Unified Patents Inc. v. Berman

Informative decision only: persuasive authority, not binding precedent. When a petition relies on the same or substantially the same prior art or arguments previously presented to the Office (35 U.S.C. § 325(d)), including art considered by the examiner for claims added by amendment after a rejection over that art, and the petitioner offers no argument distinguishing the examiner's prior consideration or compelling reason to readjudicate, the Board may exercise discretion to deny institution of those grounds. But a ground relying on a reference not shown to have been previously considered is not denied under § 325(d) merely because a different reference was presented during prosecution. No prior precedent directly addressed this issue in the text; the decision cites no earlier Board decision on § 325(d). For petitioners, it shows that art examined during prosecution, even for claims never rejected over it, can be treated as previously presented, and that a petition must explain why the Board should readjudicate it. For patent owners, a preliminary response that lays out the prosecution history showing the examiner's consideration of the reference can support denial, but it will not reach grounds built on a reference not shown to have been considered. The Board also relied on the statutory text of § 325(d), and the decision cites no Federal Circuit authority for the § 325(d) analysis. LEGAL TEST OR STANDARD: Section 325(d) provides that the Director may take into account whether, and reject the petition because, the same or substantially the same prior art or arguments previously were presented to the Office. The Board first determines whether any ground presents the same or substantially the same prior art or arguments, and only then decides whether to exercise discretion to deny. Each group of claims and grounds was analyzed separately. TRIGGERING FACTS: Russell was used to reject original claims 1, 2, and 4. The issued claims 2-8 and 10-15 were added by amendment after that rejection and before the next Office Action. The Examiner Interview Summary and the later Office Action showed consideration of Russell for them. The Petition used Intel User's Manual window features in substantially the same manner as Russell's overlaid windows, and Petitioner acknowledged the history but offered no distinguishing argument. For claims 9 and 16, Marlton did not appear on the face of the patent and Patent Owner did not argue it was previously considered. KEY QUOTE: "Nevertheless, Petitioner fails to present any argument distinguishing the Examiner's prior consideration of Russell or to provide a compelling reason why we should readjudicate substantially the same prior art and arguments as those presented during prosecution and considered by the Examiner." (Paper 10, p. 12) PRIOR PRECEDENT AFFECTED: No prior precedential or informative decision is directly affected. PRACTICE TIP: If your petition relies on art that appears in the prosecution history, address that history directly in the petition. Explain how the examiner's consideration differs from your use of the art, or give a compelling reason for the Board to readjudicate. As patent owner, map the prosecution history to the petition's references in the preliminary response.