The Professional Approach, Charles L. Harness and Theodore L. Thomas [best ereader for epub .txt] 📗

I looked at him in surprise and said, "But somebody else has just as much 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 could file a complete application and beat us out on dates; they'd be first with 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 right now. We'll make some guesses at how the research would go, and put it in."

"Oh now, look. You don't know"—he began ticking off the points on his fingers—"if you really need the trialkyl aluminum, or the mercury-treated glass surface, or the heat, or the radiation, or any combination of them. You don't have any idea of the conditions that are necessary to produce this paper."

"I know."

"All you've got is a single example that works. If you make your claims broader than that one example, the Examiner will reject you for lack of disclosure. This is basic in patent law. Ex parte Cameron, Rule 71, and 35 U.S.C. 112 will do for a starter."

But I hadn't worked with Mr. Spardleton for nine years for nothing, and he had taught me how to play this game pretty well. I sat up straighter in my chair and said, "Yes, but in Ex parte Dicke and Moncrieff the disclosure of nitric acid as a shrinking agent for yarns was enough to support a claim for shrinking agents broadly; the claim did not have to be limited to nitric acid."

"Only because nitric acid was already known to be a shrinking agent for yarns."

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 an argument: I quickly shifted to another point. "In Ex parte Tabb the applicant merely disclosed raisins and raisin oil, but that was enough to support claims to 'dried fruit' and 'edible oil'."

"But in that case the Board of Appeals said they allowed such terminology only because the equivalency of the substances could be foreseen by those skilled in the art, foreseen with certainty, too. Can you 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 since there was no evidence to show that they all would not work, the applicant was allowed broad claims. But you'd have trouble making your guessed-at ingredients stick. In the case of Corona Cord Tire Company v. Dovan, the court said the patentee was entitled to his broader claims because he proved he had tested a reasonable number of the members of a chemical class. Have you?"

I started to answer, but Mr. Spardleton was in full swing now, and he said to me, "No, sir, you haven't. You are not ready to put in broad claims on a half-baked invention."

It was the "half-baked" that did it. Controlling my temper I rose to my feet and said in a purposeful, quiet voice, "I think I see clearly how this case should be handled in this situation. I shall prepare it in that manner, and file it, and prosecute it, and obtain a strong patent on a pathfinder invention. I'll keep you posted." I turned and walked out. Just as I passed through the door I thought I heard him say softly, "Attaboy, Carl," but I must have been mistaken. Mr. Spardleton never calls me Carl.

I got right at it the very next morning. I opened the office myself and began studying my notes to see how broad a claim I could write for the Tearproof Paper Case. I listed all the ingredients in one column, and then filled up the adjacent columns with all the possible substitutes I could 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 was ten o'clock before I finally came up for air, and then I dashed out to the Marchare Laboratory for another talk with Callahan. I explained how I was going to handle the case to make sure we got a good, broad patent application 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 are wrong we are in some degree of trouble. But I feel that with both of us working on this we ought to be able to turn out a good sound job. I'll keep sending you drafts out in San Francisco until we finally get one we think 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. Neither one of us realized it when lunch time came and went. But that's the way it is with world-beater inventions; they sweep you along. Early that afternoon I dictated my first draft to Susan. Callahan and I went over the draft, and then he left for San Francisco. The next time around we had to use air mail. With each new draft we added more to the basic information we had, rounding out the invention in ever greater detail. I added example after example, being careful to state them in the present tense; I did not want to give the impression that the examples had actually been run.

In a month's time I checked with John Bostick. Bostick had been able to duplicate Callahan's work, and we had three more, flimsy, diaphanous sheets that could not be torn by human hands. That was all I needed. Now I knew that anyone could duplicate the Tearproof Paper, and I had at least one, good, substantial working example for my patent application. The knowledge gave me greater confidence in the alternate materials and procedures that Callahan and I had dreamed up. I prepared a final draft containing twenty-three pages of detailed specification and eleven examples and topped it all off with forty-six claims. It was a magnificent application, considering what I had to start with. I handed it 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 the pleasure of seeing his cigar slowly swing outward until the glowing end was almost beneath one of his ears. This, I knew, was his Amazed Position, 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 same invention you told me about last month?" When I nodded he continued, "And I further assume that you have no experimental data in addition to that you described last month?" Again I nodded, and he said, "All of this is paperwork with the exception of Example I?" I nodded again, and he put the draft down in front of him and stared at it.

I began to grow uncomfortable in the silence. Then he said, so softly that I could hardly hear him, "I remember, many, many years ago, answering the phone, Cliff Norbright—great chemist—telling me he had smelled phenol when he heated ethylene chlorohydrin in the presence of holmium-treated silica gel in a test tube. I wrote the greatest patent application of the age based on that evidence. Just like this one." He laid a hand on it, and shook his head, and smiled.

"There is no crude guesswork on this product," I said. "The work has been 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,