Inventions -- Fiction; Science fiction; Short stories
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.
* * *
Public-domain text, read in full here on John Shaqi.
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