"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, tell me about Dr. Callahan. He is usually a pretty conservative
fellow. How does he feel about this completely untried product?"
I sat up straighter. "This is not an untried product, Mr. Spardleton. It
has been made and duplicated. It has all the properties that the
application says it has. And Dr. Callahan has just as much faith in it
as I have."
Mr. Spardleton looked at me, and smiled, and slowly handed over the
draft. "Mr. Saddle, I wish you all the best in your prosecution of this
case. Please call on me if there is anything I can do to help. In any
way, don't hesitate to call on me."
I stood up and took the draft and turned to go, but Mr. Spardleton
thrust 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, and
bespeaks of ingenuity, resourcefulness, and skill. You have come a long
way to be able to write such an application."
I didn't know what to say, so I smiled and bobbed my head and walked out
still looking at him and smiling, which made it necessary for me to walk
sideways, and thus made me look, I suppose, somewhat like a crab.
Susan put the case in final form. We sent the papers to California for
Callahan's signature, then we filed the case, and things got back to
normal with me. It was a great relief not to have the strain on me night
and day. That's the trouble with an important case. You live with it too
much.
* * * * *
It was seven months before I got the first Office Action in the Case. I
read the first few paragraphs and they were quite normal. They rejected
the Case in the usual manner by citing prior patents that had nothing to
do with my application. This kind of thing was just part of the game of
prosecution in which the Patent Examiner makes rejections because that
is what he is supposed to do no matter what the invention; they don't
have to make much sense. But then came a paragraph that went way beyond
good sense and proper rejection technique. It said:
_The specification is objected to as containing large portions that are
merely laudatory. See Ex parte Grieg, 181 OG 266, and Ex parte
Wellington 113 OG 2218. These portions are superfluous and should be
deleted, Ex parte Ball, 1902 CD 326. The specification is unnecessarily
prolix throughout and contains an unduly large number of embodiments, Ex
parte Blakemen, 98 OG 791. Shortening is required._
I didn't wait. I grabbed the file of the Case and almost ran over to the
Patent Office to straighten out the Examiner on a few things. As usual,
Herbert Krome was the Examiner, so I charged up to his desk and
immediately began explaining to him the importance of the Tearproof
Paper Case. He seemed to pay no attention to me, but I knew him; he was
listening. When I finally paused to let him say something, he looked at
me quizzically and said, "Mr. Saddle, aren't you aware of the Notice of
October 11, 1955?"