h 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