The Professional Approach
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quickapplication now, and later on when you have more information, abandon itand file a good, full-scale application."
I looked at him in surprise and said, "But somebody else has just asmuch information as we have, and he may start to experiment right away.That technician knows as much as we do. In another six months they couldfile a complete application and beat us out on dates; they'd be firstwith the complete application."
"Well, what do you propose to do about it?"
I shrugged. "I'll have to make up as good an application as I can rightnow. We'll make some guesses at how the research would go, and put itin."
"Oh now, look. You don't know"--he began ticking off the points on hisfingers--"if you really need the trialkyl aluminum, or themercury-treated glass surface, or the heat, or the radiation, or anycombination of them. You don't have any idea of the conditions that arenecessary to produce this paper."
"I know."
"All you've got is a single example that works. If you make your claimsbroader than that one example, the Examiner will reject you for lack ofdisclosure. This is basic in patent law. Ex parte Cameron, Rule 71, and35 U.S.C. 112 will do for a starter."
But I hadn't worked with Mr. Spardleton for nine years for nothing, andhe had taught me how to play this game pretty well. I sat up straighterin my chair and said, "Yes, but in Ex parte Dicke and Moncrieff thedisclosure of nitric acid as a shrinking agent for yarns was enough tosupport a claim for shrinking agents broadly; the claim did not have tobe limited to nitric acid."
"Only because nitric acid was already known to be a shrinking agent foryarns."
I said, "Well, adipic acid is a known polyester ingredient."
"And all the other ingredients?"
I did then what he had carefully taught me to do when I was losing anargument: I quickly shifted to another point. "In Ex parte Tabb theapplicant merely disclosed raisins and raisin oil, but that was enoughto support claims to 'dried fruit' and 'edible oil'."
"But in that case the Board of Appeals said they allowed suchterminology only because the equivalency of the substances could beforeseen by those skilled in the art, foreseen with certainty, too. Canyou say that about your substances?"
I hesitated before I answered, and that was all he needed to take over."A large number of ingredients was recited in In re Ellis, and sincethere was no evidence to show that they all would not work, theapplicant was allowed broad claims. But you'd have trouble making yourguessed-at ingredients stick. In the case of Corona Cord Tire Company v.Dovan, the court said the patentee was entitled to his broader claimsbecause he proved he had tested a reasonable number of the members of achemical class. Have you?"
I started to answer, but Mr. Spardleton was in full swing now, and hesaid to me, "No, sir, you haven't. You are not ready to put in broadclaims on a half-baked invention."
It was the "half-baked" that did it. Controlling my temper I rose to myfeet and said in a purposeful, quiet voice, "I think I see clearly howthis case should be handled in this situation. I shall prepare it inthat manner, and file it, and prosecute it, and obtain a strong patenton a pathfinder invention. I'll keep you posted." I turned and walkedout. Just as I passed through the door I thought I heard him say softly,"Attaboy, Carl," but I must have been mistaken. Mr. Spardleton nevercalls me Carl.
* * *
I got right at it the very next morning. I opened the office myself andbegan studying my notes to see how broad a claim I could write for theTearproof Paper Case. I listed all the ingredients in one column, andthen filled up the adjacent columns with all the possible substitutes Icould think of. I didn't even know it when Susan arrived at the office,stood in my doorway for a moment, and then tip-toed away. Later on Mr.Spardleton looked in on me, and I wasn't aware of that, either. It wasten o'clock before I finally came up for air, and then I dashed out tothe Marchare Laboratory for another talk with Callahan. I explained howI was going to handle the case to make sure we got a good, broad patentapplication into the Patent Office.
"Can you do that?" he asked.
"Oh, yes. We can put in all the things we think will work, but if we arewrong we are in some degree of trouble. But I feel that with both of usworking on this we ought to be able to turn out a good sound job. I'llkeep sending you drafts out in San Francisco until we finally get one wethink good enough to file. But we can't waste time. This is a hot one,and we want to get it in as soon as possible."
He shrugged his shoulders, and we sat down to work on my lists. Neitherone of us realized it when lunch time came and went. But that's the wayit is with world-beater inventions; they sweep you along. Early thatafternoon I dictated my first draft to Susan. Callahan and I went overthe draft, and then he left for San Francisco. The next time around wehad to use air mail. With each new draft we added more to the basicinformation we had, rounding out the invention in ever greater detail. Iadded example after example, being careful to state them in the presenttense; I did not want to give the impression that the examples hadactually been run.
In a month's time I checked with John Bostick. Bostick had been able toduplicate Callahan's work, and we had three more, flimsy, diaphanoussheets that could not be torn by human hands. That was all I needed. NowI knew that anyone could duplicate the Tearproof Paper, and I had atleast one, good, substantial working example for my patent application.The knowledge gave me greater confidence in the alternate materials andprocedures that Callahan and I had dreamed up. I prepared a final draftcontaining twenty-three pages of detailed specification and elevenexamples and topped it all off with forty-six claims. It was amagnificent application, considering what I had to start with. I handedit to Mr. Spardleton and sat down to hear what he had to say about it.
I watched him out of the corner of my eye as he read it, and I had thepleasure of seeing his cigar slowly swing outward until the glowing endwas almost beneath one of his ears. This, I knew, was his AmazedPosition, and it was rare indeed that I or anyone else ever saw it. Mr.Spardleton was a man who does not amaze easily.
He finished and looked up at me and said, "I assume this is the sameinvention you told me about last month?" When I nodded he continued,"And I further assume that you have no experimental data in addition tothat you described last month?" Again I nodded, and he said, "All ofthis is paperwork with the exception of Example I?" I nodded again, andhe put the draft down in front of him and stared at it.
I began to grow uncomfortable in the silence. Then he said, so softlythat I could hardly hear him, "I remember, many, many years ago,answering the phone, Cliff Norbright--great chemist--telling me he hadsmelled phenol when he heated ethylene chlorohydrin in the presence ofholmium-treated silica gel in a test tube. I wrote the greatest patentapplication of the age based on that evidence. Just like this one." Helaid a hand on it, and shook his head, and smiled.
"There is no crude guesswork on this product," I said. "The work hasbeen duplicated, and I've seen many specimens of this paper. I tell you,sir, there never has been anything like it. Why, even Callahan ..."
"Yes, tell me about Dr. Callahan. He is usually a pretty conservativefellow. How does he feel about this completely untried product?"
I sat up straighter. "This is not an untried product, Mr. Spardleton. Ithas been made and duplicated. It has all the properties that theapplication says it has. And Dr. Callahan has just as much faith in itas I have."
Mr. Spardleton looked at me, and smiled, and slowly handed over thedraft. "Mr. Saddle, I wish you all the best in your prosecution of thiscase. Please call on me if there is anything I can do to help. In anyway, don't hesitate to call on me."
I stood up and took the draft and turned to go, but Mr. Spardletonthrust his hand out. I shook it and said, "Is anything wrong with it?"
"Not that I am able to see, Mr. Saddle. It is a most remarkable job, andbespeaks of ingenuity, resourcefulness, and skill. You have come a longway to be able to write such an application."
I didn't know what to say, so I smiled and bobbed my head and walked outst
ill looking at him and smiling, which made it necessary for me to walksideways, and thus made me look, I suppose, somewhat like a crab.
Susan put the case in final form. We sent the papers to California forCallahan's signature, then we filed the case, and things got back tonormal with me. It was a great relief not to have the strain on me nightand day. That's the trouble with an important case. You live with it toomuch.
* * * * *
It was seven months before I got the first Office Action in the Case. Iread the first few paragraphs and they were quite normal. They rejectedthe Case in the usual manner by citing prior patents that had nothing todo