Dispatch No. 12 ← Previous ↰ All Next →
A Private Conversation, Held in Public
You can read every word of the examination — and you don't get to say anything.
Background — part of my pro se Post Grant Review series on U.S. Patent 12,460,537. Recall I filed prior art against the application but had no way to answer the applicant's attorney during examination. This one catalogs five statements in that record I'd call misleading — ones nobody was positioned to rebut. New here? Start at Dispatch No. 1.
The short version
Examination is public — the whole file wrapper is right there for anyone to read, as it happens in real time. But it's a conversation between exactly two parties: the applicant and the examiner. Everyone else, including the person whose idea is on the table, gets to watch what I'd call the misleading statements pile up and can do nothing about it.
No public participation
Sure, I filed my third-party preissuance submission (see Dispatch No. 6), which I'm totally happy with. That's a good process. A separate examiner runs interference to prevent overloading the actual examiner. It's efficient and formal. It should have worked. The key arguments were there. The flaw is that the actual examiner, the one charged with the integrity and faith of the whole system, was under no obligation to actually read or understand it. No safety valve. No backup. No way to identify when things are going off the rails. That's a big flaw.
That's why I want the PGR. The system has shown itself untrustworthy when left to its own devices, when the only advocate you have abdicates their responsibilities. All the other lesser options tell me to sit back and shut up.
More issues with the process
With the third-party preissuance submission, there's also the timing issue. It is a narrow window when you can file one of these. You have no indication where the examination will go… what arguments will be relied on… what specifically should be pointed to in the prior art. I was well within the window. I covered a lot.
But I couldn't compel the examiner to actually read or comprehend it. The answer was buried in there. Remember, I was thorough — same as with my disclosure. It was comprehensive and "concise", but that doesn't mean short. There were a lot of claim elements to point to in the prior art.
Once I filed the third-party preissuance submission, I was done. I already said what I needed to say (within that time window), but the examiner was clearly ignoring it. All I wanted to say was, "read page 9 for F@#$ sake!" — it's right there!!! But I couldn't even do that.
That is incredibly frustrating. It's worse than not doing anything.
I can't say anything, but the applicant can. And no one was keeping them honest and accountable here. You can say an awful lot that can be claimed as truthful and honest, all while being, in my view, incredibly deceptive.
Misleading statements
Imagine going to court and after opening arguments, you can't say anything. The plaintiff can say whatever they want to the judge, but you have to just sit there and watch. They can twist your words, call attention to distracting passages and mischaracterize them. All the while, you can't say a thing. It's terribly unfair. Especially when I could (and already did) clarify every single point. But since the judge (i.e. the examiner) didn't care to read/re-read the documents, but instead listened to the plaintiff, of course they're going to rule in the plaintiff's favor.
One legal note before the examples, so we're all calibrated. Everything I'm about to call “misleading,” “deceptive,” or worse is my opinion, drawn entirely from the quoted public record — you're reading the very same sentences I am. Now the doctrine: everyone who prosecutes a patent owes the Office a duty of candor and good faith (37 CFR § 1.56). That's the rule these statements strain. But don't expect it to do dramatic work — the remedy for breaching it, having a patent held unenforceable for inequitable conduct, requires proving both that a misstatement was material (but-for it, the claim wouldn't have issued) and that there was a specific intent to deceive the examiner (Therasense). That's a deliberately steep bar, and I'm not formally alleging it. I'm showing you what the candor duty is meant to prevent, and letting you judge how close this came. And one more boundary, since it matters: candor and inequitable conduct are not PGR grounds. The Board decides this patent on §§ 101/102/103/112, not on whether the applicant played fair — unenforceability is a court question. So read this section as how the examiner got rolled, not as part of the invalidity case.
Example #1 — "does not appear to describe"
From the September 2024 response to the first office action — annoying, but plausibly deniable. I do in fact describe this, but what's the harm in saying I don't? Remember, no downside.
Phillips does not [emphasis theirs] appear to describe, however, that the magnetometer is used to “measure axial movement of the at least one component of the downhole pumping system based on variations in a magnetic field detected by the magnetometer” as recited in claim 1.
I dedicated a whole figure to just this. It was difficult to illustrate. I struggled with this figure because of how abstract and complicated this concept is, but the resulting figure is a pretty good representation. Axial movement is up and down along the stroking path. The field lines here illustrate unique field strengths at various elevations. Look, they kind of make a ladder. This is very complex because that environment is changing dynamically.
The point here is this is exactly how you measure axial position, and when that's done over time (as is the case here), that measures movement. And that in turn is the direction change — exactly what the whole "over the course of a stroke" (which I say 20 times) is pointing to. You shouldn't need to be a POSITA to comprehend this. It's basic. It's high school physics.
Note the emphasis on the term "not" (their underline, not mine) and the plausible deniability of the term "appear". A careful hedge for not asserting false statements. When you throw in "appears", that's a big CYA. I'll come back to this in a future post (and below) because these assertions got stronger and, in my opinion, crossed the line of ambiguity.
Example #2 — Contradictory statements!?!
From the September 2024 response to the first office action — and this is truly maddening:
While Phillips appears to make some contradictory statements regarding movement of polished rod, at best, Phillips only appears to be capable of detecting whether the rod is moving or not. However, the configurations of Phillips do not appear to be capable of measuring axial movement with the magnetometer.
Contradictory statements!?! Here's the thing, the magnetometer can be both a compass (measuring rotational orientation) and a sensor to measure proximity, or position, or direction change. That's not contradictory. That's a complex description and that is why my application is easily 3x longer than theirs. It can do both and I had to talk about both uses. I laid this all out in detail, both in the actual disclosure (i.e. the prior art document) and in the third-party preissuance submission pointing to the relevant passages and figures.
Imagine reading this, knowing it's demonstrably incorrect — the record proves it — and being helpless to clarify your own words… And having already clarified them (see Dispatch No. 6). All the while realizing the examiner was starting to believe the applicant because that's easier than reading the documents.
Example #3 — Literally what a gyro senses
Further, Phillips does not disclose “determin[ing] rotational velocity of the at least one component of the downhole pumping system with the rotation sensor subsystem by sampling rotational velocity values generated by the rotation of the at least one component of the downhole pumping system with only the gyroscope,” as further recited in amended claim 1.
Sampling rotational velocity values is literally what a gyroscope measures. I can't be clearer than that. This doesn't require a POSITA, it's in the datasheets for the sensors ("dps" means degrees per second). Unlike a magnetometer (which doesn't measure position), a gyroscope actually directly measures rotational velocity (degrees per second). That shouldn't need an explicit disclosure. Note: in my disclosure I say I can use a gyroscope too and I explain how that would work. That part is critical to the whole stroke boundary issue and I'll follow this up with another post. There's a whole detailed section on this very concept in my disclosure.
When the applicant asserts that I do not [emphasis mine, note there's no hedging "appears" here] disclose “determin[ing] rotational velocity…”, that crosses the line. Now let me be precise, because the distinction matters: a patent lawyer will (rightly) tell you that arguing a reference “doesn't disclose” a limitation is argument, not a sworn statement of fact — so even a badly wrong version usually isn't an actionable “false statement.” Fine. Then call it what it actually is: advocacy aggressive enough, about something a gyroscope plainly does, to be flatly misleading — and notice they dropped the careful “appears” hedge that softened the earlier assertions. That dropped hedge is the tell.
They repeated these arguments (above) 10 separate times in the response to the first office action. What's that old saying about repeating the same wrong thing enough times?
To the examiner's credit, the Final Rejection pushed back on these falsities. But it was only based on my application, with no supplementary mention of that other document. But a Final Rejection was good; I don't care if the arguments could have been much stronger. But that's what left them an opening.
All of this is in the response to the first office action.
Example #4 — Typos or worse?
The text of a Claim 13 quotation in the RCE remarks is not the text in the amended claim 13. Holy crap, how deceptive does that look? Is this an error or intentional? I can't see inside anyone's head, so I genuinely can't say — but they amended the text of claim 13 in this same response, so I find it hard to read as a pure accident (that's my opinion, not a finding of fact). Either way, it's wildly misleading, and in my view unethical, consistent with the pattern I've described. Is this one illegal? I'm not qualified to say. I didn't even realize until writing up this post that this is what ended up in front of the examiner. Still, the examiner shouldn't have allowed any of it, but this claim 13 issue is really bad. Not the kind of bad that's just a mistake — it's the kind that changed the outcome. And of all five examples on this page, this is the one with real legal teeth: the others are arguments the applicant could lose and still fairly call advocacy, but misquoting the actual claim text in the remarks is a factual inaccuracy in the record — exactly the kind of affirmative misstatement the duty of candor is built to catch (if anyone could prove it was deliberate, which I can't).
I could have helped sort this out before it became an issued patent (and I tried, see Dispatch No. 10).
This is in the RCE remarks and the amended claims.
This bears a follow-up post because it's a good one. Stay tuned.
Example #5 — Sloppy amendments
They also deleted the vibration sensor from claim 13 and added it to claim 1 without the appropriate markup. That's an important nuance to the Notice of Allowance showing how little scrutiny was given to this application.
I already called out the examiner's repeated assertion that I don't disclose a 3-axis vibration sensor. It's right there in the prior art (see Dispatch No. 9) and specifically pointed to in the prior art submission (see Dispatch No. 6). I'll follow up on it in a future post too. I could have very easily set the record straight here, but the system has no safety valve for what I see as incompetent examination. No way for me to help identify the most basic of errors. And sneaky applicants know and exploit this simple fact.
The hindsight of equivalent terminology
Their whole argument hinges on equivalent terminology. That's not invention or innovation. They get my entire disclosure to craft something that sounds different, and all they have to prove is that it sounds different enough to exactly one person.
All while I sat silenced on the sidelines.
Silent — not by choice, but by the design of the system.
Related dispatches
- Dispatch No. 4 — The first time this idea was good enough to copy — the earlier time this same idea was good enough to copy.
- Dispatch No. 6 — The Third-Party Preissuance Submission — the submission the examiner was free to ignore.
- Dispatch No. 9 — The Overly Broad Claim Slipped Through — the overly broad claim at the center of it.
- Dispatch No. 10 — Post-Allowance, Preissuance — What could I do? — what I could (and couldn't) do about it.
- Dispatch No. 11 — Suspicious Allowance Timing — the sweet-talking-the-examiner speculation that this private conversation would confirm.
- Dispatch No. 16 — Claim 13 — Again — the Claim 13 misrepresentation this set up.
- Dispatch No. 17 — Let's Ask Claude — where Claude untangled this same one-sided record.
- Dispatch No. 29 — Independence Day — the standing public invite for the other side to answer.
Discussion