Back From the Dead

Here's a pro tip: apparently the bar to getting a patent is to get a final rejection, then pay the Request for Continued Examination (RCE) fee. That way the USPTO will know you're serious. If you're willing to pay another fee, you must have something patentable. See a theme here? The PGR has a really high fee, so if you're willing to pay that, you must be really serious. Well, I'm serious and I have a very real and easy-to-understand case, but am blocked by the burdensome fee. The RCE fee is trivial though. Why isn't it the other way around? Pay a lot to get a thorough examination — why do I have to pay that penalty for someone else's mistake?

Persuasive

To explain the argument their examiner found persuasive, you'd have to be a person of ordinary skill in the art (this examiner obviously wasn't). Never fear, I have a great analogy. There's a process in this field that is so basic it's like walking. So basic everyone learns about it on day one. This thing is inherently obvious if you just think about it. In my application I say the equivalent of "over a step" (remember the walking analogy) in various contexts over 20 times. It's that thing everyone knows about, so I shouldn't have to list out the phases. That other document from Dispatch No. 4 gets even more specific. Sort of like "right foot, left foot".

Seriously, my third-party preissuance submission pointed to the prior art for this, and discussed how this is exactly what the prior art says with slightly different but equivalent terminology. That's why this is so troubling. Not only did the examiner not cite prior art, but my detailed explanation of this very concept (complete with specific citations) was completely ignored.

The problem with the process is the applicant can shift their position, but I can't add clarifying content. My third-party submission had it, but it needed a re-read from the examiner. Heck, I could have cleared this up real quick, but I was silenced.

The argument

Now for the argument that the examiner found persuasive and brought this application back from the dead and made it a patent:

You know how much I like analogies, right?
Applicant: "No, no, we're not taking a step. We lift our foot, move it forward, set it down. See that's something totally different." (still using the walking analogy, but this is very close to the actual argument)

Examiner: "Congratulations, you get a patent."

I'll dig into the details in some later posts, and you can argue it's an incomplete analogy, but it's pretty damn close.

After I filed the third-party preissuance submission (see Dispatch No. 6), I was done. Even when the arguments shifted, I couldn't add any more. That didn't matter though — I had already clearly addressed this in the submission. All I needed was for the examiner to do the job and read it. That was too much to ask. Actually, it wasn't too much to ask. I literally could not ask because the system is set up to deny public comment. Even when things are going off the rails, no one can point that out.

Either way, I was blindsided because the examiner rolled over on the argument. No pushback. No evidence he read the prior art. On the contrary, since I very specifically called this out in that same third-party submission, I can show it was there, served up on a platter, and promptly lost/forgotten/ignored. I don't know what the correct description is here. A ball was dropped, clearly. It's even more frustrating because twice before, the examiner had shown this very thing to be disclosed by my document. No explanation for unwinding that previous stance, just "sure, whatever… if you say so, I guess it's a patent then… stop bothering me"[my impression of the examiner].

The answer was in the prior art and pointed to by my submission!

I detailed the elements in each of the relevant claim mappings. Here's one such quote from my submission in regard to claim 7 (not the only place I explained this):

[My third-party submission]
It is well understood in the field of the invention that a “stroke” is defined by a “first” (bottom of stroke), “second” (top of stroke), and “third” (return to bottom of stroke) “change of direction”. The stroke could alternatively start at the top of stroke and continue to the next top of stroke.

And I go on to point to specific prior art documents here, none of which received any mention from the examiner.

No counter to that (heck, maybe I'm wrong, but the applicant should have had to explain why the examiner was wrong). No pushback from the examiner. The only explanation is the examiner didn't even read it. Claim 7 is interesting. I'll come back to this one later. Briefly, it defines this direction-change wordsmithing as "a stroke". Adding those words makes it seem like something else, something more specific, but it's not.

That flawed argument and the examiner's blind deference to the applicant are just the tip of the iceberg. I'll save that for a future post too, but the examiner also failed to proofread the text of the claims that were allowed. This let an independent claim slip through — one so broad that, taken at face value, it would reach work that was already public before they filed — my own published disclosure included. Let that sink in for a bit.

What looks to me like sloppy examination and inattention to detail by that same examiner, plus what struck me as a sneaky applicant, all produced a claim broad enough to possibly be turned back on the original inventor^* — even though everything it sweeps in was already mine and already public before they filed. To be clear, a claim that broad is invalid — broad enough to read straight onto what was already public, which is the textbook setup for anticipation (the mirror image of infringement: that which would infringe if it came later, anticipates if it came earlier). It would fall apart the moment anyone actually tested it. But don't mistake “invalid” for “harmless.” An issued patent comes wrapped in a statutory presumption of validity (35 U.S.C. § 282): in court, an accused infringer has to prove invalidity by clear and convincing evidence — a deliberately steep climb. That's exactly why a bad-but-issued claim is still a cudgel — it can be threatened with, and used to muddy the market, long before anyone knocks it down. (It's also why the PGR matters: there the patent gets no such deference — I'd only need to show unpatentability by a preponderance of the evidence, the lower bar. Same bad claim, very different burden depending on the venue.) None of that is even the point, though. The point is a claim this broad should never have issued.

* There's no indication that's actually the case — nobody has asserted this claim against me, or even threatened to. The point is only that a claim drawn this broadly *could* be turned in that direction. I'm describing the breadth of the claim, not an accusation anyone has made. And to be exact about that mirror: what reads on this claim is my earlier *published disclosure* — a prior-art document, which is why it *anticipates* — and I take no position here on whether anything I have built or sold practices any claim of this patent. ↩

And to be precise about what a PGR actually fixes: it isn't a referendum on the examiner. The Board doesn't grade his work — it re-decides patentability on the prior art and §§ 102/103/112. The sloppy examination is how this claim got through; why it falls is that the claim is invalid on the merits.

Think about why they'd do this

Why file a patent application on something so clearly copied — the wording literally, and, in my view, the underlying idea too?

First, there is no penalty. It's not illegal to do any of this. In my opinion, it's wildly unethical, but not illegal… actually, in my opinion it should be illegal too… but it's not.

Second, this was never about the patent itself. It was about muddying the waters so they wouldn't have to license my technology. Imagine if someone showed up at your house with a deed and said: "I live here now." Yeah, they're called squatters and there are laws to deal with that. Now if you went to the County and said "these guys don't own my house, here's proof, don't record that deed" and they just ignored you and recorded it anyway, wouldn't you be angry?

Now I have to prove to you that I'm right… stay tuned. I promise, by the time all of this comes out you'll absolutely believe me. The PTAB probably won't, but any reasonable person will.

Related dispatches

• Dispatch No. 4 — The first time this idea was good enough to copy — the specifics of the copied idea.
• Dispatch No. 6 — The Third-Party Preissuance Submission — the prior-art submission that should have stopped this.
• Dispatch No. 9 — The Overly Broad Claim Slipped Through — the overly broad claim this revival let through.
• Dispatch No. 11 — Suspicious Allowance Timing — the suspicious timing around the allowance that revived this.
• Dispatch No. 13 — You Still Don't Believe Me About the Direction Change Thing? — the Claim 7 / direction-change argument the revival turned on.
• Dispatch No. 16 — Claim 13 — Again — how the revived Claim 13 was misrepresented.