The Professional Approach
Page 4
with my application. This kind of thing was just part of the game ofprosecution in which the Patent Examiner makes rejections because thatis what he is supposed to do no matter what the invention; they don'thave to make much sense. But then came a paragraph that went way beyondgood sense and proper rejection technique. It said:
_The specification is objected to as containing large portions that aremerely laudatory. See Ex parte Grieg, 181 OG 266, and Ex parteWellington 113 OG 2218. These portions are superfluous and should bedeleted, Ex parte Ball, 1902 CD 326. The specification is unnecessarilyprolix throughout and contains an unduly large number of embodiments, Exparte Blakemen, 98 OG 791. Shortening is required._
I didn't wait. I grabbed the file of the Case and almost ran over to thePatent Office to straighten out the Examiner on a few things. As usual,Herbert Krome was the Examiner, so I charged up to his desk andimmediately began explaining to him the importance of the TearproofPaper Case. He seemed to pay no attention to me, but I knew him; he waslistening. When I finally paused to let him say something, he looked atme quizzically and said, "Mr. Saddle, aren't you aware of the Notice ofOctober 11, 1955?"
I looked at him blankly and said, "What's that?"
"It says that interviews with Examiners are not to be held on Fridaysexcept in exceptional circumstances."
I gulped and said, "Is today Friday?"
He pushed his desk calendar toward me. It was Friday all right, and thethirteenth at that. I was too embarrassed to speak, and I got up andbegan to walk out. Mr. Krome called after me. "This must be an importantcase, Mr. Saddle. I'll expect to see you the first thing Monday." Inodded, and left.
By Monday, my embarrassment had not diminished. I had really done anunheard-of thing in patent prosecution. In patent prosecution, thepatent attorney has six months to respond to an Office Action. Sinceattorneys carry a docket of cases adapted to fill all their time, anattorney in most instances requires the full six months to respond to anoutstanding Office Action. Industrious attorneys with relatively lightdockets might respond in five months' time. This may also happen whenthe attorney is trying to get a little ahead so he can go on a vacation.There are rare instances of record when an attorney had taken someaction in three or four months. But here, in the Tearproof Paper Case, Ihad actually gone for an interview on the very first day. I couldn'tpossibly go back on the following Monday; my pride would not allow me. Iwaited until Tuesday.
By that time I had gone over the entire rejection and planned mycomplete response to the Examiner. I sat down with Mr. Krome on Tuesdaymorning and talked steadily for fifteen minutes before I realized he waswatching me instead of paying attention to the case. I said, "What's thematter."
He said wonderingly, "I've never seen you like this before. You areacting almost as unreasonably as an inventor. You don't even want tohear what I have to say about this case. You should relax, Mr. Saddle.You are here as an advocate, not as a midwife."
"I don't think that's very funny, Mr. Krome," I proceeded to explain thehigh merit of the case, and he seemed to listen then. Before I left hepromised to give the case careful consideration. This was all he everpromised, so I thanked him and went back to my office. I filed myamendment in the case the next day. It was eight months before I got thenext Office Action.
* * *
Callahan returned in six months and immediately opened a project on theTearproof Paper. The two of us sat down together to determine the bestway to handle the research.
I said, "Henry, we have already drawn up a complete research program.All we have to do is follow it."
"We have?" Callahan was surprised.
"Sure." And I laid out in front of him a copy of our patent application,and riffled through its pages. "All we have to do is go through all theexamples here to make certain they all work. If they do, the programwill be complete, except for the product itself and commercialproduction. Our patent application will make the best research guide wecould get."
"Why certainly," said Callahan. "We have already spent a great deal oftime working out all kinds of substitute and equivalent reactions. It'sall here. Good. I'll set it up."
Callahan began distributing the work to various groups, and I went backto my office. Every Friday afternoon thereafter I went out to thelaboratories to see how things were coming along. They came along well.From the beginning the actual results reached by the research teamsmatched the predictions we had made in our patent application. At theFriday afternoon meetings Callahan and I got into the habit of tossingpleased and knowing glances at each other as the streams of datacontinued to confirm our work. Several months rolled happily by. Thencame a letter from the Lafe Rude Consultants, Inc., up in Boston. Theletter said that their people understood that the Marchare Laboratorieshad under development a remarkably strong paper, and they would be verymuch interested in discussing licensing possibilities with us. I grabbedthe letter and stormed into Mr. Spardleton's office.
"Just read this," I almost yelled as I handed him the letter. "This isthe outfit that hired Callahan's technician. Now they know all about theTearproof Paper. That technician has told them everything. I think weought to sue them--inducing disclosure of trade secrets, or something."I added a great deal more as Mr. Spardleton finished the letter and satholding it looking up at me as I paced back and forth in front of hisdesk. As I walked and talked, I finally became conscious of the factthat Mr. Spardleton was waiting for me to finish; I could tell by theexpression on his face. I pulled up in front of him and fell quiet.
He said, "Don't you feel it is significant that this letter was sent tous, lawyers for Marchare Laboratories, rather than direct to theLaboratories?"
I thought about it, and he continued, "Furthermore, as I understand it,the Lafe Rude people have a good reputation."
That was right, too, and I saw what he was driving at. People of goodreputation don't try to pull a fast one by immediately alerting thelawyers for the other side. In fact, when I stopped to think about it, Icould see that they were bending over backwards to be careful in thissituation.
Mr. Spardleton said, as he handed back the letter, "I suggest you clearwith Dr. Marchare, and then make arrangements to talk to these peopleand see if you can negotiate some kind of profitable license. Marchareis pretty fully committed right now, and I don't think he has time toexploit this paper, even if it turns out to amount to something."
I looked at him, aghast that he should still be doubtful of the paper atthis late stage of the game. He saw my look and said, "Oops, I mean thismilestone in paper technology once it is announced to the world."
That seemed better, more to the point. I called Dr. Marchare and foundthat Mr. Spardleton was right, as usual. Dr. Marchare would welcome abeneficial licensing arrangement. I then called the Rude Associates onthe phone; it seemed more expeditious than writing. I set up a meetingdate as soon as possible, one week away.
* * * * *
The day before I left for Boston I checked in with Callahan to makecertain all of our data were correct. We went over every aspect of theTearproof Paper Case. I picked out a dozen good samples of the paper ofvarying composition and thickness and put them in my briefcase alongwith a copy of the patent application. I had decided that I might evenshow them a copy of the application if it might help show what amarvelous discovery we had made. Callahan and I shook hands solemnly,and he wished me the best of luck. I went back to my office for a finalquick check, got interested in Zabell's book, and went home without mybriefcase. There was no harm done. My plane did not leave until ten inthe morning and I had planned to go back to the office anyway. I saidgood-by to Susan and Mr. Spardleton, retrieved my briefcase from over bythe radiator where Susan had put it the night before, and caught theplane.
It was a cold damp day, and the threat of rain was in the air. In BostonI caught a cab for the Massachusetts Avenue laboratories of RudeAssociates. Dr. Rude himself was at the meeting, along with half a dozenof his associates. Dr. Rude was a small man, dapp
er, totally unlike aresearch chemist, and his speech and manner were as impeccable as hisdress. Only his hands were a giveaway; they were stained with yellow andblack stains that looked completely out of place on the man. Dr. Rudeopened the meeting with an explanation concerning the technician he hadhired from the Marchare Laboratories two years earlier. "Just a weekago," said Dr. Rude, "we put him on a problem of paper chemistry. Hetold us that the properties we sought--and more--had already been foundby your laboratory. He said no more, and we would not have allowed himto say any more, except that you were the patent lawyer who was workingon the case. That is all we know about it. We hope you have something ofmutual interest, but we don't know any more than what I have told you."
I said, "Thank you, Dr.