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.

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