text:
    UNITED STATES of America, Plaintiff-Appellee, v. Alex NOLAN and Dun Dun Hemingway, Defendants-Appellants.
    No. 72-2769
    Summary Calendar.

    United States Court of Appeals, Fifth Circuit.
    April 17, 1973.
    Harry Connick, New Orleans, La. (Court-appointed), for defendants-appellants.
    Gerald J. Gallinghoüse, U. S. Atty., Robert L. Livingston, Asst. U. S. Atty., New Orleans, La., for plaintiff-appellee.
    Before BELL, GODBOLD and INGRAHAM, Circuit Judges.

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

   PER CURIAM:

In conformity with the requirements established by Anders v. California, 1967, 386 U.S. 738, 87 S.Ct. 1396, 18 L.Ed.2d 493 we have carefully considered this cause in its entirety, and conclude that there is no arguable merit in the appeal. It is therefore ordered that the motion filed by Harry Connick, Esquire, for leave to withdraw as court-appointed counsel for Appellant is granted, and the appeal is dismissed. See Local Rule 20; United States v. Minor, 5th Cir. 1971, 444 F.2d 521; United States v. Crawford, 5th Cir. 1971, 446 F.2d 1085.


source: Caselaw Access Project

author: ALMOND, Senior Judge.

license: Public Domain

text:
    Application of The BISSETT-BERMAN CORPORATION.
    Patent Appeal No. 8932.
    United States Court of Customs and Patent Appeals.
    April 26, 1973.
    George F. Smyth, Smyth, Roston & Pavitt, Los Angeles, Cal., attorneys of record, for appellant.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; R. V. Lupo, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN, LANE, Judges, and ALMOND, Senior Judge.
   ALMOND, Senior Judge.

This is an appeal from the decision of the Trademark Trial and Appeal Board, 167 USPQ 640 (1970), affirming the examiner’s refusal to allow appellant’s application to register the mark “E-CELL” for electrolytic cells on the ground of likelihood of confusion, within the meaning of section 2(d) of the Trademark Act of 1946 (15 U.S.C. § 1052(d)), with the registered trademark “E” for electrical circuit components.

The record reveals that this is appellant's second attempt to register the mark E-CELL. The response of the board to appellant’s first attempt was to affirm the decision of the examiner refusing to register the mark because of likelihood of confusion with the same E mark involved in this appeal (153 USPQ 691).

No review was sought of the board’s decision, appellant allowing its application to become abandoned to afford opportunity to file an application at a subsequent time under section 2(f) of the Trademark Act of 1946 (15 U.S.C. § 1052(f)). After elapse of the five-year period prescribed in section 2(f), appellant filed the instant application. The examiner refused registration on the ground of likelihood of confusion with the same E mark notwithstanding appellant’s assertion that the mark had obtained “secondary meaning” and was entitled to registration under section 2(f). The examiner observed that he did “not believe that Section 2(d) can be nullified by evidence under Section 2(f).”

Appellant’s contention that its mark had obtained “secondary meaning” was supported by an affidavit of its president which substantially attested as follows: (1) that the mark had been used in commerce since 1963 on applicant’s electrolytic cells; (2) that ten million dollars in sales of electrolytic cells had ■been made; (3) that the mark E-CELL had acquired a secondary meaning; (4) that there is a substantial difference between the goods (electrolytic cells) on which the subject mark is used and the goods (resistors, capacitors and semiconductors) on which the registered mark is used; (5) that within applicant’s knowledge and belief the registrant (Erie Resistor Corporation) has not marketed, does not market, and does not intend to market electrolytic cells; and (6) that applicant is not aware of any actual confusion between the registered mark E for electrical circuit components and appellant’s mark E-CELL for electrolytic cells.

We think it pertinent to point out that on the issue of likelihood of confusion involving these same marks, finally determined adversely to appellant here in that earlier proceeding, the board observed :

The asserted differences between applicant’s goods and those set forth in the registration are matters which were or should have been argued before the Board in the prior proceedings; and, apparently, they were not sufficient to persuade the Board that confusion in trade was not likely to occur. In fact, the only new circumstances introduced in this record is the fact that applicant, since the decision in question, has enjoyed substantial sales of “E-CELL” electrolytic cells without any evidence of conflict with registrant’s “E” components coming to its attention. However, this cannot conclusively establish in a proceeding of this character that confusion has not or could not occur. But, in any event, it is clear from the express language of Section 2(d) that the test to be applied thereunder is likelihood of confusion rather than actual confusion.

The issue is whether appellant’s mark E-CELL for electrolytic cells so resembles the mark E for electrical circuit components as to be likely to cause confusion within the meaning of section 2(d). This is the dominant issue irrespective of whether appellant has established that its mark has acquired a “secondary meaning.” Comparison of the language of sections 2(d) and 2(f) renders it clear that section 2(f) does not negate the requirements of section 2(d) embracing the matter of likelihood of confusion. In pertinent part, section 2(f) reads as follows:

Except as expressly excluded in paragraphs (a)-(d) of this section, nothing in this chapter shall prevent the registration of a mark used by the applicant which has become distinctive of the applicant’s goods in commerce. (Emphasis added.)

It is obvious that what is expressly excluded in paragraph (d) is registration of “a mark which so resembles a mark registered in the Patent Office * * * as to be likely, when applied to the goods of the applicant, to cause confusion * * It is apparent therefore that the express exclusion under section 2(d) constitutes a bar to registration which cannot be negated by evidence produced under section 2(f). The conclusion is inevitable, therefore, that whether or not appellant’s mark has acquired a secondary meaning is not controlling on the only question on appeal, viz., likelihood of confusion between the two marks.

When we consider the marks as a whole and the commercial impression they make, it is our view that customers familiar with goods sold under the E mark might assume that goods bearing the mark E-CELL emanate from the same source. A comparison of the two marks reflects the common use of the letter “E,” the difference being that appellant’s mark uses the word “CELL,” which is merely suggestive of the goods associated with the mark. The dominant portion of appellant’s mark is the same as that of registrant’s mark, viz., E. The respective goods in each case are electrical equipment. Therefore, in our view the marks are so similar as to be likely to confuse purchasers as to the origin of the goods. We think it significant that we find nothing of record to controvert the statement of the board in its previous decision (153 USPQ at 692) that:

The photographs submitted with the application show that applicant’s cell includes a transistor, two resistors, and a tube of some sort. The cited registration covers capacitors, resistors, semiconductors and combinations thereof.

This constitutes an unrefuted finding of the similarity of components used by appellant in constructing its electrolytic cell to those electrical components associated with registrant’s mark.

The main thrust of appellant’s argument relating to likelihood of confusion is based on the affidavit of its corporate president that he is not aware of any actual confusion resulting from appellant’s use of the mark and any use by Erie of the E mark. The fact that appellant is not aware of any actual confusion is not conclusive that actual confusion does not exist or that there is no likelihood of confusion. This principle was aptly stated in In re Apparel, Inc., 144 USPQ 330, 331 (TTAB 1964):

Moreover, the statement by applicant’s president that for more than fifteen years it has used its mark * * * without a single instance of confusion with the cited registered mark coming to his attention cannot conclusively establish in a proceeding of this character that confusion has not or could not occur. But, in any event, it is clear from the express language of Section 2(d) that the test to be applied thereunder is likelihood of confusion rather . than actual confusion.

Appellant argues that res judicata was improperly applied in this case. In fact, this principle was not applied below. The decision of the board, while referring to its previous decision involving the same two marks, concluded that the “new circumstances” intervening subsequent to its previous decision were not persuasive to negate the likelihood of confusion noted in its earlier decision.

We find no reversible error in the decision below, and it is accordingly affirmed.

Affirmed.

      . Serial No. 303,258 filed July 22, 1968.

      . No. 751,588 registered June 25, 1963.

      . Affirmed 336 F.2d 1022, 54 CCPA 733 (1966).


author: RICH, Judge.

text:
    J. Allan CAMPBELL and John C. Babcock, Appellants, v. Albert WETTSTEIN et al.
    Patent Appeal No. 8805.
    United States Court of Customs and Patent Appeals.
    April 5, 1973.

      Sidney W. Russell, Arlington, Va., John Kekich, Kalamazoo, Mich., attys. of record, for appellants.
    Joseph G. Kolodny, Summit, N. J., atty. of record, for appellee. Wenderoth, Lind & Ponack, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, and RICH, ALMOND, BALDWIN and LANE, Judges.
   RICH, Judge.

This appeal is from the decision of the Board of Patent Interferences awarding priority of invention to Wettstein et al. (hereinafter Wettstein), the senior party, as to four counts relating to certain 7a — lower alkyl-19-rior androstene steroid compounds.

Wettstein is involved on his patent No. 3,301,879, issued January 31, 1967, on application serial No. 324,854, filed November 19, 1963, which the board held entitled to the January 25, 1963, convention priority date of a corresponding Swiss application for constructive reduction to practice of the interference subject matter.

Campbell et al. (hereinafter Campbell) are involved on application serial No. 446,395, filed April 7, 1965.

The board found, as the basis of its decision, that certain biological evaluation tests performed by Campbell’s witnesses “are insufficient to establish ' an actual reduction to practice of the invention of the counts.” We disagree, and reverse the decision of the board.

The Subject Matter

The counts which correspond to claims 1-4 of the Wettstein patent, read as follows :

1. A 19-nor-androstene of the formula in which Ri and R3 each represent a member selected from the group consisting of a free, an esterified and an etherified hydroxyl group, R2 represents a lower alkyl group and R4 stands for a member selected from the group consisting of hydrogen, lower alkenyl, lower alkinyl, halogenated lower alkenyl and halogenated lower alkinyl, and R3 and R4 taken together represent oxygen, the above ésterified hydroxyl groups being derived from carboxylic acids having at most 20 carbon atoms and said ether groups being members selected from the group consisting of hydrocarbon and halogenated hydrocarbon except for the ether oxygen linkages.
2. A4-3:17P - dihydroxy - 7a - methyl - 17a - ethinyl - 19 - nor - androstene.
3. A4-3:17p - diacetoxy - 7a - methyl - 17a - ethinyl - 19 - nor - androstene.
4. A4-3:17 - dihydroxy - 7a - methyl-19-nor-androstene.

According to the Wettstein patent specification, the above 19-nor-andros-tene compounds

* * * possess valuable pharmacological properties. Inter alia they display in test animals anabolic-androgenic activity with a particularly high ratio of the anabolic to the androgenic effect. This enables them to be used as anabolic agents. A particularly high anabolic action is found in those compounds of the Formula 1 [same as in count 1, supra] in which Ri and R3 each represents a free or esterified hydroxyl group, R4 a hydrogen atom or a methyl or ethyl group and R2 stands for a methyl group. Moreover, the compounds, and especially those which have an unsaturated hydrocarbon radical in 17a position, those for instance in which R4 is an ethinyl group, have antigonadotropic, gestagenie and anti-hypercholesterinemic action.

Other than general disclosure that the new androstenes “may be used as medicaments * " * in the form of pharmaceutical preparations” in various specific dosage units and forms “suitable for enteral or parenteral administration,” as well as three examples relating to preparation of certain dosage forms, the Wettstein patent contains nothing further relating to the usefulness of the claimed compounds.

Campbell’s specification contains similar disclosure. It observes that compounds including those within the scope of the counts

* * have anabolic and androgenic activity of improved therapeutic ratio of the former versus the latter. They also exhibit improved solubility properties in oil vehicles, e. g., sesame oil, cotton-seed oil and like substances for intramuscular injection, thus permitting more effective doses of steroid to be administered in a practical volume of oil and thereby prolonging the duration of biological effect. They also possess anti-fertility, anti-androgenic and anti-estrogenic activities. They also have the ability to reduce the level of cholesterol in the blood and consequently are of therapeutic value in the treatment or prevention of atherosclerosis. The foregoing properties make the new compounds useful in medical and veterinary practice.
The compounds of the invention can be prepared and administered to mammals, birds, humans, and animals, in a wide variety of oral or parenteral dosage forms * * *.

The Evidence

Campbell has taken testimony and introduced documentary evidence, both relating primarily to activities during the period July 1962 to February 1963, to establish actual reduction to practice of four steroid compounds identified as compound A (count 4 and a species of Count 1), compound B (count 2 and a species of count 1), compound C (a species of count 1) and compound D (count 3 and a species of count 1). The doeumentary exhibits relating to each of those compounds are correlated with them by identical capital letter designations. Wettstein was not represented at the taking of depositions of Campbell’s witnesses so there was no cross-examination, nor did he adduce any rebuttal evidence. No question has been raised by either the board or Wettstein with respect to Campbell’s corroborated proofs that, prior to January 25, 1963, Wettstein’s earliest date, Campbell conceived, actually prepared, and identified the four compounds above-mentioned. The controversy revolves around the legal adequacy of certain biological tests to which the above compounds were subjected to determine their usefulness as an anti-fertility agent. To that evidentiary matter we now turn.

The record establishes that Campbell, working under the direction of his eo-inventor, Babcock, synthesized compounds A, B, and C in the summer of 1962 and compound D in mid-January of 1963. Shortly after synthesis and isolation of the compounds, he submitted them to Upjohn’s Biological Screening Office and requested that they be tested, inter alia, for anti-fertility activity. Standardized biological evaluation request forms were used for that purpose. The anti-fertility screen and assay was carried out by Lyster, a research associate of nearly 25 years experience in the Biological Screening Office, and his assistant, Cornette. Lyster testified that the test procedure applied by him was one designed to show the property of anti-fertility, and had been described in a 1961 journal publication which he had co-authored and which is in evidence as Exhibit P, Supplement No. 1. The results of the tests were recorded on certain pages of Lyster’s notebook, copies of which are in evidence as Exhibits Al-6, Bl-6, Cl-6, and Dl-6. Subsequently, the test results were formally reported by Lyster to various Upjohn research personnel on standardized forms, copies of which comprise record Exhibits Al-5a, Bl-5a, Cl-5a and 5b, and Dl-5a. Those exhibits bear dates of September 4, 1962; August 20, 1962; August 20, 1962; and February 19, 1963, respectively. The notebook pages and Lyster’s reports show on their face that each of compounds A, B, C, and D inhibited pregnancy of the subject animals at several dosage levels. Referring to the reports and results summarized therein, Lyster testified that each of compounds A, B, C, and D possessed “significant anti-fertility activity.” Other recipients of the reports circulated by Lyster — in particular, Campbell and Dr. Shepherd (head of the Biological Screening Office at the time the tests were conducted)' — testified in substance that the reports were relied on by Upjohn research personnel for the truth and accuracy of the results reported therein, and that they also were of the opinion, based on the reports, that compounds A, B, C, and D were “very active,” or had “interesting” to “highly interesting” or a “high order of” activity, as anti-fertility agents.

The Decision of the Board

The board agreed with the evaluation by Wettstein of the screening test data in the Campbell record, that it “represents no more than an initial test to determine (along with other tests and toxicity data) whether or not additional work should be done, leading to a reduction to practice.” In according “little weight” to those tests, it further noted that the tests include “no toxicity data at all, nor the presence of controls,” and that “meager amounts” of the four compounds were employed. With respect to the testing of compound A, the board observed that Lyster testified that he administered the compound to the test animals by subcutaneous injection, whereas the method in the publication Lyster referred to as disclosing the procedure he followed “was confined to oral administration”; consequently, said the board, “we cannot give much weight to Lyster’s testimony that the compound in question had anti-fertility properties.” Finally, having earlier noted that no witness for Campbell nor any documentary evidence offered by him had shown what significance “a biological screen is to a person skilled in the art relating to compounds contemplated for use as pharmaceuticals or therapeutics,” the board took judicial notice of portions of three publications relating generally to screening tests conducted by pharmacology laboratories in further support of its conclusion that “the screening tests for anti-fertility performed by Lyster or persons under his supervision are insufficient to establish an actual reduction to practice of the invention of the counts «• -x- * >>

In response to Campbell’s request for reconsideration, the board concluded that the three publications above referred to “are in the nature of opinion evidence introduced for the first time by us in our decision,” that the part of its decision relying on them “was in error,” and that its decision should be modified to the extent that it “be read with the exclusion of any reference to” those publications. It otherwise adhered to its award of priority to Wettstein.

OPINION

We see no serious contention on the part of the board or by Wettstein that clinical testing in humans, approval by the Food and Drug Administration, or commercial usefulness is necessary for a reduction to practice of the present invention. Cf. In re Hartop, 311 F.2d 249, 50 CCPA 780 (1962); In re Anthony, 414 F.2d 1383, 56 CCPA 1443 (1969). Having been granted a patent on the basis of his disclosure of usefulness in “test animals,” Wettstein is not in a favorable position to argue that Campbell must show tests on human beings in order to prove an actual reduction to practice. Blicke v. Treves, 241 F.2d 718, 44 CCPA 753 (1957). Moreover, the interference counts contain no limitation relating to intended use or to discovered properties of the claimed compounds. Accordingly, under well-established precedent, evidence establishing substantial utility for any purpose is sufficient to show reduction to practice. Archer v. Papa, 265 F.2d 954, 46 CCPA 835 (1957); Blicke v. Treves, supra. Although Campbell’s assignee’s ultimate purpose undoubtedly is the treatment of humans, successful testing and use in standard laboratory animals is adequate for a reduction to practice of the compounds under the guidelines of Archer v. Papa and Blicke v. Treves, supra. See also In re Krimmel, 292 F.2d 948, 48 CCPA 1116 (1961); In re Bergel, 292 F.2d 955, 48 CCPA 1102 (1961), and In re Hitchings, 342 F.2d 80, 52 CCPA 1141 (1965).

The board’s main criticism of Campbell’s biological test data — and Wettstein’s principal criticism too — is that those animal tests are of such a preliminary, tentative nature that “other tests,” along with further “toxicity data,” are necessary before anti-fertility activity can be reasonably ascertained and an actual reduction to practice occurs. The board did not explain what “other tests” it would require in the present circumstances, and the record does not make it clear what further tests, if any, should be required. We find no substantial evidence of record to support the board’s conclusion that further tests are necessary. Indeed, the preponderance of the evidence appears to be to the contrary.

There is considerable uncontradicted and credible testimony of Campbell and his witnesses that, based on Lyster’s tests, they were satisfied compounds A, B, C, and D had useful anti-fertility properties. It cannot be gainsaid that each of those compounds was effective in preventing fetus implants in the uteri of rats at appropriate dosage levels. That they were relatively safe in their effectiveness for that purpose, at least to the point of not producing death by reason of acute toxicity in the test animals, is also apparent. Campbell has demonstrated by a preponderance of the evidence that the compounds, when administered to a standard experimental animal, possess the significant property of preventing pregnancy — the intended purpose — and were tolerated by the animals during the test periods. We think that is enough. As stated in In re Krimmel, supra,

* * * we hold that when an applicant for a patent has alleged in his patent application that a new and unobvious chemical compound exhibits some useful pharmaceutical property and when this property has been established by statistically significant tests with “standard experimental animals,” sufficient statutory utility for the compounds has been presented. •X- * -X-
We hold as we do because it is our firm conviction that one who has taught the public that a compound exhibits some desirable pharmaceutical property in a standard experimental animal has made a significant and useful contribution to the art, even though it may eventually appear that the compound is without value in the treatment of humans.

See also Carter-Wallaee, Inc. v. Riverton Laboratories, Inc., 433 F.2d 1034 (2d Cir. 1970). We see nothing of record to establish that Lyster’s tests are per se insufficient or that a battery of additional tests, including further toxicity tests, are needed before one can properly conclude that the compounds possess useful anti-fertility activity in test animals.

Apparently recognizing the deficiency of his case, and in a further attempt to “provide evidence” that several other types of anti-fertility and toxicity tests are necessary in order to adequately determine the propriety of an initial conclusion as to a compound’s activity and the desirability of extended study of it, Wettstein urges us “to'consider, even if by judicial notice,” the content of several additional publications not of record which are appended to his brief. The purpose of the publications, says Wettstein, is to make this court aware “of what is meant by assays and screens in anti-fertility research * *

The propositions sought to be established by reference to the controverted publications are, we think, matters to be established by appropriate record evidence and are not matters to be resolved by reliance on judicial notice. Wettstein had the opportunity, if he wished to do so, to challenge the credibility and conclusions of the Campbell witnesses by way of cross-examination, rebuttal testimony of his own, or timely introduction of documents. He did not avail himself of those opportunities. It is now too late to accomplish by indirection what he could have done directly. We decline to take judicial notice of those publications. Martin v. Snyder, 214 F.2d 177, 41 CCPA 1010 (1954); In re Cofer, 354 F.2d 664, 53 CCPA 830 (1966).

The board and Wettstein have assigned additional reasons for according Lyster’s tests “little weight”: (1) “meager amounts” of the four compounds were employed, and (2) the tests included no “controls,” i. e., animals to which no active compound was administered.

The board’s comments regarding the small amount of each compound used by Lyster vis-a-vis the total amount of each compound submitted by Campbell for use in testing no doubt are derived from the calculations it independently made as to the amount utilized. As Campbell points out in his brief, those calculations are in error on the low side by a factor of 21, the board having calculated merely one aminal’s dosage for one day and having overlooked the. fact that the tests were carried out in triplicate over a period of seven days. The board did not explain why the use of less than the total amount of compound submitted for testing should unfavorably affect its view as to the weight to which the tests are entitled. We regard the surplus of each compound remaining after conclusion of the tests as irrelevant.

Nor do we attribute any overriding significance to the fact that the tests as carried out by Lyster may not have included control animals to which no test compound was administered. It is apparent from the documentary exhibits relating to each compound that larger doses of compound successfully inhibited pregnancy in some groups of animals, while sufficiently small doses were partially or totally unsuccessful in preventing pregnancy in other groups of animals. We agree with Campbell that in this kind of testing the appearance of pregnancy in the latter groups of animals corresponds, in effect, to the result achieved by the presence of a control.

Finally, as one further reason for not according “much weight” to Campbell’s evidence that compound A possessed anti-fertility properties, the board noted that the compound was administered to the test animals subcutaneously rather than orally as set forth in the published procedure allegedly followed. We are at a loss to understand why the board thought that the route of administration would make any crucial difference in showing the anti-fertility property. Indeed, the record shows that compound C was administered to test aminals both subcutaneously and orally, with the result that pregnancy was inhibited in both instances at effective dosage levels. Then, too, the affidavit filed during the prosecution of the Wettstein application (footnote 2, supra), evidences similar results with respect to compound D. In the absence of any record evidence that the route of administration is significant or critical for purposes of determining activity — and neither the board nor Wettstein has directed our attention to such evidence — we give no effect to that supposed variance from published experimental procedure in ascertaining the weight otherwise to be accorded the evidence.

In conclusion, and according the evidence on behalf of Campbell the weight to which we think it is entitled, we hold that Campbell has established by the requisite preponderance of the evidence an actual reduction to practice of compounds A, B, C, and D.

As a consequence of its conclusion that none of the biological tests performed by Lyster was adequate to establish an actual reduction to practice, the board also considered whether Campbell had shown — in addition to his acknowledged prior conception — reasonable diligence from a time prior to January 25, 1963, the date of Wettstein’s conception, to his own constructive reduction to practice on April 7, 1965. Inasmuch as we have found that Campbell completed actual reduction to practice of compounds A, B, and C (counts 1, 2, and 4) prior to January 25, 1963, there is no need to discuss diligence with respect to them. As to compound D, since we have found that Campbell conceived compound D on January 14, 1963, and had actually reduced it to practice by January 31, 1963, when he knew the results of the anti-fertility tests on compound D — long before his April 7, 1965, constructive reduction to practice but shortly after Wettstein’s January 25, 1963, date of conception — it becomes necessary to decide only whether Campbell was reasonably diligent from a time prior to January 25, 1963, to his January 31, 1963, date of actual reduction to practice, a period considerably shorter than that considered by the board.

We have no difficulty in determining that there was reasonable diligence with respect to compound D during that period. The record shows that Campbell synthesized compound D on January 14, 1963; that he submitted it for anti-fertility testing and structure analysis on January 16 and 17, 1963; that he received various analytical reports confirming his proposed structure on January 18-21, 1963; that Lyster and Cornette submitted compound D to the anti-fertility assay earlier described on January 21, 1963; that said assay requires approximately nine days to complete; that on completion of said assay the experimental animals underwent autopsy on January 29, 1963, at which time the compound was found to prevent implants at several dosage levels; that Campbell favorably compared the anti-fertility assay activity of compound D with other related steroids, including the commercial steroid “Norlutin,” in a confidential monthly summary report dated January 31, 1963, to his superior, Dr. Hogg; and that Hogg testified that he was informed of the results obtained by Campbell at least as early as February 21, 1963, as shown by his signature appearing on Campbell’s report as of that date. We think those activities constitute reasonable diligence during the critical period beginning prior to January 25, 1963, and nothing Wettstein has argued persuades us to the contrary.

Taxation of Costs

One matter remains, relating to taxation of costs. We have found that 20% of certain papers which appellee Wettstein asked to be included in the transcript of record are unnecessary for a fair understanding and consideration of the issue presented by Campbell’s reasons of appeal. Accordingly, the cost of printing such material is assessed against Wettstein, with the cost of printing the remaining 80% to be assessed against Campbell.

The decision is reversed.

Reversed.

      . Campbell’s application is assigned to the Upjohn Co. and the Wettstein patent is assigned to Ciba Corp., now Ciba-Geigy Corp.

      . That journal article describes the procedure as follows:
      The compounds were administered orally to mature Sprague-Dawley female rats in single daily doses from the day prior to insemination for a total of seven days. On the ninth day of the test the rats were sacrificed and their uteri examined for implantation sites. The “MEDMo” was considered the lowest dose at which no implantation sites were observed.
      In discussing procedure followed by him with respect to Compound D, Cornette confirmed the above modus operandi:
      Q-15 Will you now look at Exhibit Dl-6 and tell me what that is, if you know.
      A It is the same type of record as we were talking about before, where compounds were set up, injected between these dated 1/21 and 1/27, animals were autopsied on 1/29 and pregnancies were determined at that time.
      Interestingly, an affidavit of record filed during the prosecution of the Wettstein application establishes that Ciba personnel followed similar experimental procedure in determining anti-fertility activity of certain steroids, one of which corresponds to Compound D. We quote from the affidavit:
      6. Determination of inhibitory activity on blastocyst implantation by the following procedure:
      Adult female rats were fertilised (fertilisation being confirmed by the presence of spermatozoa in the vaginal smear) and treated for 7 days as from the following day. Autopsy was performed one day after the completion of treatment, and both uterine horns were then examined for nidated blastocysts.
      The results are presented in Table VI. Inhibition of blastocyst implantation in 75% of the animals treated is produced by 3 mg./kg./day s. c. [subcutaneously] of A2 *4 - 3,17p - diacetoxy - 17a - ethinyl - 19 - nor - androstene, and by approximately [sic] 10 mg./kg./day p. o. [orally]. The same response is obtained with 0.3 mg./kg./day of 7a - methly - A4 - 3,17(5 - diacetoxy - 17a - ethinyl - 19 - nor - androstene subcutaneously or orally.
      These results show that 7a - methyl - A4 - 3,17(3 - diacetoxy - 17a - ethinyl - 19 - nor - androstene is 10 times more potent than A4 - 3,17(3 - diacetoxy - 17a - ethinyl - 19 - nor - androstene subcutaneously and about 30 times more potent orally.

      . The three, rather general publications of which the board originally took judicial notice to support its position contain no reference to the signifiance or appropriate scope of screening procedure in the anti-fertility field. The board correctly held, we think, that those materials were not properly part of the record or subject to judicial notice, and properly excluded any reference to them in accordance with its decision on reconsideration.

      . As Campbell has pointed out in his brief, administration of the compounds to the test animals produced no demonstrable symptoms of toxicity over the one-week period and they were tolerated by the animals at dosages of four to 20 times the minimum effective dose for .inhibiting pregnancy.

      . Actually, Lyster was asked on direct examination, and replied affirmatively, whether he now reaffirmed statements he had made in an affidavit earlier filed under Rule 204(c), in evidence as Exhibit G-Supplement 1. There he averred that, prior to November 23, 1962, pregnancy was prevented in rats to which certain amounts of compounds A, B, and 0 in sterile water containing 0.25% methyl cellulose had been administered, whereas “he observed pregnancy in all of the rats treated with only sterile water containing 0.25% methylcellulose.” [Emphasis in original.] There is no documentary evidence in Exhibits A, B, or O which supports that testimony relating to the use of only the sterile water-methyl cellulose material.

      . The board did not find fault with activities on behalf of Campbell during the period January 14, 1963, to February 19, 1963, but found “no evidence relative to continuous activity directed specifically to the compounds of the counts, from a time after February 19, 1963 up to April 7, 1965, the filing date of the involved Campbell application.” [Original emphasis.]


author: MARKEY, Chief Judge.

text:
    Application of Russell M. LUCK and Gordon C. Gainer.
    Patent Appeal No. 8842.
    United States Court of Customs and Patent Appeals.
    April 26, 1973.
    W. D. Palmer, Pittsburgh, Pa., attorney of record, for appellants; Blair R. Studebaker, Pittsburgh, Pa., of counsel.
    S. Wm. Cochran, Washington, D. C., for the Commissioner of Patents; Fred E. McKelvey, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   MARKEY, Chief Judge.

This appeal is from the decision of the Board of Appeals, adhered to on reconsideration, affirming the rejection of all the claims of appellants’ application, serial No. 772,439, filed October 25, 1968, for “Lamp Coating,” as unpatentable under 35 U.S.C. § 103 over Pipkin in view of Crissey et al. and Boyd. We affirm.

The Invention

The invention relates to an external coating for an incandescent lamp envelope (e.g. a Christmas tree lamp) which is adapted to both indoor and outdoor use and may be applied by a dip-coating process. The claims are drawn to the resultant coated glass envelope, claim 1 being representative:

1. A hollow light-transmitting lamp-bulb-shaped glass member adapted to surround a source of radiations, a coating carried on the external surface of, said glass member, said coating comprising a mixture of:
(a) a polymer consisting essentially of polymethylmethacrylate having a tack point temperature of at least 170 °C. and an inherent viscosity of at least 0.44;
(b) from 0.1% to 10% by weight of said polymethylmethacrylate of an organofunctional silane having organic functional groups and silicon functional groups, organic functional groups of said silane reacted with said polymethylmethacrylate and silicon functional groups of said silane reacted with the surface of said glass member to couple said polymethylmethacrylate to said glass member;
(c) from 2% to 20% by weight of said polymethylmethacrylate of an additive organic substance which is at least substantially transparent, has a boiling temperature at atmospheric pressure of at least 250 °C., and is completely soluble in said polymethylmethacrylate polymer within the temperature range of from -40°C to 170° C.; and
(d) said coating having been affixed to said glass member by applying thereon a liquid organic solvent having dissolved therein said polymer, said organofunctional silane and said additive organic substance, and said coated glass member thereafter being baked.

Dependent claims 2-9 define limitations such as specific silanes in (b), organic substances in (c), or coloring substances. Independent claim 10 is drawn to the preferred embodiment, 0.3-3% of component (b) and 5-15% of component (c).

The Prior Art

The primary reference Pipkin discloses glass lamp bulbs externally coated with a lacquer composition which may be based on methacrylate esters. The coating is applied in a mixture of organic solvents, the solvents then being removed.

Crissey et al. disclose methylmethacrylate polymer coatings, pigmented or clear, for ceramic articles, wherein 10-50% by weight (based on the weight of the polymer) of a plasticizer is included. The correlation is set forth between plasticizer and physical properties of the coating, such as cracking, crazing, flexibility and durability. A solvent is employed in application and removed by air-drying or baking.

Boyd, though directed to size compositions for glass fibers rather than coatings for light bulbs, teaches the use of a coupling agent to promote adhesion to the glass fibers of the polymeric coating, which may consist primarily of polymethylthacrylate. Organic silanes are described as suitable agents, with the nature of organic radical not being critical “except the greater the degree of compatibility with the resinous material, the greater the coupling power between the resinous material and the grass surface.” In these particular compositions the silane coupler is present in amounts of 0.-8-3.5% by weight, the polymer 1-7% and the aqueous carrier 75-98%.

The Rejection

The examiner considered it obvious to' modify the basic coating of Pipkin by including the silane coupler of Boyd to improve adhesion and the plasticizer of Crissey et al. to improve the physical characteristics of the coating. An affidavit submitted in an attempt to establish criticality for the upper limit of 10% for the silane in the present coating was found to be unpersuasive. Moreover, determination of optimum amounts of silane for a particular coating was considered within the realm of routine experimentation for one of ordinary skill in the art.

The process limitation set forth in part (d) of claims 1 and 10 was not regarded as significant with respect to patentability of the claimed article for two reasons. First the organic solvent vehicle was no longer present in the product per se and second, an affidavit purporting to demonstrate the difference between the present coating and a coating using an aqueous vehicle provided no actual comparisons thereof.

In sustaining, the board agreed that appellants had failed to show that the use of a somewhat smaller ratio of silane to methacrylate (Boyd using a minimum of 11.4%) was significant. On reconsideration, the observation was added that “[i]t is a routine matter to determine optimum proportions for a given silane.” The correspondence of appellants’ ingredient (c) to conventional plasticizers was noted, a fact made evident by a review of the specification. On the matter of the process limitation, the board stated:

* * * Insofar as the coated glass is concerned, it is immaterial whether the coupling agent was carried in water or in an organic solvent, since the carrier is no longer present in the finished article. In any event, we consider it obvious to use an organic solvent, because this is the vehicle in Pipkin and in Crissey et al.

OPINION

Appellants rest their case for unobviousness on the amount of silane coupler employed in the lamp coatings' and the method of application, as set forth in the process limitation. It is urged that nowhere in the prior art is it suggested to use a silane coupler in the proportions employed by appellants or to apply a coating containing such coupler in an organic solvent. The disclosures of Boyd are said to lead only to the use of much greater amounts of the silane in an aqueous vehicle.

We cannot accept appellants’ contentions. The function of the silane in improving adhesion of polymeric material to a glass substrate was known, as was the effect of the plasticizer on the physical properties of the coating. Under § 103 not only are the teachings of the prior art taken into consideration but also the level of ordinary skill in the pertinent art. Graham v. John Deere Co., 383 U.S. 1, 17, 86 S.Ct. 684, 15 L. Ed.2d 545 (1966). In the present case, we must agree with the Patent Office that the determination of optimum amounts of the silane to achieve its recognized effect would lie within the ambit of ordinary skill in the art. The relevant affidavit of the coinventors evidences no more than routine testing to ascertain the most favorable proportions for this particular application. No critical upper limit is established. No unexpected result is demonstrated. Hence we find no basis for patentability in the amount of silane coupler.

As for the method of application, it is well established that product claims may include process steps to wholly or partially define the claimed product. See In re Brown, 459 F.2d 531, 535, 59 C.C.P.A. - (1972) and the case cited therein. To the extent these process limitations distinguish the product over the prior art, they must be given the same consideration as traditional product characteristics. In the present case, we cannot agree with the Patent Office that the absence of the carrier in the final product renders the carrier immaterial. The method of application could well result in a difference in the coated article, regardless of the fate of the solvent.

But we do find that the Patent Office has established a prima facie case of obviousness for the product even with full weight being given to the process limitation. The Pipkin and Crissey et al. references specifically teach the use of an organic solvent. Hence such a solvent is an obvious alternative to the aqueous carrier of Boyd, no criticality having been taught by Boyd for the combination of silane and water.

Appellants’ affidavit alleging that the use of an aqueous vehicle would result in an “extremely poorly adherent and unsatisfactory” coating fails to provide the rebuttal evidence necessary to overcome this prima facie case. As pointed out by the examiner, no comparative tests are presented for evaluation. Accordingly, on the record before us, the process limitation adds no distinguishable characteristic to the claimed product.

The decision of the board is affirmed.

Affirmed.

      . U.S. 2,781,654, issued February 19, 1957.

      . U.S. 2,934,509, issued April 26, 1960.

      . U.S. 3,082,183, issued March 19, 1963.


text:
    Application of UNIVERSAL OIL PRODUCTS COMPANY. Application of UNIVERSAL OIL PRODUCTS COMPANY.
    Patent Appeal Nos. 8906 and 8933.
    United States Court of Customs and Patent Appeals.
    April 19, 1973.

      John T. Lanahan, Des Plaines, Ill., of record, for appellant; Sidney W. Russell, Arlington, Va., of counsel.
    S. ffm. Cochran, Washington, D. C., for the Commissioner of Patents; John W. Dewhirst, Washington, D. C., of counsel.
    Before MARKEY, Chief Judge, RICH, BALDWIN and LANE, Judges, and ALMOND, Senior Judge.
   RICH, Judge.

These consolidated appeals are from decisions of the Patent Office Trademark Trial and Appeal Board affirming the examiner’s refusal to register two word marks for services. We affirm.

No. 8906 involves the mark PACOL sought to be registered for “research, development, evaluation, market and economic studies, consultation, design, engineering, and technical services in connection with a process for the dehydrogenation of normal paraffins” in Class 100 and for “construction, installation. operation and servicing for others of a process for the dehydrogenation of normal paraffins” in class 103.

No. 8933 involves the mark PENEX sought to be registered for “research, development, evaluation, market and economic studies, consultation, design engineering and technical services for others in connection with an isomerization process.”

The applicant, Universal Oil Products Company, is the same in each case and the evidence it supplied to support the applications is in large part identical. The same legal issues are present in the two appeals. The board decision in PENEX was rendered two months after the decision in PACOL and largely relies thereon for support.

Refusal of registration for both marks was on the ground that the specimens did not evidence use thereof to identify the services named in the applications. The specimens filed demonstrate that PACOL is used by appellant as the name of a process for converting n-paraffins to corresponding n-olefins by direct catalytic dehydrogenation and that PENEX is used as the name of a process for the continuous catalytic isomerization of normal pentane and hexane and mixtures thereof. In each case one specimen is a 12-page brochure entitled “UOP Processing Guide” which describes briefly the PACOL and PENEX processes as well as eleven other processes of “UOP.” Nowhere in this brochure, however, is there a reference to PACOL or PENEX services. The back page of the brochure is headed “WHAT’S YOUR PROBLEM?” and contains a column of description under the subheading “UOP’s engineering, technical and marketing services are available to help you find the answer.” There is no question but that it shows appellant to be in the business of rendering such services. Particularly relied on are the statement in the subheading, just quoted, and the statements thereunder that

UOP is equipped to design and build any plant incorporating any of its processes and to train refinery personnel for its operation and maintenance. * * *
Additionally, UOP offers economic, marketing, and management services to the petroleum industry — * * *.

The essence of the argument in these appeals is that appellant would have us rule that the use of the marks sought to be registered on processes which, presumably, it licenses others to use, coupled with its rendition of services, constitutes use of PACOL and PENEX as service marks under the law.

Section 3 of the Lanham Act (15 U.S.C. § 1053) provides for the registration of “service marks.” Section 45 (15 U.S.C. § 1127) defines “service mark” as “a mark used in the sale or advertising of services to identify the services of one person and distinguish them from the services of others.” The Patent Office position is that, so far as the records in these appeals show, neither PACOL nor PENEX has been so used. We see no error in that conclusion. The requirement that a mark must be “used in the sale or advertising of services” to be registered as a service mark is clear and specific. We think it is not met by evidence which only shows use of the mark as the name of a process and that the company is in the business of rendering services generally, even though the advertising of the services appears in the same brochure in which the name of the process is used. The minimum requirement is some direct association between the offer of services and the mark sought to be registered therefor. See Ex parte Phillips Petroleum Co., 100 USPQ 25 (Com’r. Pats.1953). There is no evidence of such association before us. The advertising of the services is under no mark at all and is in a brochure offering to license or install processes bearing a dozen or more different names.

Appellant would have us hold that “the association of services with a name of a process" is sufficient to warrant registration of that name as a service mark. The argument starts from the premise that PACOL and PENEX are process names rather than marks associated with services. The proposition put to us is that the names of processes ought to be registrable as “service marks” under the Lanham Act. The tenuous reasoning in support of this proposition is based on dictum in In re Radio Corporation of America, 205 F.2d 180, 40 CCPA 1025 (1953), where this court, in discussing registration of the slogan “The Music You Want When You Want It,” said:

We believe it equally true that Congress intended a service mark to function in such a fashion as to identify and distinguish those things of an intangible nature, such as services, in contradistinction to the protection already provided for the marks affixed to those things of a tangible nature such as goods and products.

From this statement appellant argues that service mark registration was set up “not for services alone, but for ‘intangible things’,” that a process is an intangible thing, therefore, a mark or name used for a process should be registrable as a service mark.

We reject this argument. Whatever the court in the Radio Corporation opinion may have intended, we are sure it was not that every mark used in connection with an intangible is registrable as a service mark. No such question was under consideration and the next sentence of the opinion is, “Clearly had Congress intended service marks to apply to goods or products, we believe it would have so stated.” (Emphasis ours.) The discussion was whether the slogan was being used on a radio program or to promote the sale of RCA Victor Red Seal Records. The court held it was being used to promote the sale of records — tangible things — and was therefore not registrable as a service mark and affirmed the Patent Office.

It is clear enough to us that a “process,” per se, is not a “service.” A process can be carried out for oneself or for others; it can be licensed to others to carry out for themselves, which appears to be what UOP does. Carrying out a process for others could be rendering a service as, for example, operating a laundry. But that is not the kind of thing UOP does. It helps others to carry out processes but in so doing or in advertising its willingness to do so in the specimens of record it has not associated PACOL or PENEX with its services. Direct association is the minimum it must show.

The decisions of the board in both appeals are affirmed.

Affirmed.

      . Opinion below reported at 167 USPQ 245.

      . Application serial No. 274,562, filed June 22, 1967.

      . Opinion below abstracted at 167 USPQ 576.

      . Application serial No. 302,157, filed July 5, 1968.

      . Appellant’s brief states that in another application to register PENEX as a service mark a specimen therein includes the statement “Penex and Platforming engineering, technical, and marketing services are available upon request,” and that the application was approved. The Patent .Office brief confirms that registration No. 940,145 was issued thereon on Aug. 1, 1972. The solicitor says this merely “highlights the deficiency in the cases on appeal.”


author: EUGENE A. WRIGHT, Circuit Judge:

text:
    UNITED STATES of America, Plaintiff-Appellee, v. William Hanworth KINCAID, Defendant-Appellant.
    No. 72-1909.
    United States Court of Appeals, Ninth Circuit.
    April 10, 1973.
    As Amended April 30, 1973.
    The United States District Court for the Central District of California, E. Avery Crary, J., found defendant guilty of refusing to submit to induction and of willfully failing to provide the local board with his current mailing address on two occasions, and he appealed. The Court of Appeals, Eugene A. Wright, Circuit Judge, held that although the circumstances may have left registrant confused, he was not relieved of the responsibility of making appropriate inquiries about his draft status, as the plain language of SSS Form 110 should have indicated to him that he should explore the avenues of relief open to him within the Selective Service System; accordingly, under the facts of the case, the failure of the registrant to exhaust his administrative remedies precluded him from raising the defense that his classification had no basis in fact.
    Martha Goldin, Atty. (argued), Alan Saltzman, Saltzman & Goldin, Hollywood, Cal., for defendant-appellant.
    Paul H. Sweeney, Asst. U. S. Atty. (argued), Los Angeles, Cal., for plaintiff-appellee.
    Before WRIGHT and WALLACE, Circuit Judges, and EAST, District Judge.

       Of the District of Oregon.

   EUGENE A. WRIGHT, Circuit Judge:

Appellant was convicted on three counts of an indictment charging him with violating 50 U.S.C. App. § 462(a). In Count I he was charged with refusing to submit to induction on May 25, 1971. In Counts II and III he was charged with willfully failing to provide the local board with his current mailing address on two occasions in 1967, once about June 26 and once about December 12. We affirm the judgment of conviction on Count I and employ the concurrent sentence principle to decline review of Counts II and III.

Appellant contends that his conviction on Count I should be reversed because (1) thei'e was no basis in fact for his I-A classification, and (2) the local board failed to consider his late request for a hardship deferment.

A. Exhaustion of remedies.

The district court found that appellant’s failure to exhaust his administrative remedies within the Selective Service System precluded the court from considering the contention that there was no basis in fact for the I-A classification. Appellant had contended that unusual circumstances gave the district court discretion to excuse the failure to exhaust. The court felt that it had no such discretion in this case. A recitation of the facts is in order.

Appellant first registered with a local board in Santa Barbara, California on January 9, 1967. He was classified I-A on June 15, 1967 and found physically acceptable for service on March 5, 1968. On April 9,1968 he was ordered to report for induction on May 6. He reported as ordered but refused to submit to induction.

On May 17 appellant wrote to the local board explaining that he had refused to submit to induction because of conscientious objection to war. In November of that year he requested, received, completed and returned SSS Form 150, the special form for registrants claiming conscientious objector (1-0 or I-A-O) status.

On February 19, 1969 the United States Attorney’s office declined to prosecute the May 6 refusal and suggested to the local board that it should consider the merits of appellant’s 1-0 claim. The local board did so on April 7, 1969 and decided not to reopen appellant’s classification. Appellant was sent SSS Form C-140L advising him of this action, the form containing no advice of appeal rights as none existed from the refusal of a local board to reopen a classification.

On May 13, 1969 appellant was again ordered to report for induction. At appellant’s request the place of reporting was moved to Oakland and he reported there as.ordered on July 9, 1969 but refused induction. For this refusal he was tried and acquitted in October 1970.

On February 8, 1971 the State Director ordered appellant’s local board to reopen his classification and consider the merits of his 1-0 claim. This was done and the board rejected his claim on March ■ 2. On March 8 appellant was sent SSS Form 110 notifying him of his I-A classification and advising him of his right to appeal. Appellant requested neither a personal appearance nor an appeal. On April 22 he was ordered to report for induction on May 25. It was appellant’s refusal to submit to induction on May 25 that caused this prosecution.

Appellant contends that on these facts the district court should have exercised its discretion and excused the failure to appeal from the I-A classification of March 8, 1971 because appellant was unaware that his 1-0 claim had been rejected. In support of this contention he cites numerous cases in which the courts have relaxed the exhaustion requirement. None is in point, however, in the present case.

In Glover v. United States, 286 F.2d 84 (8th Cir. 1961) the court reversed a judgment of conviction, finding that no basis in fact existed for defendant’s I-A classification and that his failure to exhaust administrative remedies should be excused because of “extremely exceptional and unusual circumstances.” Id. at 91.

In Glover, the facts were that the registrant had appealed once from the denial of his claim for conscientious objector status. Although he had submitted no additional information in support of his claim his classification (and those of all others who had claimed but not been granted 1-0 status) had been reopened at the direction of National Headquarters for re-examination in light of two recent Supreme Court decisions. Defendant did not appeal from the I-A classification issued as a result of reopening but the court of appeals concluded that it would be inequitable to apply the exhaustion doctrine to bar review of his classification under these facts. In view of his earlier, unsuccessful appeal, the court felt that defendant was justified in believing that another appeal would be “repetitious, fruitless and vain.” Id. at 90. See also United States v. Hayden, 445 F.2d 1365 (9th Cir. 1971); United States v. Goss, 6 SSLR 3044 (N.D.Cal.1972); but see United States v. Holby, 345 F.Supp. 639 (S.D.N.Y.1972).

Even if we followed Glover, it would not govern the present case because appellant here had never appealed from the issuance of a I-A classification. It would have been totally unreasonable for him to dismiss as an idle gesture the opportunity to appeal his classification. United States v. Deans, 436 F.2d 596 (3d Cir. 1971).

The other cases cited by appellant are further from the mark. In Donato v. United States, 302 F.2d 468 (9th Cir. 1962), we remanded for further consideration by the district court because of a showing by the defendant that he may have been physically prevented from taking an appeal within the allotted time. See also United States v. Peeler, 5 SSLR 3633 (E.D.N.C.1972).

In Wills v. United States, 384 F.2d 943 (9th Cir. 1967), we excused the defendant’s failure to exhaust administrative remedies for two reasons: first, because his objection to his classification raised a constitutional question “on which the courts have little reason to defer to administrative determination . ” Id. at 945, and second, because the notice of classification from which defendant had not taken an appeal did not tell the full story, to wit, that defendant had been declared a delinquent. The notice of delinquency was not sent until after the time for appeal had expired. Neither factor is present in the instant case.

In United States v. Davis, 413 F.2d 148 (4th Cir. 1969), the court reversed a judgment of conviction because the failure of the local board to advise defendant of the availability of a government appeal agent, as required by Local Board Memorandum 82, deprived defendant of a substantiál procedural right. The court held that failure to exhaust appellate remedies is no bar to the presentation to the court of facts showing that the local board failed properly to advise the registrant of his right to appeal. This holding makes eminently good sense but it has no application where, as here, the local board did follow prescribed procedures in notifying appellant of his right to appeal.

Finally, United States v. Thompson, 5 SSLR 3595 (D.Or.1972), heavily relied upon by appellant, is also factually inapposite. There the court found that the combination of three unique factors was “sufficient to mislead the defendant and to cause his failure to appeal.” These were (a) the unusual classification language written on his Form 110, (b) the fact that unlike on previous occasions no Form 217 (advice of appeal rights) was sent (although the Form 110, as in the present case, did contain such an advice of rights), and (c) the fact that within the time allowed for taking an appeal defendant was sent a notice cancelling an outstanding induction order. Under these circumstances, the court felt that defendant was justified in believing that no action had been taken on his 1-0 claim. As the present case is factually distinguishable we need not decide whether this court should follow Thompson.

Although the circumstances here may have left appellant confused, we cannot accept the premise of appellant’s argument that he was relieved of the responsibility of making appropriate inquiries about his status. The plain language of SSS Form 110 should have indicated to him that he should explore the avenues of relief open to him within the Selective Service System. We said in United States v. Lansing, 424 F.2d 225, 227 (9th Cir. 1970):

“[I]n view of the ease with which appellant could have inquired of the board and learned the true status of his claim, we do not think it unreasonable to hold that he had no privilege to remain in ignorance. ...”

We conclude that the district court was correct in deciding that under the facts of this case it had no discretion to excuse the exhaustion requirement. This case falls well within the settled rule in this circuit that failure to exhaust administrative remedies precludes a registrant from raising as a defense in a criminal prosecution the claim that his classification had no basis in fact. United States v. Maciel, 469 F.2d 718 (9th Cir. 1972); Lockhart v. United States, 420 F.2d 1143 (9th Cir. 1969); United States v. Deans, supra. See also McGee v. United States, 402 U.S. 479, 91 S.Ct. 1565, 29 L.Ed.2d 47 (1971); United States v. Zmuda, 423 F.2d 757 (3d Cir. 1970).

B. The claim for a hardship deferment.

On April 28 and May 21, 1971, subsequent to his receipt of the order to report for induction, appellant told the local board that he was married and that his wife was expecting a child in July and he asked to be considered for a hardship deferment. The clerk conveyed this to the board members who decided that the new informations submitted by appellant did not justify a delay of induction.

Appellant contends that the record shows the information was communicated to the members of the board only in the context of a request for postponement of his induction and that his request for reopening his classification was not considered as such. Assuming that the record supports this contention it is of no help to appellant.

The failure of the board to consider this request for a different classification was prejudicial only if the information made out a prima facie case for a different classification because of a change in circumstances (1) subsequent to the mailing of the induction order (2) beyond the control of the registrant. United States v. Stacey, 441 F.2d 508 (9th Cir. 1971).

The information submitted did not make out such a case. Appellant’s marriage, even if subsequent to April 22, was not an event beyond his control. United States v. Dell’Anno, 436 F.2d 1198 (9th Cir. 1971). If appellant’s wife was expecting a child in July it is apparent that they had anticipated it long before April 22. There was no post-induction order change of status. United States v. Hulphers, 421 F.2d 1291 (9th Cir. 1969).

The conviction on Count I is affirmed.

      . References to “failure to exhaust administrative remedies” in the following discussion describe only the situation where a claim for a classification other than I-A has been presented to the local board but no appeal has been taken from the decision of the board to deny the claim. In judicial opinions the phrase “exhaustion of remedies” is sometimes used to describe the situation where the registrant has made no attempt to seek a classification other than I-A. E. g., United States v. Pringle, 438 F.2d 1216 (1st Cir. 1971); United States v. McDuffie, 443 F.2d 1163 (5th Cir. 1971); United States v. Smogor, 415 F.2d 296 (7th Cir. 1969); Alexander v. United States, 435 F.2d 117 (9th Cir. 1970).
      It is better to distinguish such cases from our present situation. See McKart v. United States, 395 U.S. 185, 204r-207, 89 S.Ct. 1657, 23 L.Ed.2d 194 (1969) (opinion of Mr. Justice White, concurring in the result). Only misleading conduct on the part of the Selective Service System or its agents will excuse the failure by the registrant to present his claim for an exemption or deferment to the local board in the first instance. United States v. Sanders, 470 F.2d 937 (9th Cir. 1972); United States v. Timmins, 464 F.2d 385 (9th Cir. 1972). Accord: United States v. Cordova, 454 F.2d 763 (10th Cir. 1972); United States v. Wilson, 345 F.Supp. 894 (S.D.N.Y. 1972). But see United States v. Fargnoli, 458 F.2d 1237 (1st Cir. 1972). And such misleading conduct operates not to relax the exhaustion doctrine but as a complete defense to the charge.

      . To a certain extent Wills and Wolff v. S.S. Local Board No. 16, 372 F.2d 817 (2d Cir. 1967), anticipated McKart v. United States, 395 U.S. 185, 89 S.Ct. 1657, 23 L.Ed.2d 194 (1969) which held that exhaustion of administrative remedies is not required where the lawfulness of the registrant’s classification turns solely on an issue of statutory (or constitutional) interpretation. See also United States v. Bender, 469 F.2d 235 (8th Cir. 1972); United States v. Eades, 430 F.2d 1300 (4th Cir. 1970); Ramos v. United States, 319 F.Supp. 1207 (D.R.I.1970). Cf. United States v. Davila, 429 F.2d 481 (5th Cir. 1970).


author: PER CURIAM:

text:
    Lieutenant (JG) Daniel S. ISBIT, Petitioner-Appellant, v. SECRETARY OF DEFENSE et al., Respondents-Appellees.
    No. 72-2187.
    United States Court of Appeals, Fifth Circuit.
    April 18, 1973.
    Gerald H. Goldstein, San Antonio, Tex., for petitioner-appellant.
    Anthony J. P. Farris, U. S. Atty., James R. Gough, Olney G. Wallis, Asst. U. S. Attys., Houston, Tex., for respondents-appellees.
    Before COLEMAN and SIMPSON, Circuit Judges and ESTES, District Judge.
   PER CURIAM:

Lt. (JG) Daniel S. Isbit, a commissioned officer in the regular United States Navy, submitted an application for discharge as a conscientious objector. The application was formally denied by the Chief of Naval Personnel, Lt. Isbit then filed his petition for the writ of habeas corpus in the United States District Court for the Southern District of Texas, seeking release as a conscientious objector. The District Court not only reviewed the administrative record and briefs of counsel but proceeded to hear testimony oliunde the administrative record upon which Lt. Isbit’s application for discharge had been denied.

The primary issue in this kind of habeas corpus proceeding is whether the denial of the discharge had a “basis in fact”.

Over objection, the District Court heard testimony from Admiral Billy D. Holder, Chief of the Naval Air Advance Training at Corpus Christi, as to factors bearing upon Isbit’s conscientious objector status.

One week after this Court heard oral argument in this appeal, the Supreme Court of the United States decided Camp v. Pitts, 411 U.S. 138, 93 S.Ct. 1241, 36 L.Ed.2d 106.

The judgment of the District Court in this case should be reconsidered in the light of that decision.

In particular, the District Court should decide from the same record which the naval authorities had before them the issue of whether there was a basis in fact for the denial of conscientious objector status to Isbit, In Re Tavlos, 5 Cir., 1970, 429 F.2d 859, 863; Helwick v. Laird, 5 Cir., 1971, 438 F.2d 959, 965.

The judgment of the District Court is vacated and remanded for further proceedings not inconsistent herewith.

Vacated and remanded.


text:
    Eloise ADELT, Appellant, v. RICHMOND SCHOOL DISTRICT, etc., et al., Appellees.
    No. 26796.
    United States Court of Appeals, Ninth Circuit.
    April 9, 1973.
    Eloise Adelt, in pro. per.
    John B. Clausen, Contra Costa County Counsel (no appearance), Martinez, Cal., for appellees.
   OPINION

Before HAMLEY, DUNIWAY and ELY, Circuit Judges.

PER CURIAM:

The Order of dismissal by the District Court is affirmed.

It is apparent that this appeal arises from a suit wherein the appellant sought to relitigate issues which had theretofore been resolved adversely to her, both in the California and Federal Courts. See Adelt v. Richmond School District, 250 Cal.App.2d 149, 58 Cal.Rptr. 151 (1967); Adelt v. Richmond School District, 439 F.2d 718 (9th Cir. 1971).


text:
    NATIONAL LABOR RELATIONS BOARD, Petitioner, v. GOSHEN LITHO, INC., Respondent.
    No. 591, Docket 72-2013.
    United States Court of Appeals, Second Circuit.
    Argued March 26, 1973.
    Decided April 18, 1973.

      Joseph A. McCabe, Rockville Centre, N. Y. (McCabe & Huschle, Rockville Centre, N. Y., of counsel), for respondent.
    William L. Corbett, Atty., N. L. R. B. (Peter G. Nash, Gen. Counsel, Patrick Hardin, Associate Gen. Counsel, Marcel Mallet-Prevost, Asst. Gen. Counsel, and Paul J. Spielberg, Atty., N. L. R. B., of counsel), for petitioner.
    Before FRIENDLY, Chief Judge, LUMBARD, Circuit Judge, and THOMSEN, District Judge.

       Of the District Court for the District of Maryland, sitting by designation.

   PER CURIAM:

The National Labor Relations Board seeks enforcement of its order issued against Goshen Litho, Inc. (Company) on May 9, 1972. In its decision and order, 196 NLRB No. 139, the Board found that the Company (A) had violated § 8(a)(1) and (2) of the NLRA by its coercive activities directed toward two local unions and its support and assistance to a third, and (B) had violated § 8(a) (3) and (1) by discharging or laying off four employees in 1968 and five employees in 1970 and constructively discharging R. Bradshaw, another employee, because of their union activities. It ordered that a third election be held, that the Company cease and desist specified activities, and that the Company “make whole” the ten employees in the manner directed by the Trial Examiner and reinstate R. Bradshaw to his former position or a substantially equivalent position, without prejudice to his seniority or other rights and privileges. The Company contends that substantial evidence on the whole record does not support finding (B), above.

We are satisfied that the findings of the Board are supported by substantial evidence on the record considered as a whole, with one exception: we find incredible the testimony that R. Bradshaw was directed to clean up oil under a press while it was in operation, and conclude that there is no substantial evidence on the record considered as a whole to support the finding that his walking off the job was caused by harassment or that he was constructively discharged.

Except for the relief directed to be given R. Bradshaw, the order of the Board will be enforced.


text:
    UNITED STATES of America, Appellee, v. John Wyatt MULLINS, Jr., Appellant.
    No. 72-2348.
    United States Court of Appeals, Fourth Circuit.
    Argued March 8, 1973.
    Decided April 10, 1973.
    Robert W. Mann, Stuart, Va. (court-appointed counsel), for appellant.
    Ronald D. Hodges, Asst. U. S. Atty. (Leigh B. Hanes, Jr., U. S. Atty., on brief) for appellee.
    Before BRYAN, Senior Cricuit Judge, and WINTER and BUTZNER, Circuit Judges.
   PER CURIAM:

Having before been convicted of a felony, John Wyatt Mullins, Jr. on February 11, 1972 in Martinsville, Virginia, was found in possession of a .32 caliber Clarke revolver. Thereafter he was convicted in the District Court of a violation of 18 U.S.C. App. 1202(a), punishing any felon “who receives, possesses, or transports in commerce or affecting commerce . any firearm. . . . ”

In addition to his possession of the revolver, the undisputed evidence showed that it had been transported from Santa Monica, California to Atlanta, Georgia on March 12, 1971, and from there shipped on September 30, 1971 to a department store in Martinsville. ' The trial court charged the jury ‘-‘that the Government may meet its burden of proving a connection between commerce and the receipt or possession of a firearm by a convicted felon if it is demonstrated that the firearm received or possessed by a convicted felon had previously traveled in interstate commerce”. On Mullins’ appeal this instruction is assigned as reversible error. His point is that the Government had to establish a nexus between the receipt or possession of the revolver and its movement in interstate commerce, and none was proved.

We think the instruction was correct and the verdict of guilty thereunder unimpeachable. United States v. Bass, 404 U.S. 336, 350, 92 S.Ct. 515, 30 L.Ed.2d 488 (1971); United States v. Brown, 472 F.2d 1181 (6 Cir., 1973); United States v. Giannoni, 472 F.2d 136 (9 Cir., 1973).

Affirmed.


author: MURRAH, Circuit Judge.

text:
    Richard L. ANDERSON, Plaintiff-Appellant, v. David W. REYNOLDS and W. L. (Joe) Gee, Defendants-Appellees.
    No. 72-1443.
    United States Court of Appeals, Tenth Circuit.
    April 10, 1973.
    Ronald C. Barker, Salt Lake City, Utah, for plaintiff-appellant.
    Veri R. Topham, and Harold G. Christensen, Worsley, Snow & Christensen, Salt Lake City, Utah, for defendantsappellees.
    Before MURRAH, SETH and DOYLE, Circuit Judges.
   MURRAH, Circuit Judge.

In this suit against state narcotics agents, Dr. Anderson seeks redress in damages for the deprivation of his civil rights by wrongful arrest. During a routine drugstore investigation the agents noticed that an unusually large number of narcotics were being prescribed by the physician. The agents then visited Dr. Anderson’s office, gave him the Miranda warnings, and asked to see his patient-treatment records. Dr. Anderson produced Treasury Department records showing orders from drug suppliers, but refused to produce other records requested by the agents. At a subsequent, similar meeting the agents informed Dr. Anderson that it was a crime to refuse access to the requested records, but the doctor again declined to comply with their requests.

Upon this disclosure to the Salt Lake County Attorney’s Office, the Chief Criminal Deputy prepared a complaint charging Dr. Anderson with failure to permit inspection of records in violation of Section 58-13a-34, U.C.A., 1953, and authorized issuance of a warrant for Dr. Anderson’s arrest. The complaint was sworn to in the presence of a Municipal Judge, and the warrant issued. Dr. Anderson was then arrested at his office. These charges were subsequently dismissed prior to preliminary hearing, and Dr. Anderson’s wife was convicted of forgery of the questioned prescriptions. The physician then filed this suit, alleging that the narcotics agents deprived and conspired to deprive him of his civil rights by arresting him in retaliation for his refusal to permit inspection of his patient-treatment records, thereby injuring his professional reputation in violation of 42 U.S.C. §§ 1983 and 1985 (3).

Pursuant to a jury-waived trial, the trial court, D.C., 342 F.Supp. 101, held upon to decide here. Dr. Anderson does that the investigation was conducted in good faith, that the agents made full and fair disclosure to the County Attorney’s Office and the Municipal Judge, and that the arrest was neither the result of any conspiracy nor a violation of civil rights. We affirm the judgment for the defendants.

Dr. Anderson contends that the patient-treatment records requested by the agents are privileged records under Section 78-24-8(4), U.C.A., 1953, which provides that a physician cannot be “examined, in a civil action,” as to information required in attending to his patients. But the physician-patient privilege, recognized and protected by that section, is specifically confined to civil actions, and manifestly has no applicability to investigations under Section 58-13a-34, U.C.A., 1953. Dr. Anderson further contends that he is not required to keep or permit inspection of the records demanded by the agents, inasmuch as the record-keeping statute pertains only to drugs administered, dispensed, or professionally used by him “otherwise than by prescription,” and, additionally, that his privileges against unreasonable searches and seizures and self-incrimination under the Fourth and Fifth Amendments protect him against a warrantless search of his records. These contentions present interesting questions, but not the ones we are called upon to decide here. Dr. Anderson does not contend that his records were illegally searched; rather, his claim is that his arrest was a “penalty” imposed upon him because he refused to permit such an inspection — a claim of malicious prosecution. Cf., e. g., Madison v. Mantor, 441 F.2d 537 (1st Cir. 1971). “Under the prevailing view in this country a peace officer who arrests someone with probable cause is not liable for false arrest simply because the innocence of the suspect is later proved.” See Pierson v. Ray, 386 U.S. 547, 555, 87 S.Ct. 1213, 1218, 18 L.Ed.2d 288 (1967). And see also Valdez v. Black, 446 F.2d 1071 (10th Cir. 1971). Nor is he liable if the law under which he acts is subsequently invalidated. See Pierson, supra. Our only question, then, is whether Dr. Anderson’s arrest was justified by a showing of probable cause.

Based upon painstaking findings of fact, the trial court concluded that the prosecution was reasonably warranted and was, therefore, instituted in good faith; that the warrant of arrest, having been issued by a judicial officer upon the sworn complaint prepared by the County Attorney’s Office, cannot be the basis for civil rights or false arrest liability against the enforcement officers who executed it.

The judgment is affirmed.

      . Sections 58-13a-21 and 58-13a-25, U.C.A., 1953, provide in presently material part that every physician shall keep a record of drugs administered, dispensed, or professionally used by him other than by prescription.

      . Section 58-13a-34 provides that prescriptions, orders, and records required under the registration sections shall be opened for inspection by federal, state, county, and municipal officers whose duties include enforcement of the narcotics laws.

      . Section 1983 provides in presently material part that every person who, under color of any statute, causes any person to be deprived of any rights, privileges, or immunities secured by the Constitution and laws, shall be liable to the party injured in an action at law, suit in equity, or other proper proceeding for redress. Section 1985 provides in presently material part that if two or more persons, conspire for the purpose of impeding, hindering, obstructing, or defeating, in any manner, the due course of justice, with intent to deny to any citizen the equal protection of the laws, or to injure him or his property for lawfully enforcing or attempting to enforce, the right of any person to the equal protection of the laws, the party so injured or deprived may have an action for the recovery of damages, against the conspirators.

      . Cf. e. g., United States v. Biswell, 406 U.S. 311, 92 S.Ct. 1593, 32 L.Ed.2d 87 (1972), with Colonnade Catering Corp. v. United States, 397 U.S. 72, 90 S.Ct. 774, 25 L.Ed.2d 60 (1970). See also, e. g., Camara v. Municipal Court of the City and County of San Francisco, 387 U.S. 523, 87 S.Ct. 1727, 18 L.Ed.2d 930 (1967); and Spevack v. Klein, 385 U.S. 511, 87 S.Ct. 625, 17 L.Ed.2d 574 (1967).


author: VAN DUSEN, Circuit Judge.

text:
    UNITED STATES of America v. Thomas Peter VALLEJO et al. Appeal of David MILLER.
    No. 72-1439.
    United States Court of Appeals, Third Circuit.
    Argued Dec. 8, 1972.
    Decided April 3, 1973.

      John J. Flynn, Flynn, Kimerer, Thinnes & Galbraith, Phoenix, Ariz., for appellant.
    Robert E. J. Curran, U. S. Atty., Jeffrey M. Miller, Asst. U. S. Atty., Philadelphia, Pa., for appellee.
    Before VAN DUSEN, GIBBONS and HUNTER, Circuit Judges.
   OPINION OF THE COURT

VAN DUSEN, Circuit Judge.

David Miller appeals that May 22, 1972, district court order denying his motion to withdraw before sentencing his guilty plea to Count I of a five-count indictment. Miller also contends that the court failed to comply with F.R.Crim.P. 11 when he was not advised of his privilege against self-incrimination and that this failure should render his plea invalid. We have carefully examined the record and conclude that each of these contentions is without merit. We therefore affirm.

The district court opinion fully sets forth the facts. See United States v. Miller, Crim. No. 71-229 (E.D.Pa. May 22, 1972). For our purposes, it is only necessary to briefly summarize the events that transpired prior to Miller’s sentencing.

Miller had been indicted along with six others on charges relating to the illegal transportation of a ton of marijuana. After his arrest, Miller offered to act as an informer for the Government. On November 5, 1971, he filed a motion to dismiss the indictment against him, or, in the alternative, to permit him to enter a plea of guilty to a non-mandatory count of the indictment. His motion was premised on the claim that the Government breached its agreement to dismiss the charges against him. He alleged that the Government’s promise had been made in return for his promise to act as an informer and to provide sufficient information that would lead to the successful prosecution of other persons involved in the sale and distribution of narcotics. The Government opposed this motion, claiming Miller failed to perform his side of the bargain. A series of evidentiary hearings were conducted beginning on November 11, 1971, and continuing until November 23, 1971, where Miller produced evidence in support of his motion.

Meanwhile, the trial, with Miller and four other defendants, commenced on November 15 and continued on a daily basis until December 3. However, on November 23, 1971, Miller, in the presence of the court and his counsel, agreed to withdraw his motion, with prejudice, and requested leave of the court to change his not guilty plea to Counts I and V of the indictment to guilty. The court accepted his plea. Sentencing was postponed from February 24, 1972, until May 4, 1972. On the day of sentencing, Miller presented the court with a motion to withdraw his guilty plea pursuant to F.R.Crim.P. 32(d).

Although Rule 32(d) does not establish a standard governing the withdrawal of a plea prior to sentencing, the district court may, in its discretion, permit a defendant to substitute a plea of not guilty “if for any reason the granting of the privilege seems fair and just. . . .” Kercheval v. United States, 274 U.S. 220, 224, 47 S.Ct. 582, 583, 71 L.Ed. 1009 (1927) (emphasis supplied); United States v. Young, 424 F.2d 1276, 1279 (3d Cir. 1970). However, this is not an absolute right to be made in a vacuum without reference to surrounding circumstances. See United States v. Stayton, 408 F.2d 559, 561 (3d Cir. 1969); cf. United States ex rel. Culbreath v. Rundle, 466 F.2d 730 (3d Cir. 1972).

Acceptance of a motion to withdraw a plea of guilty lies within the sound discretion of the trial court and its determination will only be disturbed where it has abused its discretion, United States v. Stayton, supra, 408 F.2d at 561. There has been no abuse of discretion in denying Miller’s motion to withdraw his guilty plea. The trial court properly considered the substantial prejudice that would have resulted to the Government if Miller’s motion had been granted. It noted:

“Witnesses for the government who were presented in opposition to the defendant’s motion to dismiss the indictment and who were trial witnesses had been assembled to appear in Philadelphia from several far western and southwestern states. Testimony most damaging to the defendant and which resulted in guilty verdicts against co-defendants had been received in evidence prior to the defendant’s change of plea.
“Finally it appears appropriate to again point out that Miller changed his plea on November 23rd, 1971. He waited until the day of sentencing, a time factor of almost six months, before filing the motion under consideration.” United States v. Miller, supra, at 7.

Furthermore, Miller’s request to withdraw his plea appears to be merely a reassertion of the same allegations raised in his earlier motion. Miller withdrew that motion with prejudice on the advice of his counsel on the basis of a carefully worked out stipulation between him and the Government. Nevertheless, he claims that at the time he entered his plea of guilty to the mandatory count of the indictment, he relied upon United States v. Stephens, 449 F.2d 103 (9th Cir. 1971), which provided that one who was convicted before the effective date (May 1, 1971) of 21 U.S.C. § 844(a) and (b) (The Comprehensive Drug Abuse Prevention and Control Act of 1970), but sentenced after such effective date, could receive less than the sentence provided under 21 U.S.C. § 176a and 26 U.S.C. § 7237(d). 21 U.S.C. § 176a specified mandatory sentences of not less than five, nor more than twenty, years. The new Act does not prescribe any mandatory minimum sentence and permits the grant of probation. After Miller entered his plea and prior to March 11, 1972, the Second Circuit, in United States v. Fiotto, 454 F.2d 252 (2d Cir. 1972), and the First Circuit, in United States v. Bradley, 455 F.2d 1181 (1st Cir. 1972), aff’d, 410 U.S. 605, 93 S.Ct. 1151, 35 L.Ed.2d 528 (1973), rejected the rationale of Stephens. The Supreme Court in Bradley stated (410 U.S. 609, 93 S.Ct. 1155):

“The District Judge had no power to consider suspending petitioners’ sentences or placing them on probation. . . . The mandatory minimum sentence of five years must therefore be imposed on offenders who violated the law before May 1,1971. And Congress specifically provided that § 4208(a) does not apply to any offense ‘for which there is provided a mandatory penalty.’ ”

We note that Judge Adams’ opinion in United States v. Caldwell, 463 F.2d 590 (3d Cir. 1972), relied, in part, on the reasoning of the Supreme Court of the United States in Bradley, supra.

A change in the law subsequent to the entry of a guilty plea is not, in and of itself, a ground for its withdrawal, where the plea is knowingly entered on the advice of counsel. See McMann v. Richardson, 397 U.S. 759, 773-774, 90 S.Ct. 1441, 25 L.Ed.2d 763 (1970); Brady v. United States, 397 U. S. 742, 757, 90 S.Ct. 1463, 25 L.Ed.2d 747 (1970). While Miller may have harbored a wistful hope that he would be sentenced to less than five years, the court made abundantly clear prior to accepting the guilty pleas, as the following colloquy indicates, that he knowingly ran the risk of a substantial jail sentence and fine:

“Q. Are you pleading guilty because you are in fact guilty to the two counts ?
“A. Yes.
“Q. What is the maximum?
“A. Thirty years.
“Q. What is the fine?
“A. Thirty-five thousand dollars.
“Q. Knowing that you wish to enter the plea?
“A. Yes.
“Q. Has anybody brought any pressure to bear on you from the government?
“A. No.
“Q. Anyone made any promises of ■leniency from the government or anywhere else ?
“A. No, sir.
“Q. Anybody told you what I am going to do with you?
“A. No, sir.
“Q. Are you making this of your own volition?
“A. Yes.”

(N.T. 56, Nov. 23, 1971)

Therefore, we are unable to say the district court abused its discretion when it denied Miller’s request.

The defendant’s other contention that Rule 11 of the Federal Rules of Criminal Procedure and McCarthy v. United States, 394 U.S. 459, 89 S.Ct. 1166, 22 L.Ed.2d 418 (1969), required the trial court to advise him. of his privilege against self-incrimination is equally without merit. McCarthy did not require the courts to develop a litany, or fixed formula, when addressing a defendant; but, rather, requires the courts “to inquire into the defendant’s understanding of the nature of the charge against him, and whether the defendant possesses an understanding of the law in relation to the facts.” United States v. Cantor, 469 F.2d 435, 438 (3d Cir. 1972).

This court, in Davis v. United States, 470 F.2d 1128 (3d Cir. 1972), rejected a similar contention that a failure to specifically advise a defendant of his privilege against self-incrimination invalidated his plea. In Davis we held that “. . . once the court has satisfied itself . . . that the guilty plea was made knowingly and voluntarily, an independent warning against self-inerimination becomes unnecessary.” Id. at 1132. The record makes clear that the defendant acted knowingly and voluntarily with full realization of the effect of his plea.

The district court judgment of conviction will be affirmed. However, the illegal three-year sentence on Count 1 will be vacated and the case will be remanded to the district court for sentencing on both Counts I and V in accordance with Bradley v. United States, supra.

      . Miller entered a plea of guilty to Counts I and V of the indictment. Count I charged him with conspiring to import marijuana in violation of 21 U.S.C. § 176a. Section 176a specified a mandatory sentence. See infra. Count V charged a conspiracy to transport marijuana in violation of 26 U.S.C. § 4755(b), which does not contain a mandatory sentencing requirement.
      Miller only sought to withdraw his plea to Count I.

      . Rule 32(d) provides, inter alia:

      “A motion to withdraw a plea of guilty . . . may be made only before sentence is imposed or imposition of sentence is suspended. . . . ”

      . Compare a Rule 32(d) motion to withdraw a plea of guilty prior to sentence with the standard after sentence is imposed. “. . . [T]o correct manifest injustice the court after sentence may set aside the judgment of conviction and permit the defendant to withdraw his plea.”

      . The Supreme Court in Bradley v. United States, supra, granted the petition for writ of certiorari in order to resolve the conflict between the First and Ninth Circuits. Our decision in United States v. Caldwell, 463 F.2d 590 (3d Cir. 1972), relying on the reasoning of the First Circuit opinion in Bradley, is in accordance with the Supreme Court’s decision and held that the penalties prescribed by 26 U.S.C. §§ 4705(a) and 7237(b) and (d) are preserved for prosecutions commencing prior to May 1, 1971, even though the sentence was imposed after that date.
      The issues discussed by the Court in Bradley were whether the trial court may impose a sentence of less than the mandatory minimum sentence prescribed by 26 U.S.C. §§ 4705(a) (1964 ed.) and 7237(b) (1964 ed. and Supp. V), suspend the sentence, place the offender on probation, or specify that he be eligible for early parole, where that offender had been convicted of a federal narcotics offense committed before May 1, 1971, but sentenced after that date. See id. at 606 of 410 U.S. 93 S.Ct. 1151. The reasoning of Bradley establishes that the District Judge in this case had no choice but to impose sentence on Count I in accordance with the five-year mandatory minimum sentencing requirements of § 176a (see also 26 U.S.C. § 7237(b) and (d)), which were in effect prior to May 1, 1971.

      . Miller was sentenced on May 4, 1972, on Count I to three years’ imprisonment. The sentence of three years under Count I does not conform with our decision in Caldwell, supra, or the recent Supreme Court decision in Bradley, supra. See note 4.