of a product.
There is no fundamental difference in a data processing apparatus or method because of the nature of the goods involved in a sales transaction. The bookkeeping apparatus and method would be the same no matter whether the amount debited represented the value of the merchandise or the value of the extended credit.
Accordingly, it would have been obvious to a person of ordinary skill to use the cost accounting portion of the Dirks system of bookkeeping in the banking rather than the mercantile business.

OPINION

Considering first the rejections under the second paragraph of.§ 112, we find the instant apparatus claims to be in compliance with the requirements set forth in that section of the statute. These requirements were recently discussed by this court in In re Knowlton, 481 F.2d 1357, (Oust. & Pat.App.1973).

In essence, the “failure to particularly point out and distinctly claim” rejection is based upon the board’s con-elusion that the “relationship of a bank and its customers, not any particular configuration of business machinery”, is being claimed. Upon reading the appealed apparatus claims we cannot perceive how any such “relationship” is being claimed. In typical means-plus-function language, which is expressly sanctioned by the third paragraph of § 112, the appealed apparatus claims are clearly drawn to a “record-keeping machine system for financial accounts” (emphasis added). Accordingly, we cannot sustain the board’s rejection on its stated grounds.

The board’s rationale underlying its second rejection under § 112 for indefiniteness appears to be the same as that found to be defective in In re Foster, supra. Here, as in Foster, we find the appealed apparatus claims clearly read only upon the subject matter which appellant regards as his invention — a “record-keeping machine system for financial accounts” (emphasis added) — not a human being inside or outside appellant’s apparatus. Appellant’s specification makes it quite clear that the claimed apparatus automatically performs the identifying operations referred to by the board; those operations are neither actually performed by a human being, nor can we imagine how they could be realistically performed by a human being. See In re Bernhart, supra. Thus, we cannot sustain this rejection on the board’s stated rationale.

With regard to the rejection under § 101, we cannot agree with the board that the apparatus of the appealed claims is not within the “technological arts.” Eecord-keeping machine systems are clearly within the “technological arts.” Such machine systems, which comprise programmed digital computers, are statutory subject matter under the provisions of § 101, and “claims defining them must be judged for patentability in light of the prior art.” In re Bernhart, supra. Furthermore, we are not aware of, nor can we locate, any dictionary which would define a machine system as within the purview of the “liberal arts.”

The board’s reluctance to “grant a monopoly to appellant on a method of conducting the banking business” is misplaced. The appealed apparatus claims are not drawn to cover either a method of doing business or even a method of bookkeeping. Nor would banks “be restricted to the use of their data processing equipment only for their own bookkeeping and not * * * [be] allowed to freely expand into the business of keeping books for their customers.” Obviously, banks would be free to so expand their services and use any apparatus they may desire except the apparatus set forth in appellant’s claims. We do not find that situation to be in conflict with Article I, Section 8, of the Constitution, since the “right to exclude others” is the very heart of our patent system.

Additionally, the solicitor argues that the holding in the recent opinion of the Supreme Court in Gottschalk v. Benson, 409 U.S. 63, 93 S.Ct. 253, 34 L.Ed.2d 273 (1972) is logically applicable to the instant apparatus claims. However, as we stated in In re Christensen, 478 F.2d 1392 (Cust. & Pat.App.1973):

The issue considered by the Supreme Court in Benson was a narrow one,
namely, is a formula for converting binary coded decimal numerals into pure binary numerals by a series of mathematical calculations a patentable process? (emphasis added).

Furthermore, the instant claims, in apparatus form, do not claim or encompass a law of nature, a mathematical formula, or an algorithm. For these reasons, we do not find the holding of Benson to be applicable to claims of the type now before us.

Finally, we reach the rejections under § 103. In determining whether or not appellant’s record-keeping machine system is an obvious variation of the bookkeeping systems which were acknowledged by appellant to be known in the art, “we must view the prior art without reading into that art appellant’s teachings.” In re Sponnoble, 405 F.2d 578, 56 CCPA 823 (1969).

We cannot agree with the board that the claimed “category codes” are equivalent to the account numbers of separate accounts that a customer may have with one bank. Appellant’s “category codes” and account numbers are two different types of controls, as appellant’s specification and claims clearly point out. Furthermore, appellant’s claimed invention produces a breakdown of a customer’s income and expenditures associated with a single account and is not directed to the board’s proposed modification of known data processing apparatus to provide a customer with merely a summary sheet consisting of net totals of plural separate accounts which a customer may have at a bank. Although it may possibly be obvious to modify known record-keeping apparatus to achieve a summary sheet of a plurality of separate accounts, as proposed by the board, we conclude that any further modification to such known apparatus, in order to achieve the results of appellant’s claimed apparatus, would not have been obvious to one of ordinary skill in the art who did not have appellant’s specification before him.

Turning to the obviousness rejection based upon the patent to Dirks, we conclude that this reference does not render the subject matter of the appealed claims obvious to one of ordinary skill in the art. The four brief portions of the Dirks specification referred to by the board and the additional passages of that specification called to our attention by the solicitor simply are not suggestive of the subject matter of the appealed claims. We find that, with appellant’s specification before them, the board and solicitor have merely chosen various portions of the Dirks apparatus and have attempted to read them upon various elements set forth in appellant’s claims. Furthermore, we note that the solicitor’s interpretation of Dirk’s, apparatus creates substantially the same apparatus as that of the board's proposed modification of known data processing apparatus, supra,, insofar as the solicitor interprets various separate accounts of Dirks as corresponding to appellant’s claimed category codes. Accordingly, we cannot sustain this rejection.

For the foregoing reasons, the decision of the Patent Office Board of Appeals is reversed.

Reversed.

MARKEY, Chief Judge

(dissenting).

I would affirm the decision of the board on its rejection under 35 U.S.C. 103. In that event, discussion of the rejections under 35 U.S.C. 112 and 101 becomes unnecessary. That we decline to discuss rejections which are thus rendered moot does not, of course, reflect in any way upon the validity or invalidity of such rejections.

The majority opinion finds differences between the claimed subject matter and the prior bank data processing system. Thereupon, the majority opinion appears to treat the obviousness rejection below as though it were based on 35 U.S.C. 102. There is no doubt, as the board recognized, that appellant’s programmed computer differs from the conventional programmed computers previously employed in banks. But the question under 35 U.S.C. 103 is whether appellant’s programmed computers as claimed, i. e., his “record-keeping machine system,” would have been obvious to those skilled in the art applicable to such record-keeping machine systems. In my view one skilled in the art, presented with the conventional machine system, would have found it obvious, without knowledge of appellant’s disclosure, to have modified the system as set forth in the appealed claims.

Similarly, I regard the differences between the claimed subject matter and the relevant portions of the Dirks’ patent to be such as to have rendered obvious the claimed subject matter as a whole at the time the invention was made. That only portions of the Dirks’ specification are relied on by the board is of course, irrelevant if such portions do in fact render obvious the subject matter of the appealed claims. Whether or not Dirks discloses category codes or their equivalent would not appear to be the question. If it did, the rejection might well be under 35 U.S.C. 102. The question is whether the contribution of such category codes by appellant is a difference sufficient to render the claimed subject matter unobvious to one skilled in the applicable art. As above indicated, I differ from my brothers in the majority and would answer that question in the negative.

Thus, I find no clear error on the part of the board in its rejection of the appealed claims under 35 U.S.C. 103. In the absence of such clear error we must, and I would, affirm the decision of the board.

RICH, Judge

(dissenting).

On the authority of Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972), I would affirm the rejection of the claims on appeal which was made by the board under § 101, as requested by the Solicitor for the Patent Office.

The board’s rejection was in these words:

Under the provisions of Rule 196(b) this board herewith enters under 35 U.S.C. 101 a further rejection of claims 1 through 11 and 16 through 27 as for subject matter outside the patent statutes.

This is inclusive of claims 20-24 on appeal here. The board did not, of course, have the benefit of the Supreme Court’s views in Benson because the board decision was on October 27, 1971, and Benson was not decided by the Supreme Court until November 20, 1972.

The Supreme Court held the process claims in Benson unpatentable under § 101. As the solicitor points out, appellant, in his main brief, ignored the Supreme Court Benson decision. In his reply brief he endeavors to deal with it— unsuccessfully, in my view. He attempts to distinguish on the ground that the claims here are directed to machines while Benson involved process claims. I. think that will not suffice. Appellant has to concede that

* * * the only resemblance of this case to Benson is that of the use of computer programs to embody the invention. Therein lies the rub, for ap-pellee [the Patent Office] would deny patents for all software-embodied inventions.

The board, which was dealing with claims of appellant cast in both process and machine form, said the following, with which I agree:

We see no essential difference in substance between these apparatus claims which define only broad means for performance of the steps of a data processing method and process claims 25, 26 and 27 which define the steps of the data processing method as being carried out by any conventional data processing machine. Hence, we consider that both the apparatus and the method claims on appeal must stand or fall together. [Emphasis added.]

I realize that claims 25, 26, and 27 are not on appeal but I do not take the board’s comment as being restricted to them among the process claims. The point is that the machine or apparatus and process claims are really directed to the same invention, of which appellant’s main brief says:

* * * this invention is being sold as a computer program to banks and to other data processing companies so that they can perform these data processing services for depositors.

What could more clearly reveal the reality that the invention is a program— software — and that that is what appellant wants to protect by the appealed “machine system” claims? Appellant did not invent a machine — i. e., “hardware.” Appellant’s brief further states:

This machine was reduced to practice in the software form of computer programs * * *.

I am quite familiar with the legal doctrine that a new program makes an old general purpose digital computer into a new and different machine. This court has been through that many times and I am not denying the validity of this principle — which partakes of the nature of a legal fiction when it comes to drafting claims. My problem is that, knowing the invention to be a new program, I must decide whether it is patentable in any claimed form in view of Benson, whether claimed as a machine, a “machine system,” or otherwise. I am probably as much — if not more — confused by the wording of the Benson opinion as many others. What the Court did in its decision reversing the holding of this court that Benson and Tabbot’s method claims were patentable subject matter under § 101 contains a message that is loud and clear. If those claims are not to patentable subject matter, neither, in my view, are the claims here, regardless of difference in form. Benson et al. had a program invention too and they could have cast their claims in machine system form just as appellant did. Every competent patent draftsman knows how to do that.

It seems to me important to focus on what the Supreme Cohrt did in Benson, rather than on the specifics of its explanation of why it did it. I have no idea what was in the collective mind of the six-justice Court in approving the statements :

It is said that the decision precludes a patent for any program servicing a computer. We do not so hold. * * * It is said we freeze process patents to old technologies, leaving no room for the revelations of the new, onrushing technology. Such is not our purpose.

These are the comforting words to which some inventors of software and owners of software inventions look for solace. I find it more significant to contemplate the identities of the troops lined up for battle in Benson and observe which side obtained the victory. On the one side was the Government, against patenting programs or software, supported by the collective forces of major hardware (i. e., computer) manufacturers and their representative associations who, for economic reasons, did not want patents granted on programs for their machines. On the other side was Benson et al. and their assignee and assorted lawyers and legal groups who were in favor of patent protection for programs or software. The anti-patenting forces won the victory — if not an altogether clear one — and on the legal principle that the Benson et al. way of programming a computer to do a particularly useful job of general applicability in the data processing field was the kind of invention the Supreme Court would not approve patenting without prior consideration by and specific authorization from the Congress. The major part of the rather brief and now famous “nutshell” conclusion of the Court’s opinion dwells heavily on this point.

I can find no realistic distinction in kind between the Benson et al. invention and the invention here and I conclude that the Benson decision requires us to affirm the rejection of claims 20-24 as directed to non-patentable subject matter under 35 U.S.C. 101. Holding that view, I find it unnecessary to consider the remaining four grounds of rejection discussed by my colleagues.

It has been suggested that the position I am taking is inconsistent with the position I have taken or the views I have expressed in others of the many carefully reasoned opinions of this court on the statutory subject matter question under 35 U.S.C. 101 which led to Benson, none of which was discussed or even recognized in the Supreme Court’s Benson opinion. As a result, the value of those opinions as precedents has become unsettled.

It may well be that I seem to have been inconsistent. As the author of the opinion of this court in Benson, which was wholly reversed, I have not been persuaded by anything the Supreme Court said that we made a “wrong” decision and I therefore do not agree with the Supreme Court’s decision. But that is entirely beside the point. Under our judicial system, it is the duty of a judge of a lower court to try to follow in spirit decisions of the Supreme Court — that is to say, their “thrust.” I do not deem it to be my province as a judge to assume an advocate’s role and argue the rightness or wrongness of what the Court has decided or to participate in what I regard as the inconsistent decision here, supported by a bare majority which tries in vain, and only briefly, to distinguish Benson by discussing form rather than substance and various irrelevancies like pre-Benson decisions of this court, the banking business, social science, and the liberal arts. I deem it to be the Supreme Court’s prerogative to set the limits on Benson, which was broadly based. I hope it will do so. As John W. Davis, erstwhile outstanding Solicitor General, once said, “The first requirement of any judicial opinion is utter clarity.”

      . The board’s decision concerned claims 1-11 and 16-27, but appellant has only appealed the rejection of claims 20-24.

      . Serial No. 624,741, filed March 21, 1967.

      . The board found that the examiner had based his rejections upon the premise “that an unprogrammed, or a differently programmed, general purpose computer is the same machine as the one that would result from appellant’s programming of the same or of a similar computer.” The board acknowledged that neither it nor this court considers that premise to be valid, obviously referring to In re Bernhart, 417 F.2d 1395, 57 CCPA 737 (1969).

      . 196. Decision by Board of Appeals
      * * * # * (b) Should the Board of Appeals have knowledge of any grounds not involved in the appeal for rejecting any [appealed] claim, it may include in its decision a statement to that effect with its reasons for so holding, which statement shall constitute a rejection of the claims. The appellant may submit an appropriate amendment of the claims so rejected or a showing of facts, or both, and have the matter reconsidered by the primary examiner. The statement shall be binding upon the primary examiner unless an amendment or showing of facts not previously of record be made which, in the opinion of the primary examiner, avoids the additional ground for rejection stated in the decision. The applicant may waive such reconsideration before the primary examiner and have the case reconsidered by the Board of Appeals upon the same record before them. Where request for such reconsideration is made the Board of Appeals shall, if necessary, render a new decision which shall include all grounds upon which a patent is refused. The applicant may waive reconsideration by the Board of Appeals and treat the decision, including the added grounds for rejection given by the Board of Appeals, as a final decision in the case.

      . The appellant did not seek any reconsideration provided for by Rule 196(b) and appealed directly to this court.

      6. The presently appealed claims 20-24 are all apparatus claims.

      . This portion of the specification is reproduced in this opinion under The Invention section, supra.

      . U. S. Patent No. 3,343,133, issued September 19, 1967, on an application filed August 9, 1963.

      . We note that although the “failure to distinctly claim” language used in the board’s rejection connotes a rejection for indefiniteness, In re Knowlton, supra, the sole basis for its rejection was that appellant was claiming something — a relationship between a bank and its customer — other than what appellant regarded as his invention, i. e., a failure to particularly point out the subject matter which appellant regards as his invention. Accordingly, we treat the rejection on this basis.

      . Although the board held the claims to be indefinite, we again find the sole basis of the rejection was that appellant was claiming something — a human being — other than what appellant regarded as his invention. Thus, we also treat this rejection on this basis.

      . The solicitor argues that the board had another basis for its indefiniteness rejection, namely that the means-plus-function recitations in the claims are indefinite for lack of any corresponding descriptions of structure in the specification upon which the scope of equivalents might be based in accordance with the third paragraph of § 112.
      However, we cannot agree with the solicitor that the board set forth any such basis for its “indefiniteness” rejection. Furthermore, the thrust of this proposed rejection indicates that it would have been properly made under the first paragraph of § 112. See In re Comstock, 481 F.2d 905, (Cust. & Pat.App.1973), In re Knowlton, supra. See also In re Bernhart, supra.

      . “The phrase ‘technological arts,’ * * * is synonymous with the phrase ‘useful arts’ as it appears in Article I, Section 8 of the Constitution.” In re Waldbaum, 59 CCPA 940, 457 F.2d 997 (1972).

      . We likewise do not agree with the board that banking is a “social science.”

      . Claim 20 uses the terminology “account identifications” for account numbers.

      . We note that the Dirks patent comprised 509 pages of the instant Record.

       Harbaugh, Lawyer’s Lawyer, The Life of John W. Davis, Oxford University Press, New York (1973), p. 108.


source: Caselaw Access Project

author: LANE, Judge.

license: Public Domain

text:
    Application of Robert G. TABORSKY.
    Patent Appeal No. 9183.
    United States Court of Customs and Patent Appeals.
    Aug. 29, 1974.
    Arthur L. Cain, Cain & Lobo, Cleveland, Ohio, atty. of record for appellant.
    Joseph F. Nakamura, Washington, D. C., for the Commissioner of Patents; Henry W. Tarring II, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE and MILLER, Judges.
   LANE, Judge.

This is an appeal from the decision of the Patent Office Board of Appeals, adhered to after reconsideration, which affirmed (with one examiner-in-chief dissenting) the rejection under 35 U.S.C. § 103 of claims 1 through 8 in appellant’s patent application serial No. 730,596, filed May 20, 1968, for “3-Nitrohalosal-icylanilides.” We reverse.

Claimed Subject Matter

3-Nitrohalosalicylanilides have the following general structural formula (numerals indicate ring positions):

In the above structural formula, the left-hand aromatic ring is called the “salicyl” ring and the right-hand aromatic ring is called the “aniline” ring.

Claim 1 is a generic claim to 3-nitro-halosalicylanilides:

1. A 3-nitrohalosalicylanilide having the formula

where Y is a halogen and n is a positive integer no greater than 5.

Claim 2 is an independent subgeneric claim reciting the structural formula shown in claim 1 where Y is a halogen and n is a positive integer no greater than 3.

Claims 3-8 are dependent on claim 2, and they recite individual chemical species where the identity or the position of the halogen substituent varies as follows:

The remaining claim, independent claim 9, stands allowed:

9. A 3-nitrohalosalicylanilide having the formula

Appellant’s specification states that 3-nitrohalosalicylanilides are useful, inter alia, as piscicidal agents for selectively eradicating brown bullhead fish and as selective larvicides for controlling sea lamprey, the latter having caused great damage to commercial fish, such as trout, in the Great Lakes. Data in the specification indicate that several of appellant’s claimed compounds possess a significantly greater lethal effect to sea lamprey larvae than to fingerling rainbow trout.

References

The examiner and the board relied on four prior art references:

(1) Schraufstatter and Gonnert [Schraufstatter], U.S. Patent 3,-079,297, granted February 26, 1963 (filed May 31, 1960; claims benefit of earlier applications)
(2) Strufe, Schraufstatter, and Gon-nert [Strufe], U.S. Patent 3,-113,067, granted December 3, 1963 (filed August 23,1960)
(3) Ioffe'et al. [Ioffe I], Zhurnal Ob-shchei Khimii, 29:2682-2685 (August 1959)
(4) Ioffe et al. [Ioffe II], Chem. Abstracts, 54:10938 (1960)

The examiner cited another reference, not as prior art, but for the purpose of establishing “certain statements of fact” (relying on In re Wilson, 311 F.2d 266, 50 CCPA 773 (1962)):

Howell et al. [Howell], U.S. Patent 3,238,098, granted March 1, 1966 (application filed January 27, 1964)
Appellant cited two references:
Starkey, U.S. Patent 3,309,267, granted March 14, 1967
Taborsky, U.S. Patent 3,527,865, granted September 8,1970

Rejection

The examiner rejected claims 1-8 under 35 U.S.C. § 103 as “obvious over” Schraufstatter, Strufe, and the two Ioffe references. The board majority sustained this rejection and stated: “We agree with the examiner that the claimed compounds are structurally obvious and that the evidence offered by appellant to show that the compounds have unexpected beneficial properties fails of its objectives.” (Emphasis ours.) The dissenting examiner-in-ehief would have reversed the rejection because “ * * * the art of record fails to establish that the invention, as a whole, would have been obvious to a person having ordinary skill in the art. In re Papesch, 50 CCPA 1084, 315 F.2d 381, 137 USPQ 43 (1963).”

Schraufstatter

The Schraufstatter patent, the first prior art reference, is entitled “Method of Combating Gastropods,” and it discloses that certain derivatives of 2-hy-droxy-benzoic-anilide are effective gas-tropodicidal agents. Schraufstatter broadly defines a genus of 2-hydroxy-benzoic-anilide derivatives having the following structural formula:

wherein R is hydrogen or a lower al-kanoyl radical having from 1 to 4 carbon atoms and which is substituted at one of the numbered positions with a halogen atom and at another numbered position with a member selected from the group consisting of halogen and the nitro group; and further members of the said first mentioned group substituted at a total of up to three additional of the numbered positions with members selected from the group consisting of halogen, methyl and trifluoro methyl, the total number of halogen substituents, however, not exceeding four and the total number of nitro groups not exceeding two.
Here and in the following, chlorine, bromine and iodine are to be understood by “halogen.” [Emphasis ours.]

This definition of the genus is unclear since the phrase “the said first mentioned group” is ambiguous. Nevertheless, the genus appears to include compounds where R is hydrogen, a halogen “is substituted at one of the numbered positions,” and a nitro (-N02) group is substituted “at another numbered position.” Thus, the defined genus encompasses a large number of compounds, including some of appellant’s claimed compounds.

Schraufstatter then defines a subgen-us of “particularly active gastropodicidal agents in accordance with the invention” which has the following formula:

wherein R is hydrogen or a lower al-kanoyl radical having from 1 to 4 carbon atoms, Ri is hydrogen or methyl, R2 is chlorine or bromine, R3 and R* are hydrogen, methyl, chlorine or bromine, or a nitro group, R<t [sic] and R6 are hydrogen, chlorine or bromine and wherein always only one nitro group and at most three halogen substituents are present.

This subgenus does not encompass appellant’s claimed compounds since, by definition, only R3 and R4 may be nitro groups and the structural formula shows that R3 and R4 are always on the aniline ring (the right-hand ring). Appellant’s claimed compounds always have the ni-tro group at the 3 position on the salicyl ring (left-hand ring).

Schraufstatter then gives “[b]y way of example” a list of the chemical names and the melting points of twenty specific derivatives of 2-hydroxy-benzoic-anil-ide said to be “notably useful and more or less readily producible compounds.” Inspection of this list reveals that three of the twenty compounds do not contain a nitro group. The other seventeen compounds each contain at least one ni-tro group (one compound contains two nitro groups). Sixteen of these seventeen compounds have the nitro group(s) located on the aniline ring as required by the sub-genus, above. One of these seventeen compounds has the nitro group on the salicyl ring (the left-hand ring), and that compound is disclosed as follows:

* # # * *)fr * * # *
Melting Point, °C
# #
5-nitro-4'-ehlorosalicylanilide 252
* * *
* * -X- * -X- * * * * *

To illustrate, the named prior art compound has the following structural formula:

This compound departs from the definition of the sub-genus since it has the ni-tro group on the salicyl ring (the left-hand ring) whereas the sub-genus requires that the nitro group be located on the aniline ring.

What remains in Schraufstatter— working examples of how to synthesize eight specific compounds, a table showing minimum concentrations needed to produce a 100% death rate in snails after 24 hours using specific compounds, and a working example of how to prepare compositions consisting of the active ingredient plus a carrier (e. g. — an emulsifier) — is concerned only with compounds which come within the defined sub-genus.

The prior art compound, 5-nitro-4'-chlorosalieylanilide, differs structurally from the compound recited in appellant’s claim 5 in the position of the nitro group on the salicyl ring. The claim 5 compound has the nitro group at the 3 position of the salicyl ring while the prior art compound has the nitro group at the 5 position of the salicyl ring. Another way of expressing this structural difference is to say that in the claim 5 compound the nitro group is in an adjacent position relative to the hy-droxy (-OH) group on the salicyl ring whereas in the prior art compound the nitro group is in the opposite position relative to the hydroxy group on the sal-icyl ring. In short, the claim 5 compound is structurally a non-adjacent position isomer of the prior art compound.

Strufe

The Strufe patent, the second prior art reference, is entitled “Alkanolamine Salts of Salicyl Anilides And Process For Their Production”, and it discloses that alkanolamine salts of salicyl anil-ides are useful for “combating snails and slugs.” The Strufe patent is related to the Schraufstatter patent in that Schraufstatter and Gonnert, the two co-inventors shown in Schraufstatter, are also co-inventors in Strufe, and the two patents indicate a common assignee.

Strufe defines a genus of alkanolam-ine salts of salicyl anilides as follows:

* * * * * *
Generally the new compounds of this invention are alkanolamine salts of salicyl anilides of the general formula

wherein Ri denotes hydrogen or an aliphatic acyl radical, R2 and R3 denote a nitro group, chlorine or bromine whereby at least R2 of R3 means a halogen atom, R4 denotes hydrogen or alkyl or alkoxy groups with 1-5 carbon atoms or nitro groups whereby at least one of R4 denotes a nitro group.

Strufe teaches that:

The production of the aforesaid al-kanolamine salts is carried out according to known methods by reacting the salicyl anilides with alkanolamines such as a mono-ethanolamine, N-meth-ylethanol-amine or 1, 2-dimethyl-ethanolamine and the like.

Strufe expressly refers to Schrauf-statter when stating that:

The free salicyl anilides and their gastropod combating properties are the subject matter of * * * [identifying by serial number the great-grandparent application, the grandparent application, the parent application, and the application which has] issued to Patent 3,079,297 [the Schraufstatter patent].

Strufe points out a practical disadvantage when using the compounds broadly disclosed by Schraufstatter:

As it is stated above it is known to use substituted 2-hydroxybenzanilides and their O-acyl compounds as gastropod combating agents; however, these compounds are barely water-soluble and have therefore several disadvantages in practice.

Strufe states that it is known to use substituted 2-hydroxybenzanilides in the form of their alkali metal salts, but that the majority of these compounds have the “disadvantage of being rapidly re-precipitated” in water containing mineral salts, and therefore they are “not very suitable for combating snails living in water.”

Having thus described a practical problem confronting those skilled in the art, Strufe indicates that he has solved the problem by producing and using al-kanolamine salts of salicylanilides “ * * * which are not precipitated in an aqueous mineral-salt-containing solution [and] which are stable even without addition of emulsifiers * * *.” Strufe then gives working examples of how to prepare nine specific alkanola-mine salts of salicylanilides. The sali-cylanilide starting compound in each example is either a 2'-nitrosalicylanilide or a 4,-nitrosalicylanilide, viz., where the nitro group is substituted on the aniline ring.

Following the working examples is a list of fourteen “[o]ther salicylanilides which can be reacted with suitable al-kanolamines to give useful compounds * * *.” Among the fourteen compounds is: “5-nitro-4'-chlorosalicyl-anilide (M.P. 252°).”

As in Schraufstatter, this is the sole compound specifically disclosed in the list or in the entire reference where the nitro group is on the salicyl ring, and the chemical name and melting point are the sole disclosures relevant to the compound.

Ioffe I and II

The third and fourth prior art references are Ioffe I and Ioffe II, respectively. Ioffe I is a technical paper enti-tied “N-Substituted Amides of Salicylic Acid and Its Derivatives. I. Arylides, of 3, 5-Dichlorosalicylic and 5-Nitrosali-cyclie Acids.”, translated from a Russian chemical journal. Ioffe II is cumulative to Ioffe I since Ioffe II is the abstract of Ioffe I published in Chemical Abstracts.

Ioffe I is mainly concerned with methods of chemical synthesis, and the authors conclude that the best method of preparing arylides of salicylic acid is by “the direct alloying of salol [phenyl sali-cylate] with amines.” They state that the derivatives produced by their “salol method” are “more pure” than the same derivatives when prepared by reacting a substituted-salicylie acid with a substituted-amine in the presence of phosphorus trichloride. Ioffe I presents tables showing twelve specific derivatives of 3, 5-dichlorosalicylic acid and the corresponding twelve specific derivatives of 5-nitrosalicylic acid. Among the twelve derivatives of 5-nitrosalicylic acid is the following compound:

Anilide Melting * * *
Grouping Color Temp.
«• * * * * * * -X- * *
4'-Chloranilide Cream 255-257 * * *
* * * * -X- * * * * -X-

Hence, Ioffe I discloses the same compound, 5-nitro-4'-chlorosalicylanilide, shown by Sehraufstatter and Strufe. The examiner recognized that Ioffe I was cumulative to Sehraufstatter and Strufe, and stated that Ioffe I “was cited because of its date.” Ioffe I does not disclose any biological utility for this compound or for any derivative of 5-ni-trosalicylic acid. Ioffe I only states that: “In reduction, the arylides of the 5-nitrosalicylic acid are transformed into corresponding arylides of the 5-amino-salicylic acid, which are diazotized and form azo dyes together with azocompo-nents.”

OPINION

The general issue is whether the cited prior art establishes that “ * * * 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 * * * ” 35 U.S.C. § 103 (emphasis ours). The specific issues are whether appellant’s claimed chemical compounds are prima facie obvious because of structural similarity to the cited prior art and, if so, whether there is a sufficient showing to rebut prima facie obviousness.

Fluoro-Substituted Compounds

With respect to the compounds recited in claims 1 and 2 when Y is fluorine and with respect to the compound 3-nitro-4'-fluorosalicylanilide recited in claim 6, we hold that the cited prior art fails to establish prima facie obviousness. To arrive at these fluoro-substituted compounds, one must modify the closest prior art compound, 5-nitro-4/-chlorosalicylanilide, in two essential ways, first by changing the position of the nitro group from the 5 position to the 3 position, and second, by changing the identity of the halo-substituent from chloro to fluoro.

In determining the propriety of the Patent Office case for prima facie obviousness, it is necessary to ascertain whether the prior art teachings would appear to be sufficient to one of ordinary skill in the art to suggest making the proposed substitution or other modification. In re Lintner, 458 F.2d 1013, 1016, 59 CCPA 1004, 1007 (1972).

Sehraufstatter expressly limits the scope of “halogen” in the definition of his genus to “chlorine, bromine, and iodine.” Thus, appellant’s fluoro-substituted compounds are outside Schraufstatter’s genus as well as Sehraufstatter’s sub-genus. Strufe’s reference to “[t]he free salicyl anilides” of Sehraufstatter similarly limits the disclosure of Strufe to “chlorine, bromine, and iodine.” Furthermore, Strufe as a whole is directed to preparing alkanolamine salts of salicylanilides because, as he states it, free salicylanilides have “several disadvantages in practice.” Ioffe I does not mention or suggest the desirability of any fluoro-substituted compounds. In short, the prior art of record provides one of ordinary skill in the art with no motivation to make the proposed molecular modifications needed to arrive at appellant’s claimed fluorosubstituted compounds. See In re Murch, 464 F.2d 1051, 59 CCPA 1277 (1972) and In re Fay, 847 F.2d 597, 52 CCPA 1483 (1965). The questions posed by this court in In re Stemniski, 444 F.2d 581, 586, 58 CCPA 1410, 1416 (1971), are also relevant here:

* * * what on this record — other than abstract, theoretical or academic considerations — would lead one of ordinary skill to change the structure of the reference compounds to obtain the claimed compounds ? Certainly no practical considerations which promote the progress of useful arts or are of use to society are manifest. How can there be obviousness of structure, or particularly of the subject matter as a whole, when no apparent purpose or result is to be achieved, no reason or motivation to be satisfied, upon modifying the reference compounds’ structure ? * * *

Since we hold that the prior art of record fails to establish that the fluoro-substituted compounds recited in appellant’s claims are prima facie obvious, it is unnecessary to consider any comparative evidence with respect to the properties of these compounds.

Chloro-, Bromo-, and Iodo-Substituted Compounds

With respect to the compounds recited in claims 1 and 2 when Y is chlorine, bromine, or iodine and with respect to the specific compounds recited in claims 3, 4, 5, 7 and 8, we hold that objective comparative evidence of record establishes the non-obviousness of these compounds. In re Papesch, 315 F.2d 381, 50 CCPA 1084 (1963); In re Wiechert, 370 F.2d 927, 54 CCPA 957 (1967); Commissioner of Patents v. Deutsche GoldUnd-Silber-Scheideanstalt Vormals Roessler, 130 U.S.App.D.C. 95, 397 F.2d 656 (1968); National Distillers & Chemical Corp. v. Commissioner of Patents, 233 F.Supp. 917 (D.D.C.1964).

Since comparative evidence demonstrates that these compounds possess biological activities which are beyond what could reasonably be predicted by the person of ordinary skill in the art, it is unnecessary for us to speeificially pass on the issue of whether these compounds are prima facie obvious since, even if they are, the prima facie case has been overcome by the evidence. In re Blondel, 499 F.2d 1311 (CCPA 1974).

We begin our review of the comparative evidence of record with the claimed compound 3-nitro-4/-chlorosalicylanilide (claim 5), which is a non-adjacent position isomer of the prior art compound 5-nitro-4'-ehlorosalicylanilide disclosed by Sehraufstatter, Strufe and Ioffe I. The Howell patent, which was cited by the examiner (although not a prior art reference) and by appellant (to show unexpected properties), indicates in Table V that the claimed compound produces 100% mortality in sea lamprey larvae at a low concentration of 0.3 parts per million of water. Comparative data for the prior art compound 5-nitro-4’-chlorosalicylanilide is found in Howell’s Table IV where it is indicated that a higher concentration of 0.5 parts per million is necessary to produce 100% mortality in sea lamprey larvae.

Such an objective difference in the desired toxicity of the claimed compound is unexpected in view of the seemingly minor difference in molecular structure, and that difference in toxicity is an empirical fact which could not be reasonably predicted by one of ordinary skill in the art. Hence, the difference in toxicity is persuasive evidence that the claimed compound has non-obvious properties. Since a compound and its properties are inseparable in patent law, In re Papesch, supra, “* * * the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would [not] have been obvious at the time the invention was made to a person having ordinary skill in the art * * 35 U.S.C. § 103.

Similarly, Howell teaches that 3-nitro-4'-bromosalicylanilide (claim 8) produces 100% mortality in sea lamprey larvae at a concentration of 0.3 parts per million while the corresponding compound 5-nitro-4/-bromosalicylanilide (not specifically disclosed in the prior art) requires a higher concentration of 0.5 parts per million to produce 100% mortality. Appellant’s specification states that 3-nitro-4'-iodosalieylanilide (claim 7) produces 100% mortality in sea lamprey larvae at a concentration of 0.3 parts per million while Howell states that the corresponding compound 5-nitro-4'-iodosalicylanilide (not specifically disclosed in the prior art) requires a higher concentration of 0.5 parts per million to produce 100% mortality.

Furthermore, Howell states that 3-nitro-S'-chlorosalicylanilide (claim 4) produces 100% mortality in sea lamprey larvae at a concentration of 0.3 parts per million while the corresponding compound S-nitro-S'-chlorosalicylanilide (not specifically disclosed in the prior art) requires the higher concentration of 15.0 parts per million to produce 100% mortality.

We conclude that the objective evidence, comparing representative claimed compounds with the corresponding 5-ni-tro compounds, is sufficient to establish differences which demonstrate the non-obviousness of all of appellant’s claimed chloro-, bromo-, and iodo-substituted compounds.

The decision of the board is reversed.

Reversed.

      . This application is a continuation-in-part of application serial No. 469,300, filed July 2, 1965, which in turn was a continuation-in-part of application serial No. 325,473, filed November 21, 1963, and application serial No. 435,686, filed February 26, 1965, which were both filed as continuations-in-part of application serial No. 56,679, filed September 19, 1960.

      . The structural formulas in appellant’s claims depict the compounds as containing six-membered aliphatic rings. However, it is clear from the chemical name 3-nitrohal-osalieylanilide that appellant intends to claim compounds which contain six-mem-bered aromatic rings. The examiner has advised appellant that he will be required to indicate that the rings in the structural formulas are aromatic.

      . The Howell patent (assigned to the United States of America as represented by the Secretary of the Interior) was involved in an interference with Taborsky’s application serial No. 539,723, filed April 4, 1966, as a division of application serial No. 469,300, see note 1, supra. Taborsky was the successful party. See Howell v. Taborsky, 164 TJSPA 58 (Bd.PatJntf.1969).

      . This patent was granted on application serial No. 539,723, see note 3 supra.


author: SETH, Circuit Judge.

text:
    UNITED STATES of America, Appellee, v. Marshall E. GOURLEY et al., Appellants.
    Nos. 73-1306 to 73-1310.
    United States Court of Appeals, Tenth Circuit.
    Argued and Submitted Sept. 12, 1973.
    Decided Oct. 29, 1973.
    On Rehearing of No. 73-1308 Sept. 27, 1974.

      Rudolph Schware, Denver, Colo., for appellants.
    J. Terry Wiggins, Asst. U. S. Atty. (James L. Treece, U. S. Atty., and Stephen M. Duncan, Sp. Asst. U. S. Atty., on the brief), for appellee.
    Before SETH and MeWILLIAMS, Circuit Judges, and BROWN, District Judge.
   SETH, Circuit Judge.

The appellants were found guilty in a trial to the court of violations of 18 U. S.C. § 1382. This section makes it a criminal offense to reenter a military reservation after having been removed therefrom or after having been ordered not to reenter by the person in command thereof. The defendants have taken this appeal in which they challenge the effectiveness of the orders not to reenter to serve as the basis for the offense for which they were charged.

The orders not to reenter were in the form of letters signed by the Superintendent of the Air Force Academy, and are referred to in the record as “bar letters.” These were handed to the defendants and there is no question but what they were received and understood by the defendants. The incidents for which they were given, as well as the time and place thereof, will be described later. There is also no question that defendants reentered the Academy grounds at a later date contrary to the letters.

The trial judge conducted a thorough trial and patiently permitted the parties, several of whom represented themselves, to develop their theories fully. The basic issue is one that has been the subject of few opinions, and the standards and tests are largely undeveloped.

The preliminary issue on appeal is whether the defendants in the trial for violation of 18 U.S.C. § 1382 could challenge the validity of the bar letters on constitutional grounds, or whether such a challenge should have been made by some other action commenced by the defendants.

The Supreme Court in Flower v. United States, 407 U.S. 197, 92 S.Ct. 1842, 32 L.Ed.2d 653, in its summary disposition permitted such a challenge at the trial on the criminal charge. The cited case concerned the distribution of pamphlets in'Fort Sam Houston. The issue is not fully developed as the case was decided on an application for certiorari; the Court however said: “The First Amendment protects petitioner from the application of § 1382 under conditions like those of this case.” The petition for writ of certiorari was there granted, and the conviction reversed. This must be taken as authority to so challenge the bar letter at the criminal trial. See also Kiiskila v. Nichols, 433 F.2d 745 (7th Cir.).

Does the First Amendment also protect the defendants here ? To decide this question, it must be determined whether or not the Air Academy was a “closed post” generally, or whether the places where the initial incidents for which the bar letters were issued took place on a portion of the post which was “open.”

It is well recognized that the commander of a military installation has and must have the broad authority and discretion to summarily exclude persons therefrom. Such authority is derived from the powers granted Congress and the Executive by Articles I and II, respectively, of the Constitution, and is a natural concomitant of the commander’s duty to maintain the order, security, and discipline necessary to military operations. Cafeteria & Restaurant Workers Union v. McElroy, 367 U.S. 886, 81 S.Ct. 1743, 6 L.Ed.2d 1230; Weissman v. United States, 387 F.2d 271 (10th Cir.). However, when the commander permits portions of the installation to be open to the general public, and visitors are encouraged, he may not restrict an individual’s exercise of his First Amendment rights in such public areas. Flower v. United States, 407 U.S. 197, 92 S.Ct. 1842, 32 L.Ed.2d 653; Burnett v. Toison, 474 F.2d 877 (4th Cir.); Spock v. David, 469 F.2d 1047 (3d Cir.). As noted by the Supreme Court in Flower:

“Under such circumstances [post open to public] the military has abandoned any claim that it has special interests in who walks, talks, or distributes leaflets on the avenue. The base commandant can no more order petitioner off of this public street because he was distributing leaflets than could the city police order any leafleteer off any public street.”

The authorities cited immediately above demonstrate also that the decision whether an area is open or closed must be made in view of the realities of the circumstances, and not on a theoretical basis nor without finding some actual, practical effect of a formalized or ritualized “closing.” The Supreme Court in Flower v. United States had little difficulty in reaching a conclusion in view of the fact that the street in Fort Sam Houston, where the incident occurred as a basis for the bar letter, was like any other street in the city, and traversed by public carriers and the public generally, without any gates or sentries.

Much evidence was presented at trial in the case before us to show whether the Air Academy grounds near Colorado Springs were closed or open. The Academy is on a large tract of land several miles from the City of Colorado Springs. Appellee stresses these facts to demonstrate that the grounds are closed: (1) that the Academy was formally declared a closed base by order of the Superintendent in accordance with Air Force Regulations; (2) that access to the base is by only two security posts (gates or sentry posts) manned twenty-four hours a day; (3) that warning signs to the effect that entry is only by permission of the Superintendent are displayed at each gate, (4) that entering traffic is restricted after 6:00 p. m. each day; (5) that there are large “stop” signs at each gate; (6) that the Superintendent has authority to cancel any public activity on base; and (7) that no regular bus, truck, or common carrier routes traverse the main Academy grounds.

Appellants, to show the open nature of the Academy, showed that: (1) automobiles entering the Academy are stopped at times at the gates, but no substantial check is made of daytime visitors, and no stopping is attempted when large public events as football games are taking place at the Academy; (2) that there are over one million visitors to the Academy each year; (3) that in 1971 over 800,000 people visited the Cadet Chapel which is well within the grounds; (4) that attendance at Academy football games averaged nearly 50,000 spectators per game, the Stadium being on the grounds with access through the gates; and (5) that tour buses make tours of the grounds and are not stopped or questioned.

The bar letters were issued to some of the defendants for passing out anti-war pamphlets to persons who were entering the Academy football stadium for a game; they were issued to others for kneeling in a “silent protest” of the Vietnam War on the grass outside the Academy Chapel during regular visiting hours. One defendant performed another symbolic anti-war act at a location on the Academy Reservation which is not disclosed in the record, and his act is considered the same as the others.

We are thus concerned with the area surrounding the football stadium just before or during a game, and with the walks and grassed areas immediately surrounding the Academy Chapel during ordinary visiting hours. As to these places, at these times, the record is clear that the Academy encourages visitors to be present, and imposes no restrictions on their entrance at the “gates” of the Academy through which they must pass to reach these places. The Chapel is very impressive and of unique design according to the record, and for those reasons, and by reason of its use, it is a great attraction for visitors. It is so treated by the pamphlets and pictures in the record issued with the authority of the Academy officials. The very large number of visitors to the Chapel demonstrates its attraction as well as its public nature.

The football games and the stadium also have an attraction for visitors. These spectators are actively encouraged to attend the games, and do so in large numbers with no restrictions whatever at the gates. Cars entering the grounds are not stopped on game days at pregame and post-game times. A witness testified that visitors at times other than football games are stopped at the two gates. At one gate, they are encouraged to go into the Visitors Center, at the other gate, they are given maps of the grounds. Neither of these actions at the gates can be considered to be much other than a sort of welcome to the usual visitors. Access of the general visitor is not permitted into certain areas of the Academy, not herein considered, however, the descriptive material which accompanies the photographs of Academy scenes and buildings states that most of the area is open to the public. This material is prepared under authorization of the Academy officials, as mentioned.

The practical way in which the matter of public entry to the stadium and at the Chapel area is treated, and the realities thereof, completely overcome as to the times herein considered the result which may have been intended by the ritualistic closing of the Academy grounds generally. Also, the limited use to which the “gates” are put also takes away their effectiveness as closure as to visitors at the times and places here considered.

We find the factual situation quite different at the Air Academy than prevailed at Tinker Field, as concerned in United States v. Floyd, 477 F.2d 217 (10th Cir.), and in Weissman v. United States, 387 F.2d 271 (10th Cir.), McQueary v. Laird, 449 F.2d 608 (10th Cir.), and Schneider v. Laird, 453 F.2d 345 (10th Cir.). The facts are instead more like those in Burnett v. Tolson, 474 F.2d 877 (4th Cir.). We are also here concerned with persons who are encouraged to come on the grounds as visitors and not with employees of the base. We must hold that any finding that the grounds generally were closed was not supported by substantial evidence and must give way to the evidence relating to the particular areas herein concerned.

In view of the fact that the areas where the incidents occurred which were the basis of the bar letters were public areas, and since the defendants were there exercising First Amendment rights, the letters cannot serve as a basis for the charges. We have expressed no opinion concerning the incident which took place on defendants’ reentry.

The judgments are each reversed and the cases are remanded with directions to dismiss the charges as to each appellant.

ON REHEARING OF NO. 73-1308

The Government has asked for rehearing only in case No. 73-1308— United States v. Samuel A. Johnson, one of the consolidated cases covered by the opinion heretofore filed by this court, Nos. 73-1306 through 73-1310. The rehearing is granted.

The petition has merit as a bar letter relative to this particular defendant was given to him personally after an incident in which he trespassed on Academy property with a tractor. He thereafter returned to Academy grounds. The area here concerned was not a public area as considered in the consolidated cases, and the bar letter was thus valid. 18 U.S.C. § 1382.

Under these circumstances, the letter would be sufficient to support a conviction under Flower v. United States, 407 U.S. 197, 92 S.Ct. 1842, 32 L.Ed.2d 653, as distinct from the circumstances prevailing in the other consolidated cases.

The judgment of conviction as to defendant, Samuel A. Johnson, in No. 73-1308 is affirmed, and the opinion heretofore issued in the consolidated cases is so modified, but otherwise it remains unchanged.


author: McENTEE, Circuit Judge.

text:
    James A. CLINE, Petitioner-Appellee, v. ROCKINGHAM COUNTY SUPERIOR COURT, Respondent-Appellant.
    No. 74-1016.
    United States Court of Appeals, First Circuit,
    Argued April 3, 1974.
    Decided Sept. 5, 1974.
    Robert V. Johnson, II, Asst. Atty. Gen., with whom Warren B. Rudman, Atty. Gen., was on brief, for respondent-appellant.
    Richard S. Kohn, Concord, N. H., on brief for petitioner-appellee.
    Before COFFIN, Chief Judge, Me- • ENTEE and CAMPBELL, Circuit Judges.
   McENTEE, Circuit Judge.

The State of New Hampshire, acting on behalf of the superior court, appeals from the granting of a writ of habeas corpus. 367 F.Supp. 1146 (D.N.H. 1973). We affirm, but on different grounds.

The facts are as follows. On July 29, 1970, petitioner-appellee Cline, then 18 years old, walked up to a police officer on the street in Hampton Beach, N. H., and asked him where he could buy a pair of shoes. After being informed, Cline turned away. At that point the officer noticed an American flag sewn to a blanket draped over Cline’s shoulder. On this flag a peace symbol had been penned in ink. The officer thereupon arrested Cline. It is stipulated that the only reason for the arrest was the fact that a peace symbol was drawn on the flag.

Cline was charged with violating "former N.H.Rev.Stats.Ann. ch. 573:2 (1955 ed.) (repealed 1973), which provided :

“Affixing to Flags, etc. No person shall in any manner append, annex or affix, or cause the same to be done, to any . . . flag, standard, color, or ensign [of the United States] any inscription, design, device, symbol, name, advertisement, words, marks, or notice whatever, or exhibit or display, or cause to be exhibited or displayed, any such flag, standard, color, or ensign, or any flag or ensign evidently purporting to be either of the same, upon which shall in any manner be placed, attached, annexed, or affixed any inscription, design, device, symbol, name, advertisement, words, marks, or notice whatever.”

He was initially tried and convicted before the Hampton District Court and appealed to the Rockingham County Superior Court, where he was entitled to and received a trial de novo before a jury. At trial Cline acknowledged drawing the peace symbol on the flag. He said he did so as a protest against war in general and the Vietnam war in particular. He further said he had no intention to mutilate or show contempt toward the flag. The state made no effort to contradict this testimony. The superior court instructed the jury that Cline should be convicted if it was found that he affixed the symbol to the flag and so displayed it. The jury returned a verdict of guilty.

The New Hampshire Supreme Court overruled Cline’s exceptions, holding that the statute did not impermissibly infringe upon first amendment rights either on its face or as applied. The New Hampshire court further held that the statute was not void for vagueness. State v. Cline, 305 A.2d 673 (N.H.1973).

Cline then filed the instant petition for habeas corpus in the District Court for the District of New Hampshire. Relying largely on our decision in Go-guen v. Smith, 471 F.2d 88 (1st Cir. 1972), aff’d on other grounds, 415 U.S. 566, 94 S.Ct. 1242, 39 L.Ed.2d 605 (1974), the district court granted the petition on the ground that ch. 573:2 was unconstitutional on its face because it was overbroad in its interference with first amendment rights. 367 F.Supp. 1146.

We need not go as far as the district court and hold that the state statute was unconstitutional on its face. The recent Supreme Court decision in Spence v. Washington, 418 U.S. 405, 94 S.Ct. 2727, 41 L.Ed.2d 842 (1974), has made it clear that the statute was unconstitutionally applied to petitioner Cline’s activity in the instant case. See also State v. Kool, 212 N.W.2d 518 (Iowa 1973). We affirm the granting of the writ of habeas corpus on that ground.

In Spence, a college student hung a United States flag from his apartment-house window. The flag was upside down, and attached upon it on both sides was a peace symbol made of removable black tape. The student was convicted under a state statute quite similar to the New Hampshire statute in the instant ease. At trial the student testified that he put the symbol on the flag to protest the then recent invasion of Cambodia and the killings at Kent State University. It was conceded that the sole reason for his arrest was the placing of the symbol on the flag and exposing it in that condition. The Supreme Court reversed the conviction, holding that the student had been engaged in the expression of an idea through activity and that none of the state interests arguably supporting his prosecution under the statute were significantly impaired by his activity. The state interests considered were prevention of breach of the peace, protection of the sensibilities of passersby, and preservation of the national flag as an unalloyed symbol of our country.

The similarity of Spence to the instant case is clear. We see only two arguable distinctions. First, in our case the peace symbol was not created with removable black tape, but with ink. Thus, it was presumably not as easily removed afterwards. Second, in our case the petitioner did not display the flag from his window, but rather from a blanket draped over his shoulder as he walked down the beach in the town of Hampton. We think both these distinctions are immaterial. Although Cline might have trouble removing the peace symbol from the flag, the crucial point is that the flag belonged to him and not to the government. Thus, as the Supreme Court said in Spence, the important interest of protecting public property from misuse is not at issue here.

As to the three interests addressed in Spence, it seems clear to us that the state has failed to show the impairment of any legitimate interest. Although Cline displayed his flag on the street, he did not display it in any of the special public areas where the state necessarily has some power to restrict expressive activity because of strong countervailing interests. The state has not contended here, nor could it do so on this record, that Cline’s flag was likely to touch off a breach of the peace. Nor was there any contention that his flag was thrust upon a “captive” audience. Finally, New Hampshire has made no stronger a case than did Washington that defendant’s conduct threatened the national flag “as an unalloyed symbol of [sovereignty].” 418 U.S. at 412, 94 S.Ct. at 2731. (Spence)

Most important, the state, while contending that Cline’s activity was “bizarre behavior falling short of meaningful communication,” does not challenge Cline’s testimony that he intended his display of the flag to convey his personal feelings about war in general and the Vietnam war in particular. United States forces were still actively engaged in Vietnam combat at the time. Indeed, Cline’s display of the flag occurred only two months after the college student’s display of the flag in Spence. As in that case, Cline’s display of the flag must be regarded as “a pointed expression of anguish . . . about the then current domestic and foreign affairs of his government.” At 410, 94 S. Ct. at 2730. Such expression is protected by the first amendment and cannot be criminally punished except in the most compelling circumstances. No such circumstances are present in the instant case.

Affirmed.

      . There was no need to convene a three-judge district court under 28 U.S.C. § 2281 (1970) because the constitutionality of the • New Hampshire statute was raised in the context of a habeas corpus proceeding. Wilson v. Gooding, 431 F.2d 855 (5th Cir. 1970), aff’d, 405 U.S. 518, 92 S.Ct. 1103, 31 L.Ed.2d 408 (1972).

      . We have no reason to invalidate the statute on its face when it has already been repealed. We do note, however, that the district court’s decision is supported by Cahn v. Long Island Vietnam Moratorium Comm., — U.S., 94 S.Ct. 3197, 41 L.Ed.2d 1153 (1974), aff’g mem. 437 F.2d 344 (2d Cir. 1970). See also Spence v. Washington, supra, at 414 n. 9, 94 S.Ct. 2727 n. 9 (dictum).

      . On this point, the Spence Court referred to Procunier v. Martinez, 416 U.S. 396, 94 S.Ct. 1800, 40 L.Éd.2d 224 (1974) (prison); Healy v. James, 408 U.S. 169, 92 S.Ct. 2338, 33 L.Ed.2d 266 (1972) (college); Tinker v. Des Moines Independent Community School Dist., 393 U.S. 503, 89 S.Ct. 733, 21 L.Ed.2d 731 (1969) (high school and junior high school).


author: EDWARDS, Circuit Judge.

text:
    UNION OIL CO. OF CALIFORNIA, Plaintiff, v. KENNON CONST. CO., and Fidelity & Deposit Co. of Maryland, Defendant and Third-Party Plaintiff-Appellant, R. E. Hunt Const. Co., and J. P. Derry-berry, d/b/a Derryberry Const. Co., Third-Party Defendant-Appellee. UNION OIL COMPANY OF CALIFORNIA, Plaintiff, v. KENNON CONST. CO., and Fidelity & Deposit Co. of Maryland, Defendant and Third-Party Plaintiff-Appellee, R. E. Hunt Const. Co., and J. P. Derryberry, d/b/a Derryberry Const. Co., Third-Party Defendant-Appellant (two cases).
    Nos. 73-2191-73-2192 and 73-2193.
    United States Court of Appeals, Sixth Circuit.
    Argued April 12, 1974.
    Decided Aug. 28, 1974.

      Gareth S. Aden, Harlan Dodson, Hooker, Keeble, Dodson'& Harris, Nashville, Tenn., for appellant.
    John P. Branhan, Glasgow, Adams & Taylor, J. C. Dale, Jr., Dale & Dale, Thomas A. Higgins, W. Ovid Collins, Jr., Cornelius, Collins, Higgins & White, Nashville, Tenn., for appellee.
    Before EDWARDS, MILLER and ENGEL, Circuit Judges.
   EDWARDS, Circuit Judge.

These cases concern a dispute over performance of a construction contract between the owner of the project (Union Oil Co. of California), the general contractor (Kennon Construction Co. and its bonding company, Fidelity & Deposit Co. of Maryland) and two subcontractors (R. E. Hunt Construction Co. and Derryberry Construction Co.). Jurisdiction is founded upon diversity of citizenship under 28 U.S.C. § 1332 (1970).

The cases were tried before a United States District Judge in the Middle District of Tennessee, Nashville Division, who summarized the facts succinctly in his unreported Memorandum Opinion:

“The basic background facts are that by contract dated September 18, 1968, Kennon undertook to construct for Union a truck stop in Wilson County, Tennessee, for the sum of $566,432. The defendant Fidelity and Deposit Company of Maryland executed a performance bond as surety, with Kennon as principal, conditioned to indemnify and save harmless Union from any losses, damages, etc., resulting from Kennon’s failure to properly perform the construction contract.
“Among other things, the contract called for the excavation and blacktopping of a portion of the construction site which was to be utilized as a parking area and driveway. Kennon subcontracted the excavation, fill-work and sub-base preparation to third-party defendant Derryberry. The spreading of crushed stone and the paving of the driveway and parking areas was sublet by Kennon to third-party defendant Hunt.
“Construction of the facility was completed in October, 1969, and possession delivered to Union. By January, 1970, a portion of the pavement at the north end of the project (hereinafter referred to as “failed area”) had begun to fail. This failure, characterized by pitting, cracking, and collapse of asphalt, occurred in that portion of the project where the surface of the site had been cut to bedrock and a portion of the bedrock had been blasted. Before paving, it had been necessary to fill in, or “backfill” this area to a specified grade elevation. This backfill is referred to in the specifications and in the nomenclature of this opinion as the “sub-base.” On this sub-base was placed eleven inches of compacted rock or gravel, referred to in the specifications and in this opinion as the “base.” Finally, on top of the base was placed a primer and three inches of blacktop. After the pavement failure, Union made demand upon Kennon under the contract’s “Guarantee of Material and Workmanship” to replace the failed areas. Kennon refused and Union had the work done by others at a cost of $58^659. Union here sues Kennon for this amount, and Kennon seeks judgment against third-party defendants Hunt and Derryberry for any liability it may incur to Union.”

The District Judge found that Kennon and its two subcontractors had disregarded the general contract specifications by employing on-site clay as back-fill in the north end of the project and had failed to compact the subbase and base as required by the specifications before paving. He also found that the subsequent failure of the paving was due to these two variances from contract specifications, and not to any inherent deficiency in the specifications themselves.

One of the principal fact disputes concerned Kennon’s and Derryberry’s contention that the clay which was admittedly used for a subbase for the paving in violation of specifications had been used as a result of the direction of Union’s on-site representative, Tom Bruce. Derryberry, himself, and Ken-non’s superintendent, Suchman, testified that Bruce had told them to use the clay. Bruce testified positively that he had not done so and had not known that the clay was being used in place of crushed stone from a quarry which would have complied with specifications.

The critical question here is who was telling the truth and who was not. We have read the entire transcript with this conflict of evidence in mind without finding any route toward resolution of the question except the fundamental legal proposition that questions of credibility are subject to resolution by the trial judge. Pierce v. New York Central R.R., 409 F.2d 1392, 1394 (6th Cir. 1969). This transcript indicates that more witnesses testified that Bruce ordered the clay used than testified to the contrary. But the record also demonstrates conclusively that the District Judge believed Bruce was telling the truth and that appellants’ witnesses, on this point, were not. We note that Bruce’s job notes tend to support his testimony. Also, there is a certain inherent improbability in Bruce’s giving the positive instruction which Derryber-ry testified to without anyone (including Kennon’s superintendent) thinking to comply with the contract and get the changeorder in writing. Additionally, we note the District Judge’s skepticism based on the failure of Derryberry and Suchman to remember times and dates or to present any records on the point at all. With these factors in mind, we cannot say that the District Judge’s conclusion on this score was “clearly erroneous.” Fed.R.Civ.P. 52(a).

This, of course, leads to affirmance of the District Court’s judgment of $58,659 in favor of plaintiff Union against defendant Kennon.

We do not, however, find the route to decision of Kennon’s third-party suits against Derryberry and Hunt to be similarly clear cut. Suchman’s testimony, we believe, has to be read as acknowledgment of full knowledge and approval of Derryberry’s substitution of “silty clay” for the backfill materials specified in the construction contract. Since the District Judge found this substitution to be a principal cause (if not the principal cause) of the pavement failure, we cannot justify a third-party judgment in Kennon’s favor against Derryberry. Such conduct on the part of Kennon’s superintendent must be held to be contributory negligence which serves to bar Kennon’s recovery. Kroger Co. v. Giem, 215 Tenn. 459, 469-70, 387 S.W.2d 620, 624-625 (1964). As to Derryberry the judgment is vacated.

There is evidence to support the District Judge’s findings that Hunt failed to perform his inspection and compaction duties. Like the District Judge, we do not believe these failures were excused by either Union’s or Ken-non’s failure to summon Geologic Associates (testing engineers for Union) to the scene. Nor do we find conclusive evidence that Kennon knew about the Hunt omissions just referred to.

Clearly, however, the full responsibility for the failure of the pavement should not fall upon Hunt. This record seems to indicate that the first and major cause was the improper substitution of the unspecified “silty clay.”

Thus the third-party judgment against Hunt must also be vacated. But in this instance the case is remanded for further proceedings, including the taking of1 additional testimony in order for the District Court to 1) make a finding as to whether or not under the total circumstances then known by Kennon, Ken-non should have known of the faulty compaction and Hunt’s failure to inspect and discover same; and 2) (if the District Court answers that question in the. negative) make a division of responsibility for the pavement failure between that portion of damage caused by the substitution of improper backfill material and that portion of damage caused by Hunt’s failures to inspect and compact.

The judgment of the District Court in favor of plaintiff Union against defendant Kennon is affirmed, with costs to plaintiff.

The judgment of the District Court in favor of third-party plaintiff Kennon against third-party defendant Derryber-ry is vacated and the complaint as to him is dismissed, with costs to defendant.

The judgment of the District Court in favor of third-party plaintiff Kennon against third party defendant Hunt is vacated and the case is remanded for further proceedings consistent with this opinion. Costs are to await the event.


author: PER CURIAM.

text:
    Lambert HERICKS, Petitioner, v. Honorable Timothy S. HOGAN, and Penn Central Transportation Co., Respondents.
    No. 73-1297.
    United States Court of Appeals, Sixth Circuit.
    Aug. 28, 1974.

      Walter C. Beall, Beall, Hermanies & Bortz, Cincinnati, Ohio, on brief for Lambert Hericks.
    Gerald J. Rapien, Taft, Stettinius & Hollister, Cincinnati, Ohio, on brief for Penn Central Transportation Co.
    Before CELEBREZZE, PECK and McCREE, Circuit Judges.
   PER CURIAM.

Petitioner was injured after being pinned between a tank car and a repair truck while working for Respondent Penn Central Railroad (hereinafter “Respondent”). He sued Respondent under the Federal Employers’ Liability Act (hereinafter' FELA), 45 U.S.C. § 51 et seq., seeking compensation for personal injuries and expenses caused by the railroad’s alleged negligence.

During pretrial proceedings, Petitioner discovered that Respondent had scheduled private interviews with the railroad-designated physicians who had treated him. Petitioner objected to the private nature of the proposed interviews. His manner of objection was, according to the District Court, to threaten a suit in an Ohio state court to enjoin the doctors from talking with Respondent’s attorneys, based on the argument that such discussions would violate the physician-patient privilege which Petitioner asserts under Ohio law. The District Court also intimated that Petitioner had threatened the physicians with a malpractice action if they talked with Respondent’s lawyers. The physicians are apparently unwilling to talk privately with Respondent’s attorneys under the cloud of Petitioner’s threat.

In order to assure the physicians that Petitioner’s threat was based on an unfounded assumption (that the physician-patient privilege existed in this case), Respondent requested the District Court to order Petitioner to sign waivers of the privilege, “so as to permit counsel for defendant to interview, privately, plaintiff’s treating physicians,” in the words of the District Court. The District Court granted the motion. It ordered Petitioner to present a complete list of names and addresses of “every doctor whom he has consulted at any time in relation to anything.” Petitioner’s counsel was then to “determine what consultations or treatments have any . relevance to this case.” Next, Petitioner was to file a list of doctors with relevant knowledge. Along with this list, Petitioner was told to file “a waiver or consent in respect of each doctor . clearly consenting to the doctor involved talking to defense counsel and disclosing anything involved in his professional relationship with the plaintiff if the doctor sc wishes.” The Court emphasized that the choice of whether to talk with Respondent’s attorneys was that of the doctors, not that of Petitioner. The District Court further stated that a civil contempt order would issue if Petitioner failed to do these things. In the alternative, the District Court offered to dismiss the action without prejudice if Petitioner agreed to take his case to a state court, where the District Court advised Petitioner he would “be governed . probably by Ohio law.”

On March 23, 1973, a document in the form of an order was initialed by the district judge with his longhand inscription, “Will enter unless prohibited.” On the face of this document, over the district judge’s signature appears his longhand notation: “To the Clerk — File & enter on docket as a Proposed Order (not an Order).” A copy of that document is affixed to the petition presently before us, and the fact that it is entirely unconformed has occasioned difficulty in our consideration. It seems apparent from the extensive attention which has been directed to the issue attempted to be presented to this Court, both in the District Court and here, that the present proceeding is one agreed upon below, tacitly if not expressly, as designed to elicit an advisory opinion. We decline the invitation to resolve an issue not properly before us. See, Wright, Law of Federal Courts, § 102; Labuy v. Howes Leather Company, 352 U.S. 249, 77 S.Ct. 309, 1 L.Ed.2d 290 (1957); Will v. United States, 389 U.S. 90, 88 S.Ct. 269, 19 L.Ed.2d 305 (1967).

We express no opinion concerning the “Proposed Order” other than to determine that its existence, and notation thereof on the docket of the District Court, does not clothe this Court with jurisdiction to entertain an interlocutory appeal not certified to us pursuant to 28 U.S.C. § 1292(b) or otherwise, and the Petition For Writ of Prohibition is denied.


author: PER CURIAM:

text:
    UNITED STATES of America and Ronald H. Eggleston, Revenue Agent, Petitioners-Appellees, v. Raymond J. THEEP, Respondent-Appellant. UNITED STATES of America and Ronald H. Eggleston, Revenue Agent, Petitioners-Appellees, v. Stanley STEINERT, Respondent-Appellant.
    Nos. 73-1163, 73-1195.
    United States Court of Appeals, Ninth Circuit.
    Sept. 3, 1974.

      Raymond J. Theep, in pro per.
    Stanley Steinert, in pro per.
    Grant W. Wiprud, Atty., Tax Div., U. S. Dept, of Justice (argued), Washington, D. C., for petitioners-appellees.
    Before MERRILL and KILKENNY, Circuit Judges, and CRARY, District Judge.

       Honorable E. Avery Crary, United States District Judge for the Central District of California, sitting by designation.

   OPINION

PER CURIAM:

The above entitled actions were consolidated for trial in the District Court. The appeal in each case involved the same issues of fact and law. The appellants appeared in propria persona in the District Court and in these appeals and have filed consolidated briefs on appeal.

Demand for refunds of income taxes allegedly overpaid for the year 1971 were made by the appellants, Theep for $124.57 and Steinert for $932.48. The refunds were denied and the Internal Revenue Service (IRS) issued and served on each appellant a summons to produce all bank records, and all other records pertaining to the information used in the preparation of their tax returns and the computation of tax as disclosed in their income tax returns relating to the years 1969, 1970 and 1971. Each appellant presented himself before the appellee, Revenue Agent Ronald H. Eggleston, at the appointed time, December 7, 1972, and place, with his records but refused to disclose them to the Revenue Agent or to testify as to the said records, claiming the information was protected by the unreasonable search and seizure provisions of the Fourth Amendment and their right not to incriminate themselves under the Fifth Amendment to the United States Constitution. The Government then petitioned the District Court for enforcement of the summons whereupon the appellants moved to dismiss the petition for enforcement and petitioned the Court for an injunction prohibiting the appellee Eggleston from issuing any further “abusive” process. As part of their petitions for injunction, Theep asserted his 1971 tax was overpaid by $124.57 and appellant Steinert claimed overpayment of his 1971 tax in the sum of $932.48. It is to be noted that the 1969 deficiency was determined by the IRS from the information at hand before the running of the statute of limitations.

The Government, at the hearing on December 7, 1972, conceded that there might be specific answers or documents which were protected by the Constitution but objected to the blanket refusal by .the taxpayers to disclose their records.

In the circumstances the Government summons enforcement proceedings were not barred by Title 26, U.S.C. § 6213(a), because of the refusal of the IRS to make the 1971 refunds claimed by the taxpayers. The Government was investigating the appellant’s tax returns, not seeking to assess or collect unpaid taxes. No showing of probable cause is required for this investigation or enforcement of summonses. The summonses were properly issued for the purpose of determining whether any deficiency existed for the pertinent years.

Although the appellants could not avoid the summonses by a blanket claim of privilege under the Fourth and Fifth Amendments, neither is the Government entitled to have the records produced by the appellants turned over to it in toto for its examination. As stated by this Court in United States v. Bell, 448 F.2d 40, at 42 (1971), the law recognizes that a taxpayer must appear for questioning, and as to each question asked or document sought by the Government may decide whether to raise the Fifth Amendment privilege.

It does not appear that Agent Eggles-ton made the specific inquiries required to afford the appellants the opportunity to make appropriate objection to the production of separate documents or records sought by the Government for inspection.

The unlawful search and seizure provisions of the Fourth Amendment do not protect the taxpayer from an IRS summons in an investigation proceeding of the nature involved in the instant case once the Fifth Amendment is satisfied. Donaldson v. United States, 400 U.S. 517, at 522, 91 S.Ct. 534, 27 L.Ed. 2d 580 (1971); and United States v. Ahmanson, 415 F.2d 785, 787 (9th Cir. 1969).

The order of enforcement of the District Court is affirmed and the case is remanded for further proceedings to be conducted in accordance with this opinion.