Not on the Cover, Still Before the Office: Parent-Application Prior Art and § 325(d)

Executive Summary: This article examines whether prior art cited or considered during prosecution of a parent application may support discretionary denial under 35 U.S.C. § 325(d), even when the reference does not appear on the face of the challenged patent. It explains that MPEP § 609.02 permits information considered in a direct parent to carry forward into a continuation without being resubmitted merely for consideration, making the prosecution history more probative than the patent’s cover. Under Advanced Bionics and Ecto World, an examiner-initialed IDS may satisfy the first part of the § 325(d) inquiry even if the reference was never applied in a rejection; the more consequential question is whether the petitioner demonstrates a material Office error. Although Kewazinga provides persuasive support for applying this principle to direct ancestors, no Federal Circuit decision squarely resolves the issue, and the PTAB has declined to extend the reasoning categorically to siblings or remote collateral relatives. The practical lesson is that § 325(d) turns on the actual priority chain, evidence of consideration, claim continuity, and the substance of the Office’s earlier analysis—not merely whether a reference was printed on the patent.

Introduction

A familiar fact pattern has become increasingly important in inter partes review. A petition relies on a reference that does not appear on the face of the challenged patent. The reference does, however, appear in the prosecution history of a parent or another application in the priority chain—perhaps on an information disclosure statement, perhaps in an office action, and perhaps as the centerpiece of a rejection. The patent owner invokes 35 U.S.C. § 325(d), while the petitioner answers that the reference was never cited in the challenged application and was not printed on the challenged patent.

The petitioner’s cover-page argument is too simple. In a continuation family, a reference can have been “previously presented to the Office” even though it was never re-listed in the child application and never printed on the child patent. But the opposite overstatement is equally dangerous: presentation in a parent does not automatically require discretionary denial. The better analysis separates four different propositions—whether a reference was printed, presented, considered, and substantively evaluated—and then applies the two-part framework of Advanced Bionics to the actual family record.

The emerging rule is practical rather than categorical. Art considered in a direct parent has a substantial—and sometimes decisive—§ 325(d) role, particularly when the challenged claims track claims examined in the parent. Art merely listed on an initialed parent IDS can also satisfy the first part of the § 325(d) inquiry. Yet the depth of the Office’s earlier engagement ordinarily matters most at the second part: whether the petitioner has shown a material Office error. And as the relationship moves from parent to sibling to remote collateral relative, the inference that the earlier prosecution “pertain[ed] to” the challenged patent weakens considerably.

I. The Patent’s Cover Is Evidence, Not the Prosecution Record

 

The “References Cited” field on an issued patent is useful evidence. It ordinarily identifies references made of record by the applicant or examiner, and it provides a convenient starting point for assessing what was before the Office. But printing is an administrative consequence of how a citation entered the record; it is not a merits determination and is not the legal test under § 325(d).

The USPTO’s own procedures make that distinction explicit. The Manual of Patent Examining Procedure (MPEP) § 609.06 explains how applicant-cited and examiner-cited references are printed, but also recognizes that a citation may have been considered even if it was not printed; in that circumstance, the application file reflects the consideration. U.S. Patent & Trademark Office, Manual of Patent Examining Procedure § 609.06 (9th ed. Rev. 01.2024, Nov. 2024). The file history—an initialed IDS, a PTO-892, an office action, interview summary, notice of references cited, or other prosecution document—is therefore better evidence of what occurred than the face of the patent standing alone.

Nor does appearance on the patent establish that the Office found the reference material, applied it to a claim, or accepted any characterization of it. The IDS rules expressly provide that filing an IDS “shall not be construed to be an admission that the information cited in the statement is, or is considered to be, material to patentability.” 37 C.F.R. § 1.97(h). A cover-page citation thus may prove presentation or consideration, but it does not by itself prove substantive evaluation.

The same distinction matters outside the PTAB. Every issued patent carries the statutory presumption of validity, whether or not a particular reference appears on its face. 35 U.S.C. § 282(a). Evidence not before the examiner may carry more persuasive weight in district-court litigation, but it does not change the clear-and-convincing burden of proof. Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 110–11 (2011). Section 325(d), by contrast, asks a different, institution-stage question: whether the same or substantially the same art or arguments were previously presented to the Office and, if so, whether the Office materially erred.

II. MPEP § 609.02 and the Continuation Record

 

The reason cover-page logic is particularly unreliable for continuation patents lies in MPEP § 609.02. For a continuation, divisional, or continuation-in-part filed under 37 C.F.R. § 1.53(b), the Manual states that the examiner “will consider information which has been considered by the Office in a parent application.” It further states that an applicant need not resubmit a listing of that information in the continuing application unless the applicant wants the information printed on the resulting patent. MPEP § 609.02(I), (II)(A)(2) (9th ed. Rev. 01.2024, Nov. 2024).

That procedure creates a deliberate gap between consideration and printing. Suppose an examiner initials an IDS in a parent continuation, and the applicant later files a further continuation claiming the benefit of that parent. Under § 609.02, the applicant need not re-list the reference merely to place it before the child examiner. But if the applicant does not re-list it, the reference may not appear on the child patent. The absence of the reference from the child’s cover is therefore entirely consistent with the Office’s procedure for carrying considered information forward.

The carryover rule has limits. It applies to information actually considered in the parent, not merely submitted but left unconsidered. Information submitted but not considered in the parent generally must be resubmitted in compliance with 37 C.F.R. §§ 1.97 and 1.98 to ensure consideration in the child. MPEP § 609.02(II)(B)(2). The Manual also prescribes a different procedure for documents arising from an international application designating the United States: to ensure consideration of documents cited in the international search report or international preliminary examination report, the applicant must submit a compliant IDS in the continuing U.S. application. MPEP § 609.02(I).

There is also an authority-level caveat. The MPEP is agency guidance, not a statute or regulation and does not itself have the force of law. In re Skvorecz, 580 F.3d 1262, 1268–69 & n.3 (Fed. Cir. 2009). But that does not make § 609.02 irrelevant. It describes the Office’s own examination procedure, and PTAB panels have relied on it to determine what the Office was required to consider in a continuation. For § 325(d), the Manual therefore functions as evidence of agency practice and as the procedural link between a direct ancestor’s record and the challenged continuation.

There is also limited appellate support for the carryover practice outside § 325(d). In an inequitable-conduct case, the Federal Circuit relied on MPEP § 609 in holding that failure to resubmit in a divisional information cited or submitted in the parent could not constitute inequitable conduct. ATD Corp. v. Lydall, Inc., 159 F.3d 534, 547 (Fed. Cir. 1998). ATD does not answer the § 325(d) question, but it confirms that non-resubmission under the Office’s continuation procedure is not equivalent to withholding the information from the child examiner.

III. Section 325(d) After Advanced Bionics and Ecto World

 

Section 325(d) gives the Director discretion to reject a petition because “the same or substantially the same prior art or arguments previously were presented to the Office.” 35 U.S.C. § 325(d). In Advanced Bionics, LLC v. MED-EL Elektromedizinische Geräte GmbH, No. IPR2019-01469, Paper 6, at 7–11 (P.T.A.B. Feb. 13, 2020) (precedential), the Board organized that discretion into two parts.

First, the Board asks whether the same or substantially the same art or arguments previously were presented to the Office. “Previously presented” is broader than “used in a rejection.” It includes art made of record by an examiner and art supplied by an applicant in an IDS. Id. at 7–8. Second, if part one is satisfied, the Board asks whether the petitioner has demonstrated that the Office erred in a manner material to the patentability of the challenged claims. Id. at 8–9. Reasonable disagreement with the examiner is not enough; the asserted error must be material.

The familiar six factors from Becton, Dickinson operate within that two-part structure. Factors (a), (b), and (d)—the similarities and differences between the art and arguments—generally inform part one. Factors (c), (e), and (f)—the extent of earlier evaluation, the petitioner’s showing of error, and additional facts bearing on reconsideration—generally inform part two. Becton, Dickinson & Co. v. B. Braun Melsungen AG, No. IPR2017-01586, Paper 8, at 17–18 (P.T.A.B. Dec. 15, 2017) (precedential as to § III.C.5, first paragraph; otherwise informative); Advanced Bionics, Paper 6, at 9–11.

The Director’s precedential decision in Ecto World, LLC v. RAI Strategic Holdings, Inc., No. IPR2024-01280, Paper 13, at 3–7 (Dir. May 19, 2025) (precedential as to § A), sharpened the treatment of IDS art. Use of the same prior art previously presented on an examiner-initialed IDS satisfies part one even if the examiner never applied or discussed it. Id. at 3–4. The petitioner must then address material error expressly and with particularity; generalized merits arguments do not substitute for a part-two analysis. Id. at 5–6. At the same time, the size and circumstances of an IDS can matter. A listing containing more than 1,000 references, coupled with an applicant’s failure to assist after an examiner sought relevance information, could weigh against discretionary denial under Becton, Dickinson factor (f). Id. at 6–7.

That framework produces an important distinction. Whether an examiner substantively used a reference ordinarily does not control part one. It often controls the practical force of part two.

IV. When the Parent Record Does the Work

 

The strongest § 325(d) case arises when the examiner actually applied the asserted art during prosecution of a direct parent, the parent and child claims have materially similar scope, and the petition substantially reprises the examiner’s analysis.

That was the pattern in Becton, Dickinson. Two references had been applied in separate obviousness rejections during prosecution of the direct parent. The continuation claims were similar in scope, a terminal disclaimer linked the claims, and the petition largely rearranged art and positions that the examiner had already considered. Becton, Dickinson, Paper 8, at 16–18, 22–28. The Board declined to institute on that ground under § 325(d). Although only the opening paragraph of § III.C.5—the six-factor formulation—is formally precedential, the balance of the decision is formally informative, including its parent-prosecution analysis.

Several later, nonprecedential decisions illustrate the same logic. In Johnson & Johnson Surgical Vision, Inc. v. Alcon, Inc., No. IPR2021-00899, Paper 16, at 2–3 n.1, 20–22, 33–38 (P.T.A.B. Nov. 9, 2021), the parties agreed that the parent and continuation had the same or identical written description, and the Board adopted their convention of assessing the parent history. The examiner had evaluated the principal reference repeatedly over more than three years through seven rejections, interviews, advisory actions, and a pre-appeal conference. The Board found the petition’s art and arguments the same or cumulative and denied institution when the petitioner failed to identify a material error. In Gator Bio, Inc. v. Sartorius Bioanalytical Instruments, Inc., No. IPR2023-00215, Paper 19, at 11–22 (P.T.A.B. June 20, 2023), the Board described the parent and child histories as “intertwined”: art had been applied extensively in the parent, the challenged claims were linked by a terminal disclaimer, and neither party objected to considering the parent record. Again, the petitioner did not show material error.

Parent consideration, however, is not an estoppel. Oticon Medical AB v. Cochlear Ltd., No. IPR2019-00975, Paper 15, at 9–10, 15–20 (P.T.A.B. Oct. 16, 2019) (precedential as to §§ II.B–II.C), considered prior art and rejections from the parent prosecution but declined to deny institution. A newly asserted reference supplied a materially different, noncumulative teaching that the earlier record did not contain. Oticon is therefore the precedential limiting principle: even extensive parent prosecution does not bar institution when the petition materially changes the art or analysis.

These decisions show why “the reference was cited in the parent” is only the beginning. A persuasive § 325(d) record connects the parent examination to the challenged claims. Useful connecting evidence includes overlapping claim language, the same specification, an obviousness-type double-patenting rejection, a terminal disclaimer, common examination personnel, express incorporation of the parent record, and—most importantly—the Office’s treatment of the particular teaching later emphasized in the petition.

V. IDS-Only Art in a Parent or Ancestor

 

The harder question is whether a reference listed and initialed in a parent IDS—but never used in a rejection—was previously presented in the child’s prosecution. The closest decision is Google LLC v. Kewazinga Corp., No. IPR2021-00527, Paper 16, at 10–13, 18–21 (P.T.A.B. Aug. 24, 2021) (nonprecedential).

In Kewazinga, several asserted references appeared on initialed IDSs in direct ancestors of the challenged patent. For another asserted reference, Moezzi-1, the IDS identified its parent patent, which the Board found substantially the same because the specifications and figures were nearly identical and the relied-on disclosure appeared in the parent. Id. at 10–13. The Board relied on MPEP § 609.02: because the Office had considered the references in the ancestors, the continuation examiner was required to consider them even though the applicant did not re-list them for printing on the challenged patent. Id. at 10–12. The same examiner’s involvement, a double-patenting rejection, and a terminal disclaimer reinforced the connection among the prosecutions. The Board rejected the petitioner’s argument that the references were too remote within the direct ancestry, found them previously presented, and denied institution because the petitioner failed to identify a specific material error. Id. at 12–13, 18–21.

Kewazinga supplies the most direct answer to the cover-page question: in the right continuation record, art may count under § 325(d) even though it does not appear on the challenged patent. But Kewazinga is a nonprecedential panel decision, and its holding should not be recast as a binding per se rule for all ancestor IDSs.

The best current synthesis combines Kewazinga with Ecto World. Kewazinga provides persuasive authority for carrying considered art from a direct ancestor into the child under MPEP § 609.02. Ecto World provides binding Office precedent that IDS presentation is sufficient at part one even without substantive application. But Ecto World addressed an IDS in the challenged patent’s own prosecution; it did not expressly decide the parent-to-child question. Together, the decisions make a strong argument that an examiner-initialed IDS in a direct domestic ancestor satisfies part one, but they do not create a precedential parent-IDS rule.

The distinction matters at part two. IDS-only presentation proves less about what the Office understood than a reasoned rejection, applicant response, interview, or reasons for allowance. A patent owner can argue that Ecto World places the burden on the petitioner to identify a material error even where the examiner did not discuss the reference. A petitioner, however, can meet that burden by identifying the precise disclosure the examiner appears to have overlooked, explaining why it contradicts the stated reasons for allowance, and showing why the asserted combination or evidence is not merely cumulative. A new expert declaration, standing alone, does not necessarily establish error; the analysis must return to what the art taught and what the Office did or failed to do.

VI. Direct Ancestors, Siblings, and Remote Relatives

 

The case law does not support a free-floating rule that every prosecution in a patent “family” pertains to every other family member. The legal and evidentiary connection is strongest along the direct priority chain addressed by MPEP § 609.02. It becomes fact dependent for siblings and weak for remote collateral relatives.

Guardant Health, Inc. v. Univ. of Wash., No. IPR2022-00449, Paper 13, at 10, 15–18 (P.T.A.B. Aug. 1, 2022) (nonprecedential), illustrates the exceptional sibling case. It concerned earlier arguments rather than a sibling IDS. The challenged application and its sibling were continuations of the same parent, shared the same specification, were examined contemporaneously by the same examiner, and contained claim language the Board viewed as the same in scope. The challenged prosecution also included an obviousness-type double-patenting rejection over the sibling. On that unusually integrated record, the Board treated the sibling arguments as previously presented. Guardant does not establish that a sibling’s prosecution automatically carries over.

The outer boundary appears in EVE Energy Co., Ltd. v. VARTA Microbattery GmbH, No. IPR2023-00121, Paper 12, at 12–15 (P.T.A.B. May 12, 2023) (nonprecedential). The Board acknowledged that proceedings pertaining to the challenged patent may include parents and direct ancestors, citing Kewazinga, but refused to extend that reasoning to a patent on a remote collateral branch. The two patents descended through separate PCT and U.S. chains from a common German application—the Board memorably described them as “second cousins, three times removed.” Common distant ancestry alone did not make the collateral prosecution a proceeding pertaining to the challenged patent. Id. at 12–14. The asserted references separately appeared on the challenged application’s own IDS, so part one was satisfied on that basis; the Board then declined § 325(d) denial after finding material error and separately concluded that the petitioner had shown a reasonable likelihood of prevailing. Id. at 14–15.

The practical lesson is that “family” is not the operative fact. The proponent should establish a procedural and substantive path from the earlier record to the challenged patent: direct benefit claims, consideration in the ancestor, claim continuity, examiner awareness, and overlap between the earlier and present arguments. A shared remote ancestor, without more, is unlikely to do the work.

VII. A Better Way to Prove—or Defeat—the § 325(d) Argument

 

For a patent owner, the most effective presentation is a record-based chain of proof. First, establish the direct lineage under 35 U.S.C. §§ 120–121, as applicable, and identify each relevant application. Second, prove consideration rather than relying on a cover page: provide the initialed IDS, PTO-892, office action, interview summary, or other file-history document. Third, map the parent and child claims and identify facts showing the examinations were connected, such as a double-patenting rejection, terminal disclaimer, common examiner, or shared reasons for allowance. Fourth, compare the petition’s theory with the Office’s earlier analysis. Finally, confront part two expressly by explaining why the petition identifies no material error.

For a petitioner, the weakest response is that the reference was not printed on the challenged patent. When MPEP § 609.02 and the ancestor file show consideration, that argument confuses publication with presentation. A stronger petition should assume that part one may be satisfied and develop part two. It should identify the exact teaching the examiner overlooked or misunderstood, explain any material claim change between parent and child, show why a new reference or combination is noncumulative, and connect the alleged error to the stated basis for allowance. If the relevant IDS was exceptionally large or the applicant gave the examiner little assistance in locating the pertinent teaching, Ecto World makes those facts relevant as well.

For prosecutors, the Manual permits considered parent art to carry forward without resubmission, but permission is not always the same as litigation prudence. Resubmitting a concise, compliant IDS can place the reference on the child’s face and eliminate a later factual dispute over the path of consideration. Conversely, indiscriminately repopulating a continuation with an enormous family-wide IDS may reduce the practical inference that the examiner meaningfully evaluated any one reference and may create an Ecto World factor-(f) issue. It can also have fee consequences: every IDS filed under 37 C.F.R. § 1.97 on or after January 19, 2025, requires a written size-fee assertion under § 1.98(a)(4), and an IDS that causes the cumulative number of applicant-provided items to cross 50, 100, or 200 triggers the corresponding fee tier under § 1.17(v). Parent items do not count in the child unless the applicant resubmits them there. U.S. Patent & Trademark Office, Quick Reference Guide to the Information Disclosure Statement (IDS) Size Fee and Size Fee Assertion 1, 3–4. The right practice is deliberate: preserve proof of what was considered, resubmit when printing or clarity matters, comply with the special rules for international-parent documents, and avoid assuming that collateral family prosecutions will be treated as part of the child’s record.

VIII. What Is Binding—and What Remains Open

 

The hierarchy of authority deserves emphasis. Advanced Bionics, the designated portion of Becton, Dickinson, Oticon (precedential as to §§ II.B–II.C), and § A of Ecto World are precedential at the Board. Kewazinga, Johnson & Johnson, Gator Bio, Guardant, and EVE Energy are persuasive, nonprecedential decisions. There appears to be no Federal Circuit merits decision squarely resolving whether art considered only in a parent is “previously presented” for § 325(d) in an IPR challenging the child.

That appellate gap is unsurprising because institution decisions generally are not appealable under 35 U.S.C. § 314(d). Cuozzo Speed Techs., LLC v. Lee, 579 U.S. 261, 273–75 (2016); Thryv, Inc. v. Click-to-Call Techs., LP, 590 U.S. 45, 54 (2020); Mylan Lab’ys Ltd. v. Janssen Pharmaceutica, N.V., 989 F.3d 1375, 1382–83 (Fed. Cir. 2021). The Federal Circuit has addressed § 325(d) in other procedural settings, including ex parte reexamination after a serial IPR petition, but that authority does not establish a parent-prosecution rule for IPR institution. See In re Vivint, Inc., 14 F.4th 1342, 1350–54 (Fed. Cir. 2021).

Practitioners should also avoid relying on the abandoned “meaningfully addressed” proposal. In April 2024, the USPTO proposed a regulation under which art would not count as previously presented merely because it appeared on an initialed IDS; the proposal would have required the art or arguments to have been meaningfully addressed. Patent Trial and Appeal Board Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations, Instituting Parallel and Serial Petitions, and Termination Due to Settlement Agreement, 89 Fed. Reg. 28,693, 28,701, 28,705 (proposed Apr. 19, 2024). The Office withdrew that proposal effective October 17, 2025. Patent Trial and Appeal Board Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations, Instituting Parallel and Serial Petitions, and Termination Due to Settlement Agreement, 90 Fed. Reg. 48,342 (Oct. 17, 2025) (withdrawal). Current Board law is Ecto World: IDS presentation is enough for part one, while the depth and circumstances of consideration remain relevant to material error and the discretionary balance.

Conclusion

 

A reference need not appear on the face of the challenged patent to have been previously presented to the Office. In a direct continuation chain, MPEP § 609.02 may carry considered parent art into the child even when the applicant did not resubmit the reference for printing. Kewazinga applies that principle directly, and Ecto World confirms more broadly that IDS art need not have been used in a rejection to satisfy the first part of Advanced Bionics.

But “previously presented” does not mean “fully evaluated,” and it certainly does not mean “immune from reconsideration.” The decisive work often occurs at Advanced Bionics part two. A reasoned parent rejection directed to materially similar claims can make a powerful case for denial; an initialed IDS establishes less; a remote relative’s prosecution may establish nothing at all. The sound analysis therefore starts with the file history, follows the actual priority and examination links, and asks what the Office understood—not merely what happened to print on the cover.