In Sherf preliminary motion 5, Sherf argues that Bronstein failed to disclose a material
reference, in particular, Bronstein patent 4,931,223 ('223), during prosecution of Bronstein's '787
application (Paper 33 at 4). Regarding the Sherf preliminary motion, we note the following:
(1) It is unlikely that Sherf has shown that the '223 patent is "material to
patentability" since we denied Sherf preliminary motion 4 forjudgment that an involved claim of
the'787 application was unpatentable Linder 35 USC § 102(b) in view of the'223 patent alone or
under 35 USC § 103(a) in view of the '223 patent in combination with other cited prior art.
(2) Even if we were to decide that Sherf has shown that Bronstein had a duty to
disclose the'223 patent under 37 CFR § 1.56, Bronstein would be still able to do so since the
'787 application is still pending.
Even though we denied Sherf preliminary motion 4, the examiner may be aware of other
prior art that, when combined with the'223 patent, would affect patentability of the'787 claims.
Accordingly, we exercise our discretion under 37 CFR § 1.659(c) and recommend that the
examiner consider the '223 patent in evaluating patentability upon resumption of ex parte
prosecution of the'787 application. A copy of the '223 patent is attached to this Judgment.
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