author: THORNBERRY, Circuit Judge:

text:
    Peter J. BRENNAN, Secretary of Labor, United States Department of Labor, Plaintiff-Appellee, v. VETERANS CLEANING SERVICE, INC., et al., Defendants-Appellants.
    No. 72-3628.
    United States Court of Appeals, Fifth Circuit.
    Aug. 16, 1973.

      Jere D. McWinn, Jacksonville, Fla., for defendants-appellants.
    Beverley R. Worrell, Regional Sol., Anthony B. Cuviello, Atty., U. S. Dept, of Labor, Atlanta, Ga., Carin Ann Clauss, Donald S. Shire, Richard F. Schubert, Sol., Jacob I. Karro, U. S. Dept, of Labor, Washington, D.C., for plaintiff-ap-pellee.
    Before GEWIN, THORNBERRY and SIMPSON, Circuit Judges.
   THORNBERRY, Circuit Judge:

The Secretary of Labor brought suit under the Fair Labor Standards Act of 1938, 29 U.S.C.A. § 201 et seq., against Bernard Ettlinger, Veterans Cleaning Service, Inc., Rent-A-Maid, Inc., and Roto Rooter Service of Duval County, Inc. to enjoin them from violating the minimum wage and overtime provisions of the Act and from continuing to withhold payment of minimum wage and overtime compensation due for services performed since February 1, 1969. The district court, sitting without a jury, held for the Secretary and granted the relief sought, 351 F.Supp. 741. Defendants appeal from the judgment entered below arguing (1) that they do not constitute a single enterprise and are therefore not covered by the Act for most of the years in question, and (2) that the district court erred in holding that Amos Jones, a Veterans Cleaning employee, was not paid minimum wage because of certain deductions from his paycheck which reduced the net amount he received below the statutory minimum. We affirm as to coverage and affirm with a modification as to the method for computing Jones’ wages for purposes of ascertaining whether he received minimum wage under the Act.

I. Coverage

Defendant Bernard Ettlinger is owner and president of Veterans Cleaning and Roto Rooter and is secretary of Rent-A-Maid, which is owned principally by his son. He is operating manager of all three defendant corporations. The corporate defendants have common central office facilities at a single location, and central office functions, such as bookkeeping, billing, and ordering, are performed by common employees. All supplies and equipment used in defendants’ activities are stored and maintained in a common storage area. Maintenance and repair work on defendants’ motor vehicles is performed by a common employee in a common service area.

The district court described the business of each corporate defendant as follows :

Veterans Cleaning is an industrial-commercial janitorial, window washing and maintenance firm. While its services are performed primarily on a contract basis for and in offices and places of business, it does, on occasion perform such services in and at private residences. Such services consist of dusting, sweeping and waxing floors, cleaning restrooms, vacuuming and shampooing rugs, shampooing furniture, taking out trash, etc. Employees are transported to and from their particular jobs, along with all necessary equipment and supplies in trucks belonging to Veterans Cleaning.
Rent-A-Maid furnishes maids primarily to private residences, for one, two or more days on a “customer need” basis. The company furnishes merely a maid in uniform. All cleaning equipment, supplies and materials are furnished by the individual householder. The maids are transported to and from their particular jobs in trucks belonging to Veterans Cleaning or in the private automobiles of defendant Ettlinger or his son.
Roto Rooter is a sewer and septic tank cleaning and maintenance service. This service is provided to customers who call in to have their sewers, sinks, commodes, tubs, floor drains or septic tanks (including drain fields) unclogged, cleaned and maintained. Employees and equipment are transported to and from the particular job in trucks belonging to Roto Rooter, [citations to trial transcript omitted.]

Although the corporations have separate equipment, the trucks of Veterans Cleaning and Roto Rooter are sometimes interchanged “on an emergency basis.” The employees of the three corporations are generally separate both as a bookkeeping matter and in the work they do, but some employee witnesses testified that they regularly changed employment among the three companies. To some extent the three companies are held out to the public as related; on Veterans Cleaning’s letterhead business stationery a bold line runs from the words “General Cleaning Contractors” in large print at the top of the page to a list of six “cleaning” businesses, which includes Roto Rooter and Rent-A-Maid.

Whether the defendants are covered by the Fair Labor Standards Act depends on whether they are an “enterprise engaged in commerce or in the production of goods for commerce.” 29 U.S.C.A. § 206(a). That term is defined in pertinent part as

an enterprise which has employees engaged in commerce or in the production of goods for commerce, including employees handling, selling, or otherwise working on goods that have been moved in or produced for commerce by any person, and which—
(1) . . . beginning February 1, 1969 is an enterprise whose annual gross volume of sales made or business done is not less than $250,000 (exclusive of excise taxes at the retail level which are separately stated).

29 U.S.C.A. § 203(s). It is undisputed that all defendants have been engaged in commerce at all times relevant to this action. Further, it is not contested that Veterans Cleaning had a gross annual volume in excess of $250,000 in 1969, and that Roto Rooter had a gross annual volume over that amount in 1971, so that considered as separate enterprises those two defendants were covered by the Act in those years, respectively, regardless of coverage of the other defendants. See Brennan v. Hatton, 5th Cir. 1973, 474 F.2d 9. The disputed issue is whether all defendants — the three corporations and Ettlinger as principal owner and manager — must be grouped together and considered to be a single “enterprise” under the Act. Defendants’ aggregate gross annual volume has exceeded $250,000 since before 1969, so that if they are considered a single enterprise, they are all covered by the Act, including the minimum wage and overtime provisions, and have been covered since February 1, 1969.

“Enterprise” is defined in the Act as

the related activities performed (either through unified operation or common control) by any person or persons for a common business purpose, and includes all such activities whether performed in one or more establishments or by one or more corporate or other organizational units. . . .

29 U.S.C.A. § 203(r). Thus, three elements must coexist if defendants are to be considered a single enterprise: (1) related activities, (2) unified operation or common control, and (3) a common business purpose. See Brennan v. Arnheim and Neely, Inc., 1973, 410 U.S. 512, 93 S.Ct. 1138, 35 L.Ed.2d 463; Wirtz v. Savannah Bank and Trust Co., 5th Cir. 1966, 362 F.2d 857, 859. Appellants admit as they clearly must, that the element of common control is present in this case, but they deny that the activities of the three corporations are “related activities . . . for a common business purpose.”

The legislative history of the Fair Labor Standards Act sheds light on the meaning of the word “related” in § 203 (r). The Report of the Senate Committee on Labor and Welfare, Senate Report No. 145, 87th Cong. 1st Sess. 31 (1961) U.S.Code Cong. & Admin.News, p. 1660 [hereinafter Senate Report No. 145], explains:

Within the meaning of this term, activities are “related” when they are the same or similar such as those of the individual retail or service stores in a chain, or departments of an establishment operated through leasing arrangements. They are also “related” when they are auxiliary and service activities such as central office and warehousing activities and bookkeeping, auditing, purchasing, advertising, and other services. Likewise, activities are “related” when they are part of a vertical structure such as the manufacturing, warehousing, and retailing of a particular product or products under unified operation or common control for a common business purpose. [Emphasis added.]

Thus, the three “related” concepts indicated in the Senate Report are: “same or similar,” “auxiliary and service activities,” and “part of a vertical structure.” In finding the activities of the defendants to be “related” the district court relied primarily on the “auxiliary and service activities” concept, as developed in Wirtz v. Savannah Bank and Trust Co., supra.

We agree that the day to day operations of the three corporate defendants and the unified public image they present are such that they must be considered “auxiliary and service activities” under the Act. As examples of such activities Senate Report No. 145 U.S.Code Cong. & Admin.News, p. 1660 lists “central office and warehousing activities and bookkeeping, auditing, purchasing, [and] advertising.” An “insurance company which existed for the purpose of serving the needs and convenience of customers who purchased cars from the automobile company” was held to constitute an auxiliary or service activity to a new car sales business in Hodgson v. Harvey Motor Co., 20 Wage & Hour Cas. 493, 68 CCH Lab Cas. ff 32,667 (1971), aff’d per curiam, 5th Cir. 1972, 461 F.2d 847. The same ease, however, held sale of automobiles and sale of farm implements not to be auxiliary and related when “[t]he only common aspects of [their] operations were the single office in which their separate books were kept, the single bookkeeper in charge of their accounts, and several customers who did business with both companies.” In Wirtz v. Savannah Bank and Trust Co., supra 362 F.2d at 861, the renting out of office space in a bank’s building was held auxiliary to the banking business in the same building where it was shown that the operation of the office building enabled the bank “to locate in a desirable downtown area, to provide space for future expansion, to improve the Bank’s profit position, both from- the standpoint of revenue and taxes, and to strengthen the image of the Bank in the public eye.” See also Wirtz v. Columbian Mutual Life Insurance Co., 6th Cir. 1967, 380 F.2d 903; Wirtz v. First National Bank and Trust Co., 10th Cir. 1966, 365 F.2d 641. The basis for this holding was not that the operation of an office building was an activity which by its nature aided the banking business, but that the maintenance and rental of office space in the same building with the bank afforded the bank, as a practical and factual matter, substantial advantages in the operation of its primary business of banking. Thus, the Savannah Bank and Trust Company case focused on operational interdependence in fact, and - not only on the primary activities of the businesses.

In this case the Secretary has shown such interdependence beyond a mere sharing of common office and storage space. First, as demonstrated by the listing of Roto Rooter and Rent-A-Maid on Veterans Cleaning’s business stationery under the heading “General Cleaning Contractors,” the three defendants áre held out to the public as part of a single larger “cleaning” business. The operation of each is used to enhance the public image of the others. Second, the vehicles of Roto Rooter and Veterans Cleaning are interchanged when the need arises, and Veterans Cleaning trucks are sometimes used to transport Rent-A-Maid employees to and from-job locations. Thirdly, the employees of the three companies are interchanged with some regularity on a day to day basis. One employee witness testified that although he always received his paycheck from Veterans Cleaning, he frequently worked for Rent-A-Maid and Roto Rooter. On arrival at work in the morning he might be told, for example, “Today you’re going to be on Roto Rooter.” In view of the high degree of interdependence shown between the three corporations in their day to day operations and in the public image that they sought to create, we think the conclusion is inescapable that the defendants’ businesses are auxiliary to each other. See Wirtz v. Savannah Bank and Trust Co., supra; Wirtz v. First National Bank and Trust Co., supra.

The “common business purpose” requirement is not defined in the Act. Senate Report No. 145, U.S.Code Cong. & Admin.News, p. 1660 explains that “ [e] leemosynary, religious, or educational and similar activities of organizations which are not operated for profit . . . are not activities performed for a common business purpose.” More than a common goal to make a profit, however, must be shown to satisfy the requirement. Wirtz v. Columbian Mutual Life Insurance Co., supra 380 F.2d at 907. Many of the considerations relevant in determining whether businesses perform “auxiliary or service activities” are also relevant in ascertaining whether they have a common business purpose. Wirtz v. Savannah Bank and Trust Co., supra 362 F.2d at 861. In view of the interdependence of the corporate defendants shown by the Secretary we are satisfied that the facts of this case demonstrate such a purpose. Cf. Brennan v. Arnheim and Neely, Inc., supra.

Concluding that defendants perform related activities under common control for a common business purpose, we affirm the district court’s holding that each defendant is part of a single enterprise which has been covered by the Fair Labor Standards Act since February 1, 1969.

II. Calculation of Jones’ Wages

Defendant Ettlinger deducted from the weekly paychecks of Amos Jones, a Veterans Cleaning employee, a total of $1661.60 during the period from February 5, 1969 through February 11, 1970, so that the net amount Jones actually received during this period fell below minimum wage by $1960.33. . The district court held this latter amount to be due to him from his employer. Appellants contend that since Jones received the benefit of the amounts deducted these amounts should be counted as part of his wages.

The record reflects that the deductions, which were not segregated on the company’s books, were made for at least four different purposes. The first purpose was to repay to the employer advances, or “draws”, made to Jones before the regular Friday payday. Deductions were also made to repay certain amounts expended by Veterans Cleaning in connection with a traffic accident in which Jones was involved. Defendant Ettlinger’s testimony indicated that Jones had, while driving a company truck in an intoxicated state, destroyed the truck and an automobile belonging to a third party. Following the accident criminal charges, including driving while intoxicated and leaving the scene of an accident, were brought against Jones, and he was eventually fined $300, prompt payment of which, was, according to Ettlinger, necessary for his speedy release from jail. Veterans Cleaning paid the fine at Jones’ request, and spent the amount necessary to replace its truck and to compensate the third party for the loss of his automobile. Deductions were made to repay the company for these three types of expenditures pursuant to an assignment of wages executed by Jones, in which he agreed to weekly deductions of $15 until repayment was made in full.

The district court viewed the deductions for repayment of advances as proper but considered the other deductions to be improper. Since amounts of the various deductions could not be figured from company books — which listed all deductions under the heading “Miscellaneous Deductions” — the court treated all deductions as improper.

In ascertaining the permissibility of the various deductions to the extent that they reduced Jones’ net pay below minimum wage, we must recognize that Congress’ declared purpose in enacting the Fair Labor Standards Act was to correct “conditions detrimental to the maintenance of the minimum standard of living necessary for health, efficiency, and general well-being of workers.” 29 U.S.C.A. § 202(a). The minimum wage provisions are intended to enable those dependent on employment by others for livelihood to maintain the minimum standard of living referred to in the Act. See Brooklyn Bank v. O’Neil, 1945, 324 U.S. 697, 706-707, 65 S.Ct. 895, 902, 89 L.Ed. 1296.

To this end, the minimum wage required must normally be paid- “free and clear”:

Whether in cash or in facilities, “wages” cannot be considered to have been paid by the employer and received by the employee unless they are paid finally and unconditionally or “free and clear.” The wage requirements of the Act will not be met where the employee “kicks-back” directly or indirectly to the employer or another person for the employer’s benefit the whole or part of the wage delivered to the employee.

29 C.F.R. § 531.35.

The only statutory exception to the requirement that wages be paid free and clear appears in 29 U.S.C.A. § 203 (m), which allows the employer to count as wages “the reasonable cost . . . to the employer of furnishing such employee with board, lodging, or other facilities, if such board, lodging, or other facilities are customarily furnished by such employer to his employees.” One other exception has been judicially recognized; repayment to the employer of amounts misappropriated by the employee may be made by means of paycheck deductions, even where they reduce the net pay to the employee below minimum wage. See Mayhue’s Super Liquor Stores, Inc. v. Hodgson, 5th Cir. 1972, 464 F.2d 1196, cert. denied 409 U.S. 1108, 93 S.Ct. 908, 34 L.Ed.2d 688. In such cases the employee has actually taken the money free and clear and had the use of it. “In such a case there would be no violation of the ‘Act’ because the employee has taken more than the amount of his wage and the return could in no way reduce his wage below the minimum.” Id. at 1198. The Act was not intended to protect employees against return of amounts wrongfully taken.

We agree with the district court that a similar rule should obtain for repayment by paycheck deductions of free and clear advances to employees, for the Act does not require inflexibility in the timing of the payment of wages or seek to discourage loans to employees. Unlike the district court, we think this loan-repayment principle should likewise apply to deductions to pay third-party creditors of the employee at the employee’s direction and with his consent, or to recoup such amounts already paid out, when the employee has consented to the arrangement. When an employer has paid a third party at the employee’s request, the employee has had the use of the money for a purpose of his choosing, perhaps for some emergency. Although the transaction is complicated slightly by the involvement of a third party, the payment by the employer to the third party is equivalent to a loan to the employee, or an advance against his salary. Accordingly, deductions to recoup the outlay must be counted as wages. Under this rule, the deductions to recoup amounts expended to pay Jones’ fine and to compensate the owner of the automobile damaged in the traffic accident were permissible and should be counted as wages to the extent their amounts can be ascertained.

A debt allegedly owed by the employee directly to the employer which arises out of a non-loan transaction is subject to different considerations. Jones’ destruction of the truck did not involve the supplying of board, lodging, or other facilities to him and did not net him any free and clear payment. The deductions from his paycheck to pay for the truck reduced his net wage below the statutory minimum wage. They impaired his ability to maintain the minimum standard of living contemplated by the Act and thus circumvented the protection sought to be afforded him by the Act. It is true that an employee may have a bona fide undisputed debt to his employer, not arising out of a loan transaction, and that repayment of the debt by means of paycheck deductions represents a benefit to the employee, but we do not believe that this type of benefit is the free and clear minimum payment required by the Act as wages. Nor may the otherwise impermissible deductions be authorized by a “voluntary” assignment of wages by the employee. It has long been recognized that the protection afforded by the Fair Labor Standards Act may not be waived by agreement between employer and employee. Brooklyn Bank v. O’Neil, 1945, 324 U.S. 697, 65 S.Ct. 895, 89 L.Ed. 1296. If the deduction were made at the employee’s direction for the purpose of paying another creditor besides the employer, it might properly be considered part of his wages, but the employer-employee relationship brings into play special considerations, including the superi- or bargaining position of the employer. The voluntariness of an assignment of wages to the employer is inherently suspect. When the employer is the creditor, payment may not be made by paycheck deductions which reduce net pay below minimum wage, even where the employee apparently consents to such an arrangement. Accordingly, we hold the deductions to repay the employer for the damage to the truck were impermissible.

The Secretary’s regulations under the Act are in accord with this view:

Where an employer is directed by a voluntary assignment or order of his employee to pay a sum for the benefit of the employee to a creditor, donee, or other third party, deductions from wages of the actual sum so paid is not prohibited: Provided, That neither the employer or any person acting in his behalf or interest, directly or indirectly, derives any profit or benefit from the transaction. In such case, payment to the third person for the benefit and credit of the employee will be considered equivalent, for purposes of the Act, to payment to the employee.

29 C.F.R. § 531.40(a). The quoted portion of the regulation permits deductions at the direction of the employee to pay a third party, but only where the employer does not benefit from the transaction. Since the employer clearly does benefit from deductions made to satisfy a debt owed to him, such deductions are prohibited to the extent they cut into the employee’s minimum wage.

The district court correctly imposed on the employer the burden of segregating permissible deductions from impermissible ones. The Secretary’s regulations require the employer to keep records reflecting “the dates, amounts, and nature of the items which make up the total additions and deductions.” 29 C.F.R. § 516.2(a)(10). The employer in this case failed to keep such records and listed all deductions indiscriminately under the heading “miscellaneous deductions.” Since some of the deductions— specifically, those to recoup the amount spent to replace the Veterans Cleaning truck destroyed by Jones — were shown to be invalid, the district court properly treated all deductions as invalid which could not be segregated from the truck deductions. Cf. Shultz v. Hinajosa, 5th Cir. 1970, 432 F.2d 259, 261. Thus, even though deductions to recoup advances made to Jones before the regular pay days and to recover the amount spent to pay for damages caused by Jones to the automobile of a third party were valid as a matter of principle, they could not be credited as wages in this case because the amounts of these deductions could not be separately shown. They were commingled with the invalid truck deductions. Defendant Ettlinger’s testimony regarding payment of the $300 fine, however, adequately segregated this amount from the remainder of the deductions, and this $300 should therefore have been counted as wages. The judgment of the district court must accordingly be modified to show the amount due Jones from Veterans Cleaning to be $1660.33 rather than $1960.33.

The Judgment of the district court is modified and, as modified, affirmed.

      . The district court found the following annual gross volumes for the years indicated :

        1968 1969 1970 1971

      Veterans
      Cleaning Service $265,636.38 $293,337.98 $241,609.16 $208,612.26
      Rent-A-Maid 12,468.05 16,516.20 9,793.10
      Roto Rooter
      Sewer
      Service 109,230.77 156,433.50 230,187.46 310,758.59
      Totals — $374,867.15 $462,239.53 $488,312.82 $529,163.95

      . U.S.Code Cong. & Admin.News, p. 1620 (1961).

      . An example of a business which would aid a banking business by the nature of the activity it conducted would be an advertising agency which solicited customers for the bank. The advertising agency would be an “auxiliary” or “service” activity regardless of whether it were located in the bank’s office building or were connected to the bank’s day to day operations by some link other than advertising.

      . The central portion of defendant Ett-linger’s testimony relating to the events referred to in the text was:
      We have one other employee by the name of Amos Jones, window cleaner, who took a truck from the office, proceeded to get drunk, wrecked the truck, wrecked the car, left the scene, was arrested for drunk, leaving the scene of an accident, causing an accident, causing a second accident, where we paid for our truck, paid Parrish Motors for replacing the vehicle he wrecked, paid a $300.00 fine and I can go on and on, and of course he then turned around and gave me an assignment when his wife came and cried that he was going to be in jail forever and they’d starve to death, so I paid his fine, got him out of jail and was trying to get my money back a little along and along, ten or fifteen dollars a week plus whatever he would manage to wheedle out of me on draw day as an advance on wages.

      . The pertinent portion of the district court’s opinion reads:
      Since there is no identification or segregation on defendants’ records distinguishing wliat might be valid deductions, such as payroll advances made within a workweek, from improper deductions, such as for truck repairs, police fines and failure to perform penalties that reduced wages below statutory mínimums, all deductions must be treated as improper in instances where they caused weekly wages to fall below statutory minimum wages or overtime rates.


source: Caselaw Access Project

author: CHOY, Circuit Judge:

license: Public Domain

text:
    UNITED STATES of America, Plaintiff-Appellee, v. Douglas Earl SAVAGE, Defendant-Appellant.
    No. 72-3145.
    United States Court of Appeals, Ninth Circuit.
    Aug. 8, 1973.
    Rehearing Denied Sept. 5, 1973.
    Charles Robinowitz (argued), Portland, Or., for defendant-appellant.
    Tommy Hawk; Asst. U. S. Atty. (argued, Sidney I. Lezak, U. S. Atty., Portland, Or., for plaintiff-appellee.

      Before HUFSTEDLER and CHOY, Circuit Judges, and TAYLOR, District Judge.

       The Honorable Fred M. Taylor, United States District Judge for the District of Idaho, sitting by designation.

   CHOY, Circuit Judge:

Douglas Earl Savage was convicted after a jury trial of bank robbery and using a firearm to commit a felony in violation of 18 U.S.C. §§ 2113(a), 924(c). He was sentenced to fifteen year and five year terms to run concurrently. We affirm.

In April 1971, two men, wearing masks and brandishing firearms, entered a federally-insured bank in a small Oregon town, took about $29,000 and escaped in a 1969 Dodge station wagon. The key government witness, Margaret Casebeer, was the wife of one of the robbers. After charges against her were reduced, Mrs. Casebeer testified that she made the masks for Savage and her husband, was present when plans were discussed, and waited for the two men outside of town while the robbery took place. Mrs. Casebeer was also present when Savage discussed the robbery the next day. There was an abundance of corroborative evidence presented by the prosecution, including an admission by Savage to his mother that he had robbed the bank.

After his arrest and while he was in custody, Savage wrote a letter to Ronald Casebeer who was then confined in the federal penitentiary at .McNeil Island. The letter was intercepted by a prison security officer who made a photocopy of the original before forwarding it to Casebeer. The letter contained the ingredients of an alibi by Savage, attempting to shift the blame for the robbery to one Mayberry, and detailing Savage’s actions at the time of the robbery and subsequently.

At trial, a copy of the letter from Savage to Casebeer was introduced as evidence. The security officer testified that the letter had been copied exactly and Casebeer’s testimony from a previous trial indicated that the original had been • destroyed. Under these circumstances, the copy was held admissible.

Savage makes three contentions on this appeal: (1) that the photocopy of his letter to Casebeer was improperly admitted into evidence; (2) that his fourth amendment rights were violated when the letter was intercepted and photocopied by the prison security officer; and (3) failure to record the proceedings before the grand jury requires reversal.

To prove the terms of a writing, the original writing must be produced unless it is shown to be unavailable for some reason other than the fault of the proponent. The loss or destruction of an original writing is a longstanding basis for asserting unavailability. C. McCormick, Law of Evidence § 201 at 413 (1954); 4 J. Wigmore, On Evidence § 1193-98 (1972). See also Proposed Rules of Evidence for the U. S. District Courts and Magistrates, Rule 1004(1). Savage’s first contention fails since there was proof that the original was destroyed and the security guard testified that the copy was an exact reproduction.

Savage was in custody when he wrote his letter to Casebeer. He argues that opening and copying the letter was an unconstitutional invasion of his privacy. Individuals do not forfeit all their constitutional rights when they are taken into custody. A prisoner is entitled to the fourth amendment’s protection from unreasonable searches and seizures. Burns v. Wilkinson, 333 F.Supp. 94, 96 (W.D.Mo.1971); Palmigiano v. Travisono, 317 F.Supp. 776, 791 (D.R.I.1970). But under the standard enunciated in Katz v. United States, 389 U.S. 347, 88 S.Ct. 507, 19 L.Ed.2d 576 (1967), what society recognizes as a reasonable expectation of privacy is restricted when the individual asserting the expectation is incarcerated or in custody.

The view that prison authorities may examine the communications of a prisoner without infringing upon his constitutional rights has recently come under fire on both first and -.fourth amendment grounds. A three-judge court in Martinez v. Procunier, 354 F.Supp. 1092 (N.D.Calif.1973), prob. jur. noted, - U.S. -, 93 S.Ct. 3013, 37 L.Ed.2d 1000 (1973), held that a prisoner’s right to correspond was a fundamental right protected by the first amendment. The State of California’s regulations, which permitted the reading of incoming and outgoing mail, were held violative of the first amendment because they were not both reasonably and necessarily related to the advancement of some justifiable purpose of imprisonment or prison security. A similar practice was condemned on both first and fourth amendment grounds in Palmigiano, supra. We think that absent a showing of some justifiable purpose of imprisonment or prison security the interception and photocopying of the letter was violative of the fourth amendment and the letter should have been excluded as evidence. Here no such showing was made.

Despite the failure to exclude the letter, Savage’s conviction must stand. There was overwhelming evidence of Savage’s guilt and the illegally admitted evidence did not contribute to his conviction. Milton v. Wainwright, 407 U.S. 371, 92 S.Ct. 2174, 33 L.Ed.2d 1 (1972); Chapman v. California, 386 U.S. 18, 87 S.Ct. 824, 17 L.Ed.2d 705 (1967). Hence, the constitutional error was harmless beyond a reasonable doubt. Nor did the admission of the letter prejudice Savage since the contents were directed at exculpating him and did not contain any self-incriminatory statements.

We held in United States v. Price, 474 F.2d 1223 (9th Cir. 1973) that upon a proper motion, failure to record grand jury proceedings absent a showing of a compelling government interest to be served by nonrecordation is an abuse of discretion by the district court. In the instant case, however, no request for recordation was made.

Affirmed.

      . The principal authority for this view is found in Stroud v. United States, 251 U.S. 15 (1919) and United States v. Wilson, 447 F.2d 1, 8 (9th Cir. 1971). Other circuits have expressed similar views. See Denson v. United States, 424 F.2d 329 (10th Cir. 1970), and cases cited therein Those decisions hold that prison discipline or security justify the examination of a prisoner’s communications. To that extent we are in complete agreement but add the proviso that justification must be demonstrated.

      . See also Dreyer v. Jalet, 349 F.Supp. 452, 483 (S.D.Tex.1972); Lamar v. Kern, 349 F.Supp. 222, 225 (S.D.Tex.1972); Guajardo v. McAdams, 349 F.Supp. 211, 219 (S.D.Tex.1972).


author: PER CURIAM:

text:
    Dahlgrin G. LOWE, Plaintiff-Appellee, v. Robert W. O’MEARA, et al., Defendants-Third Party Plaintiffs-Appellees-Appellants, v. MARKET INSURANCE COMPANY, Defendant-Third Party Defendant-Appellant.
    No. 73-1259
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    July 25, 1973.

      William A. Porteous, III, George W. Healy, III, New Orleans, La., for Market Ins. Co.
    Donald V. Organ, New Orleans, La., for Dahlgrin G. Lowe.
    Wood Brown, III, New Orleans, La., for Robert W. O’Meara & Emp. of Wau-sau.
    Charles E. Lugenbuhl, New Orleans, La., for Robert W. O’Meara.
    Robert B. Deane, New Orleans, La., for Harbor Ins.
    Before THORNBERRY, GOLDBERG and RONEY, Circuit Judges.

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

   PER CURIAM:

Dahlgrin G. Lowe brought this action for personal injuries against defendant-employer Robert W. O’Meara and his insurers under the general maritime law and the Jones Act, 46 U.S.C.A. § 688. The jury, returning a verdict in plaintiff's favor, through special interrogatories, awarded damages in the amount of $100,000. The District Court on summary judgment apportioned part of the loss against Market Insurance Company. On appeal, the District Court’s disposition of Market’s claim of cancellation of its policy, certain prejudicial remarks, and the amount of the judgment are challenged. We affirm.

Market admittedly had issued an excess liability insurance policy which would cover this particular loss, but that policy, a Louisiana contract, provided for cancellation by the insurer upon ten days written notice to the insured. Upon Market’s decision to cancel the policy for nonpayment of premiums, notice of cancellation, reciting that it was to be effective at 12:01 A.M., September 3, 1970, was mailed to O’Meara on August 24, 1970. O’Meara was billed by Market for the period to September 3, 1970, and promptly submitted payment. The accident from which this litigation stems occurred about 6:30 P.M. on September 3, 1970.

We agree with the trial court that the required ten-day notice period had not passed and the policy had not yet been cancelled. Under Louisiana law, the day of mailing cannot be counted. See Housing Auth. v. Miller, 239 La. 966, 120 So.2d 494 (1960); Brocato v. T. S. C. Motor Freight Lines, 22 So.2d 480 (La.App.1945); Art. 2059, Louisiana Civil Code; Art. 5059, Louisiana Code of Civil Procedure. Thus, cancellation of the policy would not have been effective until September 4. Although Market’s notice stated that cancellation would be effective at 12:01 A.M., September 3, 1970, this is of no effect because it would have resulted in a notice period shorter than that required by the policy itself. Moreover, this attempt to cancel at the beginning of the day conflicts with the Louisiana law which provides that, in computation of time, only whole days, not fractions thereof, are considered. McIntire v. Carpenter, 202 So.2d 297 (La.App.1967); Housing Auth. v. Miller, supra.

The trial court did not err in refusing a new trial on the basis of the remarks during the voir dire examination or because of the alleged excessiveness of the verdict.

Affirmed.


author: PER CURIAM.

text:
    Deborah DRUDGE, Esq., Plaintiff, v. Richard S. McKERNON, County Attorney for Montgomery County, Maryland, et al., Defendants.
    No. 73-8071.
    United States Court of Appeals, Fourth Circuit.
    Submitted Aug. 20, 1973.
    Decided Sept. 10, 1973.
    Before WINTER, BUTZNER and RUSSELL, Circuit Judges.
   PER CURIAM.

Plaintiff, who claims that she was improperly denied employment in the Law Department of Montgomery County because she is a woman, appeals from the denial of her application for a temporary restraining order in which she sought either that she be employed forthwith or that defendants be restrained from filling the vacant position in the office for which she had applied. Plaintiff has moved for summary reversal of the district court’s denial of relief and for an expedited hearing of this appeal. We think that the motion should be denied and, indeed, that plaintiff’s appeal should be dismissed.

We have been cited to no authority, and we are aware of none, that, as a general rule, the granting or denial of a motion for a temporary restraining order is an appealable order. The authorities cited by plaintiff, where review of action on a request for a temporary restraining order was afforded, all arose from exceptional circumstances not present here, and in our view they constitute no authority for entertaining her appeal. Because we are persuaded that we lack jurisdiction in the premises, plaintiff’s motion is denied and her appeal is

Dismissed.


text:
    UNITED STATES of America, Appellee, v. Eddie Lee TAYLOR, Appellant.
    No. 72-2334.
    United States Court of Appeals, Fourth Circuit.
    Submitted July 30, 1973.
    Decided Aug. 29, 1973.
    Walter W. Stout, III, Richmond, Va., on brief, for appellant.
    Brian P. Gettings, U. S. Atty., and Edwin J. Gale, Sp. Asst. U. S. Atty., on brief for appellee.
    Before WINTER, CRAVEN and BUTZNER, Circuit Judges.
   PER CURIAM:

Eddie Lee Taylor appeals from his conviction, on a plea of not guilty, after a trial by jury, of receiving, retaining and concealing stolen United States Postal Money Orders in violation of 18 U.S.C. § 641. Taylor complains that the government’s evidence against him was insufficient to support the jury’s finding of guilty. We find no merit in this contention and therefore affirm.

The standard in this Circuit is that a guilty verdict “must be sustained if there is substantial evidence, taking the view most favorable to the government, to support the findings of guilt.” United States v. Sherman, 421 F.2d 198, 199 (4 Cir. 1970). Contrary to Taylor’s belief, it is also well settled in this Circuit that circumstantial “evidence may support a verdict of guilty, even though it does not exclude every reasonable hypothesis consistent with innocence.” United States v. Chappell, 353 F.2d 83, 84 (4 Cir. 1965).

Applying these standards, we cannot agree that the evidence, although circumstantial, was insufficient to sustain Taylor’s conviction. An examination of the transcript of the trial indicates that there was substantial evidence from which the jury could have found that Taylor had possession of stolen money orders, knew that they were stolen and intended to convert them to his own use. We therefore find that this evidence established an evidentiary basis from which the jury could have concluded that the government had carried its burden of proof of all essential elements of the crime charged in the indictment.

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

Affirmed.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. Abdul Lateef ISUMAN, Defendant-Appellant.
    No. 73-1879
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    Sept. 11, 1973.
    Jack V. Eskenazi, court-appointed, Federal Public Defender, Miami, Fla., Michael Doddo, Miami, Fla., for defendant-appellant.
    Robert W. Rust, U. S. Atty., Robert C. Byrne, Asst. U. S. Atty., Miami, Fla., for plaintiff-appellee.
    Before WISDOM, AINSWORTH and CLARK, Circuit Judges.

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

   PER CURIAM:

Appellant Isuman was convicted by a jury of importing six and one-half pounds of marijuana in violation of 21 U.S.C. § 952(a). He was fined $500 and sentenced to imprisonment of ten months with a two-year special parole.

Appellant did not surrender on the date set for execution of the sentence and is presently a fugitive. Under these circumstances, we decline to adjudicate the merits of this case. This appeal is dismissed. Molinaro v. New Jersey, 396 U.S. 365, 90 S.Ct. 498, 24 L.Ed.2d 586 (1970).

Appeal dismissed.


text:
    Jerry Lee IRBY, Petitioner-Appellant, v. STATE OF ALABAMA, Respondent-Appellee.
    No. 73-2768.
    United States Court of Appeals, Fifth Circuit.
    Aug. 3, 1973.
    Joseph G. L. Marston, III, Asst. Atty. Gen., Montgomery, Ala., for respondent-appellee.
    Before BELL, GODBOLD and IN-GRAHAM, Circuit Judges.
   PER CURIAM:

The petition for a certificate of probable cause and leave to appeal in forma pauperis is granted and the appeal is ordered docketed. The decision of the District Court denying habeas corpus relief on grounds that petitioner (who pleaded guilty) was convicted without the presence of a jury and denied trial by jury and sentenced without a jury verdict is affirmed. Dismissal, for failure to exhaust state remedies, of the claim based on alleged denial of a three-day delay between verdict and sentence is affirmed. Denial of relief on the claim of a coerced plea of guilty is vacated, it appearing to the court that this is an issue which cannot be determined from the face of the record and thus was not determined on petitioner’s state appeal and could not be determined in the habeas proceeding without an evidentiary hearing. With respect to this claim exhaustion of state remedies is required.

      . It is appropriate to dispose of this case summarily. See Groendyke Transport., Inc. v. Davis, 5 Cir., 1969, 406 F.2d 1158.


text:
    UNITED STATES of America, Plaintiff-Appellee, v. Marvin MILLER et al., Defendants-Appellants.
    No. 71-1850.
    United States Court of Appeals, Ninth Circuit.
    Aug. 31, 1973.
    Harvey Giss (argued), Isman & Giss, Burton Marks, Marks, Sherman & Schwartz, Beverly Hills, Cal., for defendants-appellants.
    Brian J. O’Neill, Asst. U. S. Atty. (argued), Robert L. Meyer, U. S. Atty., David R. Nissen, Michael Heuer, Asst. U. S. Attys., Los Angeles, Cal., for plaintiff-appellee.
    Before CHAMBERS, KOELSCH and CARTER, Circuit Judges.
   ORDER

The Supreme Court, on June 26, 1973, vacated the judgment in the above case and remanded it to this court for reconsideration. --- U.S. -, 93 S.Ct. 3042, 37 L.Ed.2d 1023.

We reaffirm the convictions and adopt our previously reported opinion in 4 Cir., 455 F.2d 899, on the authority of Miller v. California,-U.S. -, 93 S.Ct. 2607, 37 L.Ed.2d 419 (1973), and United States v. 12 200-Ft. Reels of Super 8mm Film (No. 70-2), - U.S. —, 93 S.Ct. 2665, 37 L.Ed.2d 500 (1973).

The question of whether a local or a national standard should be applied in this federal prosecution under 18 U.S.C. § 1461 was not raised below or on appeal. Expert testimony was introduced by the Government to the effect that the content of the picture magazines and the books appealed to a prurient interest and that the books contained no social redeeming value. The testimony did not indicate whether it was based on a local or a national standard.

United States v. One Reel of Film (1 Cir. 1973) 481 F.2d 206, indicates that on a prosecution for forfeiture of obscene material under 19 U.S.C. § 1305(a), a national standard would be necessary, even though United States v. 12 200-Ft. Reels of Super 8mm Film, - U.S. - at -, 93 S.Ct. 2665 at 2670 (1973) states: “These standards [Miller v. United States, - U.S. -, 93 S.Ct. 2607, 37 L.Ed.2d 419 (1973)] are applicable to federal legislation.”

In view of Paris Adult Theatre I v. Slaton, — U.S. -, -, 93 S.Ct. 2628, 37 L.Ed.2d 446 (1973) which holds that expert testimony is not necessary, and the fact that the question was not raised below or on appeal in this case, and the fact that the material in each count is clearly obscene under either a local or a national standard, we do not reach the question here.

The convictions are reaffirmed.


text:
    Norman GRADSKY, Petitioner-Appellant, v. UNITED STATES of America, Respondent-Appellee.
    No. 73-2152.
    United States Court of Appeals, Fifth Circuit.
    Sept. 5, 1973.
    Norman Gradsky, pro se.
    Robert W. Rust, U. S. Atty., William R. Northcutt, Asst. U. S. Atty., Miami, Fla., for respondent-appellee.

      Before THORNBERRY, GOLDBERG and RONEY, Circuit Judges.
   PER CURIAM:

It is hereby ordered that this appeal is dismissed for want of jurisdiction since the judgment sought to be appealed is not final as to all of the appellant’s claims. See 28 U.S.C. §§ 1291, 1292; Rule 54(b), F.R.Civ.P.; Graham v. Cole, 5th Cir. 1973, 483 F.2d 255; Jones v. Riggsby, 5th Cir. 1973, 475 F.2d 760; United States v. Crow et al., 5th Cir. 1973, 474 F.2d 200.

Dismissed.

      . It is appropriate to dispose of this pro se case summarily, pursuant to this Court’s local Rule 9(e)(2), appellant having failed to file a brief within the time fixed by Rule 31, Federal Rules of Appellate Procedure. Kimbrough v. Beto, Director, 5th Cir. 1969, 412 F.2d 981.


author: BALDWIN, Judge.

text:
    Leonard V. TRIGGIANA, Appellant, v. Theodore A. GENS, Appellee.
    Patent Appeal No. 8949.
    United States Court of Customs and Patent Appeals.
    Sept. 13, 1973.
    Alvin Guttag, Fred S. Whisenhunt, William T. Bullinger, Washington, D. C. (Cushman, Darby & Cushman) Washington, D. C., for appellant. Joseph P. Nigon, Clarksville, Md., of counsel.
    Roland A. Anderson, Washington, D. C., for appellee. Robert M. Poteat, David S. Zachry, Irving Barrack, Oak Ridge, Tenn., John A. Horan, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   BALDWIN, Judge.

This appeal is from that part of the decision of the Board of Patent Interferences that awarded priority of invention as to counts 3 and 4 of interference No. 96,136 to the appellee Gens. Trig-giana is involved through his application serial No. 554,345, filed June 1, 1966. Gens, the junior party, is involved through application serial No. 578,428, filed September 8,1966.

The Invention

The invention is described as follows in appellant’s brief:

The invention is concerned with mi-crospheres which consist essentially of uranium mononitride and are useful as nuclear reactor fuels. The micro-spheres must have a density equal to at least 90% of their theoretical maximum density, and are prepared by drying a sol-gel of uranium dioxide and carbon to “green” or new micro-spheres and firing these green micro-spheres, under special conditions, in a nitrogen atmosphere to convert the uranium dioxide to uranium mononi-tride while giving off carbon monoxide.

As pointed out in his brief, appellee’s process for making the mononitride mi-crospheres involves:

a thermal cycling technique of reacting the U02-C mierospheres in nitrogen at 1600°C and thereafter thermally cycling the microspheres from 1600°C to 1000°C and back to 1600°C in nitrogen.
The counts in issue read:
3. Crystalline microspheres consisting essentially of actinide mononi-tride, said microspheres having a density of at least 90% of theoretical.
4. Crystalline microspheres consisting essentially of uranium mononi-tride, said microspheres having a density of at least 90% of the theoretical.

The Board’s Opinion

Appellant stood on his filing date, and the board held that evidence submitted by appellee proved an earlier reduction to practice.

Appellee’s evidence relates to work done at the Oak Ridge National Laboratory of the Atomic Energy Commission, which laboratory was operated by Union Carbide. It relates particularly to a run designated UN-16 made there on September 7 and 8 of 1965 to produce uranium mononitride microspheres from gel microspheres of urania-earbide, U02-C. The record shows that urania-earbide enriched sols were first prepared and then made into microspheres which were turned over to Gens. Run UN-16, on which Gens’ assistant Johns did the laboratory work and Gens himself kept the records, is reported on page 14 of Exhibit 1, Gens’ laboratory record of experiments done under his direction. Sheets requesting x-ray analysis and the determination of the density and the carbon, nitrogen and uranium content of samples prodiced by that run were submitted to the X-ray Diffraction Group and the Analytical Division of the laboratory, for analysis. The report of the x-ray analysis showed that the bright microspheres produced (separated from portions of the product having a dull finish) were uranium mononitride in crystalline form. A report of density determination, by toluene displacement, showed a value of 13.661 g/cc, about 95% of the theoretical uranium mononi-tride density of 14.31 g/cc. Chemical analysis was reported as (by weight percent) 94.2% uranium, 5.02% nitrogen and 0.61 or 0.64% carbon. Records of these tests were submitted in evidence and persons in the X-ray and Analytical Groups making the tests or in charge of them were called as witnesses as were Gens and Johns. Also in evidence, as appellant’s cross-exhibit 1, is ORNL-3879, a report of the Oak Ridge National Laboratory of November 1965, which includes a description of the results of run UN-16.

In finding the evidence to prove actual reduction to practice, the board rejected arguments of appellant that the chemical analysis of the UN-16 micro-spheres did not prove that they met the count requirement of “consisting essentially” of the mononitride. It found adequate corroboration in the evidence as to the points on which appellee relied. It disagreed with a contention of appellant that the x-ray analyst, one Sherman, did not look for lines in the x-ray representing other materials than the UN reported present. The board further disagreed with charges that the mi-crospheres of run UN-16 were not spherical and that they were not reproducible because the composition of the sols used in connection with UN-16 was not determined. The board also found that the mierospheres had utility, pointing to the disclosure in certain publications submitted by appellee under Rule 282.

Appellant submitted a petition for reconsideration and argued that the density of the- microspheres was not in compliance with the count requirements because the toluene displacement method of measurement eliminated certain open pore space adjoining the- surface from the measured volume of the miero-spheres. The board refused to consider this argument because it had not previously been raised.

OPINION

Before us, appellant’s arguments go largely to charges that appellee’s evidence is unreliable. For example, it points out that the figure “6” of the identification “UN-16” on page' 14 of Exhibit 1 describing the run relied on and including the analysis results plainly was changed from some other figure; that the request for chemical analysis (Exhibit 2) with results thereon appears to have had the “6” in “UN-16” changed from a “7,” and that the request for x-ray analyses with a report thereon (Exhibit 3) is marked “UN-19” instead of “UN-16.” However, the testimony is convincing that the samples referred to in Exhibits 2 and 3 were undoubtedly microspheres from the UN-16 run. While Johns may have been uncertain at first about the number of the run when he commenced making out the test request sheets, he apparently promptly made very clear corrections of two of the sheets although he overlooked the third, Exhibit 3. In all three cases the correct run number was recognized where the test results were received and they were correctly entered on the page 14 report of the UN-16 run. Although' appellant suggests the spheres may have come from a run designated UN-18 instead, the record shows that that run ■was not made until some time after the samples on which the analyses were run had already been delivered to the x-ray and analytical laboratories for analysis.

Appellant has also questioned the adequacy of the evidence of the x-ray tests and the reliability of the chemical tests. As to the x-ray tests, he challenges the failure of appellee to introduce the film into evidence. We do not find that significant. Sherman had the x-ray report before hitn when testifying and he had examined the film itself the day before. His testimony, although otherwise from recollection, appears completely reliable and the board did not err in accepting it as establishing that the bright microspheres of run UN-16 were crystalline uranium mononitride.

As to the chemical analysis, appellant makes much of the fact that the witness Botts failed to explain the significance of the expression 71%42 used in connection with tests he made for uranium content of the microspheres. Appellant further states that the ratio is not the U/UaOs ratio because “the molecular weight of uranium is not ‘714’ but is 238” and seems to imply that the determination was in error for that reason. However, 714/842 plainly is the ratio of the weight of uranium (3 x 238 = 714) to the total weight of U308 involved in the gravimetric analysis Botts made. We find nothing to indicate the tests were in error nor do we see much importance in the failure of Botts, the chemist who ran .the tests, to recognize promptly the significance of a calculation made some four years earlier. As to his qualifications, Botts had a B.S. degree in chemistry and biology and had worked for seventeen years at Oak Ridge National Laboratory attaining the rank of supervisor of a laboratory in the Analytical Chemical Division. The various other attacks that appellant made on the reliability of the tests of the microspheres have been considered but we likewise find them lacking in real substance.

A matter remaining is the charge, denied consideration by the board, that the density tests failed to prove that the mi-' crospheres had the required density of “at least 90% of theoretical.” Appellant cannot deny that the value of 13.6616 attained by the tests of record amounts to well over 90% (approximately 95%) of theoretical. He charges rather that measurement by toluene displacement, by which that figure was attained, does not result in a true determination of the density of the microspheres because the toluene enters at least part of the void volume of surface pores in the micro-spheres and results in lowering the volume considered and thereby raising the density calculated. The board refused to consider this argument on reconsideration because appellant had not raised it in briefs or arguments before it rendered its decision.

Appellee points out here that his application Example V, which describes the UN-16 run and is the disclosure relied on to support the counts, states that “[djensity measured by toluene displacement was 13.7.” Toluene displacement is referred to in another example producing a lower density product but no other method of density measurement is mentioned in the application. Also, appellant’s application does not describe any method of density measurement. Thus appellant’s belatedly raised argument would appear to have been equally applicable to support a motion to dissolve as to appellee if appellant considered it meritorious. No such motion having been made, we find no justification for departing from our usual practice of declining to consider issues not properly raised before the board. Even if the merits were considered, the circumstances would require agreement with the view the board obviously took, that the UN-16 microspheres met the density requirements of the count. See Dreyfus v. Lilienfeld, 49 F.2d 1062, 18 CCPA 1539 (1931); and Renz v. Jacob, 326 F.2d 792, 799, 51 CCPA 1200, 1208 (1964).

The board’s finding that appellee’s mi-crospheres had utility was based on publications submitted by appellee including “Uranium Mononitride — a New Reactor Fuel,” Nucleonics, September 1964, pp. 66-70. That article indicates that a number of installations had been studying UN as a nuclear fuel with promising results. We find no reversible error in the board’s conclusion that these publications show utility for appellant’s mi-crospheres, which were proved to be UN in a very pure form.

Appellant’s final argument is that the UN-16 results were not reproducible. He bases that position largely on a contention that the exact oxygen content of the uranium dioxide used in producing UN mierospheres is critical to the final product. However, the record shows that appellee was aware of the importance of the amount of oxygen, carbon and uranium present and took it into account in his records and tests. Thus he recorded the ratio of carbon to uranium for the sol he ordered for use in preparing the product and had the U02-C mi-crospheres analyzed for all three elements. We therefore agree with the board that the UN-16 microspheres could be reproduced by one skilled in the art.

The decision is affirmed.

Affirmed.

      . The only other count remaining in the interference, drawn to a process, was awarded to the appellant. Appellee did not appeal.

      . Appellant points out that density equals “mass per unit volume.”

      . The board cited as authority Orenick v. Shield, 144 USPQ 277 (Comr.Pat.1953).


author: MARKEY, Chief Judge.

text:
    Application of Harold W. DOYLE.
    Patent Appeal No. 9139.
    United States Court of Customs and Patent Appeals.
    Aug. 30, 1973.
    Henry M. Bissell (Bissell & Dalgarn), Los Angeles, Cal., Donald D. Jeffery, Cleveland, Ohio, for appellant.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents. Jere W. Sears, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, BALDWIN, LANE, Judges, and ALMOND, Senior Judge.
   MARKEY, Chief Judge.

This appeal is from the decision of the Board of Appeals affirming the rejection of claims 1-8, 11-30, 32, 33 and 34, all the remaining claims, of appellant’s application serial No. 18,727, filed March 11, 1970, for reissue of patent No. 3,391,392, issued July 2, 1968 on an application filed October 18, 1965, for “Method and Apparatus for Pattern Data Processing.” We affirm.

The Invention

The invention relates to grading garment patterns and more particularly to a system that “automatically produces data for patterns of all the desired sizes from a single reference pattern.” According to the application:

A reference garment pattern is digitized and with grading control data and digital data processing methods is converted into data indicative of additional size patterns. Digital computer means are provided for selectively changing the boundaries of the reference pattern according to predetermined grade instructions from grading control data to produce positional data indicative of the additional size patterns.

Figs. 1 and 2, reproduced below, illustrate, respectively, a reference pattern to be graded to provide corresponding patterns for additional sizes and “a schematic block diagram illustrating a principal aspect of the automatic grading method of the invention”:

The pattern 11 may be a part of a dress pattern of a reference size such as 12 from which corresponding parts for a selected range of sizes such as 6, 8, 10, 14, 16 and 18 may be produced. The pattern 11 has various control points, such as point 12, which may be marked by notches and located at corners and other key positions of the pattern 11, The points are utilized in the invention as points from which dimensional changes predetermined by the designer are applied to locate corresponding offset points on the patterns of the additional sizes.

As to Fig. 2, the application states:

[T]he reference pattern 11 of FIG. 1 is initially placed on a pattern tracer 21 which is an automatic curve follower to be described later. The tracer 21 follows the boundary of the pattern 11 including the control points 12 and 13 and provides positional incremental data based on X and Y coordinate axes to a position data converter 22. The incremental data is converted into Cartesian point data by the data converter 22 according to predetermined sequence recognition rules and, with the X-Y positional data from a significant point computer 23, is fed to a control point computer 24. The significant point computer 23 selects the Cartesian positional data from converter 22 according to maximum and minimum deviation criteria relative to the X and Y coordinate axes to provide significant point positional data indicative of the reference pattern. The control point computer 24, responsive to the Cartesian positional data from the converter 22 and the significant point data from the computer 23, computes control points. A grade computer 25 computes offset intermediate point positional data for the selected additional size patterns in accordance with the computed intermediate points for the reference pattern 11. The graded positional data from the control point computer 24 are fed to a drive control 29 which drives a pattern plotter 27 to provide a graphical display of the additional size patterns 28.

No programs for the computers are set forth in the application.

At the end of the specification, appellant states that the “preferred embodiment” which he shows and describes is “susceptible to changes in form and detail” and that:

[Although the use of an incremental plotter with an incremental pattern tracer particularly enhances the operation of the system, it would be well within the knowledge of those skilled in the art to utilize other forms of plotters and curve followers, including manual curve followers * * *.

The particular operation of pattern tracer 21 and position data converter 22 of Fig. 2 is irrelevant to the basis on which we determine the appeal. The adequacy of disclosure of the pattern plotter 27 is unquestioned.

The function of the significant point computer is disclosed with respect to Fig. 15:

The figure shows a portion 101 representative of the pattern 11 of Fig. 2. The input to the significant point computer 23 (Fig. 2) from the position data converter is a series of raw boundary data points such as 102 on line 101. The significant data computer analyzes these data points “to provide significant points such as illustrated in Fig. 15 wherein significant points Pi0 Pisi P¡sz and Pm are shown.” The primary significant points Pi0 and Pin are first established. Then the secondary points Pisi and PiS2 are determined.

The control point computer determines, from raw boundary data from position converter 22 and significant point data from the computer 23, the location, of control points represented on the pattern 11 by notches as indicated in Fig. 18:

According to the application:

In the beginning, a maximum spacing test is made in which two significant points are found which are within the maximum distance allowable (kmax). After two significant points are found within the kmax then an additional spacing test is conducted in which all points within the distance of the kmax are established. If three, or more significant points are within the kmax, then a notch is tentatively designated and a further series of tests is conducted. A base line test is conducted to find two end points 112 and 113 which represent the base line of the notch, from which is determined the midpoint M. An apex test finds the apex A, after which a line is determined from M to A as illustrated * *

Some further discussion of the control point computer operation is given with respect to figures of the drawing designated “flow charts.”

The function of the grade computer is best discussed in connection with Fig. 9:

There P0 and Pf represent control points on the pattern 11 established by the control point computer and P„' and P/ are offset points established by the grade computer by means of offset vectors AP0 and AP7 which constitute grade control data furnished thereto at 26 in Fig. 2. P, represents an arbitrary intermediate point on the pattern and P¡' a corresponding intermediate offset point on the graded pattern determined by the grade computer on the basis of the triangles P0 Pi Pt and P0' Pi' P/ being similar and their corresponding sides proportional. The computer determines a plurality of such intermediate offset points between P0' and Pf' to define the graded pattern.

Claims 7 and 14 are illustrative:

7. A system for grading a reference pattern to produce additional size patterns comprising:

a pattern tracer for converting the reference pattern boundary into incremental positional data based on X and Y coordinate axes;
a position data converter responsive to said tracer for converting said positional data into Cartesian point data;
a significant point computer responsive to said Cartesian point data and slope criteria relative to said X and Y coordinate axes to produce significant point data;
a control point computer responsive to said significant point data for computing control points; and
a grade computer responsive to said control points, predetermined pattern control data corresponding to said additional size patterns, and said Cartesian point data for intermediate points for computing offset control points for offset intermediate points for said additional size patterns.

14. A system for selectively changing the boundary of a reference pattern having a plurality of control points thereon to produce patterns of other sizes according to size data determining the adjustment factor of individual ones of the control points, not all of the control points being adjusted by the same factor, said -system comprising:

means for converting the reference pattern boundary and control points into positional data;
means responsive' to said positional data and to said size data for computing additional positional data for the adjusted control points and for the boundary of an additional size pattern graded between the adjusted control points; and
means responsive to said additional positional data for displaying the boundary of said additional size pattern.

There are other apparatus claims with scope variations and a number of method claims corresponding generally in scope to the apparatus claims.

The Rejection

The examiner held that the position data converter 22 as well as the computers 23, 24 and 25 were inadequately disclosed, pointing specifically to deficiencies in the description of each. He also pointed out a number of apparent errors in the descriptions of their operation. As to the latter, appellant responded by offering amendments to the application. The examiner objected to certain of the amendments as new matter because “[n]o adequate basis exists in the original application for making these proposed changes.” Appellant then cancelled the amendments but the record does not show that he either challenged or explained the alleged errors. On the broad question of inadequacy, appellant submitted affidavits of Burger, Steele and Owen and portions of two depositions taken of adverse witnesses, Mantey and Sutton, in an infringement suit on the patent sought to be reissued.

The additional rejection of claims 2, 4, 7, 11 and 22 was based on references therein to providing or selecting significant point data according to or responsive to “slope criteria.” The examiner considered those recitations inaccurate because no determination of slope of any line segment is made.

The board sustained both of these rejections. It found the affidavits and depositions “unconvincing of the level of skill in the art to deal with the problem of modifying a computer to achieve the results specified by appellant which the examiner has challenged.”

OPINION

Although appellant asserts that all of the elements of his disclosed automatic system are adequately disclosed, his argument in large part is that he has provided an adequate disclosure of what he considers an alternative form. He relies for the alternative form on the statement in his application, supra, that “it would be well within the knowledge of those skilled in the art to utilize other forms of plotters and curve followers, including manual curve followers.” By argument he supplements the quoted statement, advising that the term “manual” curve follower is really a misnomer because it would be more aptly described as a semi-automatic curve follower. Appellant states:

Such prior art “manual” curve followers comprise a bed on which the paper with the curve to be digitized is placed. An operator superimposes a stylus over a point on the curve and operates a record button. A position data converter forming part of the tracer is connected to the stylus. Operation of the record button causes the position data converter to output the Cartesian Point coordinates of the stylus location to a key punch or tape unit which records the positional data. The operator then moves the stylus to another point on the curve and repeats the operation until sufficient points have been digitized to represent the curve. Points on the curve of a different character (such as control points) would be digitized in a manner to identify their special character, for example on a separate pass around the curve. Such operation was well within the skill of the art prior to October 1965. Such a device clearly is a “means for converting the reference pattern boundary and control points into positional data” as required by the claims.

Because of the asserted alternative disclosure, appellant’s position is that, as to the broader claims, the adequacy of the disclosure of the position data converter, the significant point computer and the control point computer need not be considered. However, we find that the application provides no suggestion whatever of making sequential tracings of the pattern in order to separately digitize intermediate points and control points. In particular, there is no suggestion in the application that automatic identification of control points, provided by means including the significant point computer 23 and control point computer 24, be sacrificed and such action would be inconsistent with the emphasis placed on automatic operation throughout the specification. The most that can be found to be suggested by the brief reference to use of a manual curve follower in the specification is that it be substituted for the automatic curve follower in the described preferred embodiment with the elimination of the position data converter 22 but retaining the significant point and control point computers to distinguish the control points. Hence even the broad claims which do not specify the significant point and control point computers require an adequate disclosure of them as part of the elements covered by the broad means recitations.

As to the third named computer of the disclosed apparatus, the grade computer 25, appellant does not deny its essentiality to the invention.

We agree with the examiner and the board that the disclosure of the three computers 23, 24, and 25 is not sufficient to enable any person skilled in the art to make and use the invention. 35 U.S.C. § 112. The showing of these computers amounts essentially to functionally labeled rectangles with a description of the result to be provided by the apparatus they represent. It is true that appellant sets out what he describes as algorithms, and in some instances, “flow charts” associated with these computers. However, these too are more in the form of indications of the results desired than any description of how the computers are operated to provide those results and appellant has not challenged the examiner’s assertion of specific error in relation to the algorithms and flow charts.

Turning to appellant’s evidence, the Mantey and Sutton evidence is in the form of excerpts from their depositions. The excerpts at most are related only to equations 24 and 25 which appellant’s specification sets forth in connection with the operation of his grading computer. In their affidavits, Steefe and Burger, experts in the data processing art, express the opinion that a typical computer programmer “supplied with no other significant information than what is disclosed in [appellant’s] patent, could have prepared a program to grade patterns using the technique disclosed in said patent.” Owen, a computer programmer, asserted:

That, having been supplied with no other significant information than what is disclosed in [appellant’s] patent, she did prepare a program to grade patterns using the grading algorithm disclosed in said patent during the time between November, 1964 and August, 1965. That said program was prepared for a general purpose digital computer, using conventional programming technique, and was used to grade garment patterns.

We do not consider the excerpts from the depositions, taken out of context and without revealing fully the point .of the questioning, as establishing the adequacy of the disclosure of the grading process in appellant’s specification. The excerpts contain no information whatever as to the significant point computer and control point computer. Hence they are wholly inadequate to demonstrate the presence of disclosure sufficient to teach one skilled in the art how to make and use the system even if, arguendo, they were considered of some significance relative to the grade computer operation.

As the board observed, the Burger and Steele affidavits merely express opinions in the form of conclusions without any facts on which the conclusions are based. They thus differ critically from the affidavits found adequate in In re Naquin, 398 F.2d 863, 55 CCPA 1428 (1968). The Naquin affidavits included assertions that “the average computer programmer” was familiar with subroutines “for multiplication, integration, addition, peak picking, running integration, subtraction * * which obviously were the very operations which the court considered to be necessary to execute Naquin’s invention. In this case, affiants’ assertions are directed to operations which obviously are different from mere known mathematical processes such as “integration, addition, etc.” Rather the operations require comparison of various points on the pattern to determine such matters as where the curve between the digitized points is such that the tangent line thereto will change from one quadrant to another to reveal a significant point and to distinguish the notches at the control points from other significant points.

Owen does not reveal what information was available to her in preparing the program and thus the statement that she was supplied with no other significant information than what is disclosed in the patent is a conclusion or opinion lacking factual support. There is no basis for presuming that her information was limited to the patent application itself. Her program was prepared before the application was filed. In light of appellant’s having based his principal argument on an alternative form of invention utilizing a “manual” curve follower in a manner which we hold was not disclosed in the application, Owen’s reference to “a program” using “the grading algorithm disclosed in said patent” may well have been based on a similar interpretation of the application. Thus, the Owen affidavit does not cover anything more than a program for the grade computer 25, leaving the programming of the significant point computer 23 and control point computer 24 outside its scope.

Appellant’s principal argument seems to be that the unpublished decision of the Board of Appeals in Ex parte Bernhart, Appeal No. 633-90 (1966), from which was taken the appeal that resulted in In re Bernhart, 417 F.2d 1395, 57 CCPA 737 (1969), controls here. The board decision there reversed a rejection for inadequate disclosure of a graphic type reproduction system for making planar representations wherein data representing a three dimensional object on a selected plane surface was determined for plotting by an automatic plotting machine. In that case, data representing the points on the three dimensional object and other instructions, including which points were or were not connected to other points, was predetermined and already produced on punched cards or magnetic tape from a manuscript. The board noted that the mathematical equations for converting this data to two dimensional form were' set out and regarded the operation of a computer used to make transformations as involving no more than commonplace operations using conventional program instructions. In the present case, the significant point computer and critical point computer must calculate the data representing the characteristics of the reference pattern 11 and the record does not show the operations to be performed by them to be conventional or apparent to persons skilled in the art from appellant’s disclosure.

' Summarizing, the situation here is that the examiner advanced a reasonable basis for questioning the adequacy of the disclosure and it was incumbent on appellant to rebut that challenge. See In re Ghiron, 442 F.2d 985, 58 CCPA 1207 (1971). More specifically, the applicant had the burden of supplying adequate information from which the examiner, as well as the board and this court, could base a finding of whether the examiner’s challenge was correct. Ordinarily that requires factual support as to what would be required or what was actually done in carrying out the invention, material peculiarly within the power of the applicant to provide. Despite assertions of Owen that she prepared a program to grade patterns “using the grading algorithm disclosed in [the] patent,” appellant has not provided information additional to that challenged by the examiner as to how the grading was done. The opinions supplied by the evidence that was introduced are clearly not indicative that the examiner erred.

Appellant further argues that the fact that a patent was allowed him on the original application means that the question of sufficiency of disclosure has been determined in his favor by the Patent Office and that a policy of res judicata should bar a contrary holding here. However, we agree with the board that the statutory provision for reissue of patents, 35 U.S.C. § 251, by its third paragraph, dictates that the provisions applicable to applications for patents, including section 112, are applicable to reissue applications also.

For the foregoing reasons, the 112 rejection based on inadequate disclosure is sustained.

The reference in claim 7, supra, to the significant point computer as “responsive to * * * slope criteria relative to said X and Y coordinate axes” is exemplary of the subject matter in claims, 2, 4, 7, 11 and 22 which constituted the basis of their rejection as misdescriptive and failing to distinctly point out appellant’s invention (35 U.S.C. § 112, second paragraph). The board noted that the term “slope” has the precise mathematical meaning of the tangent of the angle between a line and the x-axis and that appellant is concerned only with change in sign of the tangent. It thus considered it misleading to refer to “slope criteria.” Appellant’s response is that the claims do not require determination of the absolute slope. That seems to be a contention that the expression is not inaccurate. Irrespective of whether the term is inaccurate, it plainly falls short of meeting the requirement of “particularly pointing out and distinctly claiming” appellant’s invention. Thus the additional rejection of claims 2, 4, 7, 11 and 22 will also be sustained.

The decision of the board is affirmed.

Affirmed.

RICH, J., concurs in the result.

      . The examiner further stated that “[s]ince the description of these figures [incorporating the alleged errors] has been one of making only a general statement of the purpose of the tests being conducted, no basis exists in the description from which these changes can be deduced.”

      . We give appellant the benefit of an assumption that the “manual” curve follower which is used will provide an output of digital data representing Cartesian coordinates.

      . The record of the Bernhart case in the court contains the board decision as does appellant’s brief in this appeal.