Recapture of Canceled Subject Matter
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USPTO MPEP › Chapter 1400 - Correction of Patents › MPEP § 1412.02
Text
A reissue will not be granted to
"recapture"
claimed subject matter which was surrendered in an
application to obtain the original patent.
In re McDonald,
43 F.4th
1340, 1345, 2022 USPQ2d 745 (Fed. Cir. 2022);
Greenliant Systems, Inc. v. Xicor
LLC,
692 F.3d 1261, 103 USPQ2d 1951 (Fed. Cir. 2012);
In re
Youman,
679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012);
In re
Mostafazadeh,
643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011);
North American Container, Inc. v. Plastipak Packaging, Inc.,
415
F.3d 1335, 75 USPQ2d 1545 (Fed. Cir. 2005);
Pannu v. Storz Instruments
Inc.,
258 F.3d 1366, 59 USPQ2d 1597 (Fed. Cir. 2001);
Hester
Industries, Inc. v. Stein, Inc.,
142 F.3d 1472, 46 USPQ2d 1641 (Fed. Cir.
1998);
In re Clement,
131 F.3d 1464, 45 USPQ2d 1161 (Fed. Cir. 1997);
Ball Corp. v. United States,
729 F.2d 1429, 1436, 221 USPQ 289,
295 (Fed. Cir. 1984);
In re Wadlinger,
496 F.2d 1200, 181 USPQ 826
(CCPA 1974);
In re Richman,
409 F.2d 269, 276, 161 USPQ 359, 363-364
(CCPA 1969);
In re Willingham,
282 F.2d 353, 127 USPQ 211 (CCPA
1960). The question as to whether a reissue patent violates the rule against recapture
of subject matter surrendered during original prosecution is a question of law.
Mostafazadeh,
643 F.3d at 1358, 98 USPQ2d at 1642.
Claims to separate inventions/embodiments/species that
were not claimed in the original application prosecution (i.e., “overlooked aspects”)
are not a part of a recapture analysis. For this reason, none of the examples below
involve amending claims to add overlooked aspects. See
MPEP § 1412.01
,
subsection III, for more information on overlooked aspects.
I
deh,
643 F.3d at 1358, 98 USPQ2d at 1642.
Claims to separate inventions/embodiments/species that
were not claimed in the original application prosecution (i.e., “overlooked aspects”)
are not a part of a recapture analysis. For this reason, none of the examples below
involve amending claims to add overlooked aspects. See
MPEP § 1412.01
,
subsection III, for more information on overlooked aspects.
I.
DEFINITIONS
Broadening Claim
- A reissue claim is
“broadened” where at least one limitation of the patent claims is either completely
eliminated or is only presented in a broader way in the reissue claim relative to the
broadest patented claim(s); see
MPEP § 1412.03
for guidance as to
the nature of a "broadening claim."
Canceled Claim
– A claim canceled from
the original application to obtain the patent for which reissue is being sought. In
the context of recapture case law, claims are considered canceled if the claims were
deleted and not replaced or were replaced (either through cancellation or amendment)
by other claims that are more specific than the canceled claims in at least one
aspect in order to overcome a rejection in the prosecution of the original
application. In other words, claims replacing canceled claims can be new claims that
are narrower than the canceled claims or amended claims that are narrower than the
canceled version of the claims.
Original Application
- The "original
application" includes the prosecution record of the application that issued as the
patent for which the reissue application was filed. In addition, the “original
application” includes the patent family’s entire prosecution history.
MBO
Laboratories, Inc. v. Becton, Dickinson & Co.,
602 F.3d 1306,
1316-18, 94 USPQ2d 1598 (Fed. Cir. 2010). See also
In re McDonald,
43 F.4th 1340, 1347, 2022 USPQ2d 745 (Fed. Cir. 2022). For example, surrender may
occur because of the prosecution history of related applications.
Original Claim
– A claim that was
presented in the original application prior to surrender
entire prosecution history.
MBO
Laboratories, Inc. v. Becton, Dickinson & Co.,
602 F.3d 1306,
1316-18, 94 USPQ2d 1598 (Fed. Cir. 2010). See also
In re McDonald,
43 F.4th 1340, 1347, 2022 USPQ2d 745 (Fed. Cir. 2022). For example, surrender may
occur because of the prosecution history of related applications.
Original Claim
– A claim that was
presented in the original application prior to surrender. See
In re
Youman,
679 F.3d 1335,1346 n.4, 102 USPQ2d 1862,1870 n.4 (Fed. Cir.
2012).
Other or Unrelated Aspects/Limitations
–
Limitations that are not related to surrendered subject matter or surrender
generating limitations.
Overlooked Aspects
- Claims to separate
inventions/embodiments/species that were never presented in the original application.
See
MPEP §
1412.01
, subsection III, for more information on overlooked
aspects.
Patent Claim
– A claim in the patent for
which reissue is being sought. Some court decisions use the phrase "original patent
claim" for patent claim. Patent claims are the claims in effect as of the date of
filing of the reissue application. See
37 CFR 1.173(g)
.
Recapture
– A doctrine based upon the
error requirement in
35 U.S.C. 251
that prevents a
reissue applicant from claiming subject matter surrendered during the prosecution of
the original application.
Surrender Generating Limitation (SGL) or
Surrendered Subject Matter
– An SGL is a “limitation” presented, argued, or
stated to make the claims patentable (in the original application) and “generates”
the surrender of claimed subject matter. An SGL or surrendered subject matter can be
created by presentation of new/amended claims to define the invention over the art or
an argument/statement by applicant that a limitation of the claim(s) (including a
limitation in an original claim) defines the invention over the art
ted to make the claims patentable (in the original application) and “generates”
the surrender of claimed subject matter. An SGL or surrendered subject matter can be
created by presentation of new/amended claims to define the invention over the art or
an argument/statement by applicant that a limitation of the claim(s) (including a
limitation in an original claim) defines the invention over the art. A patent owner
(reissue applicant) is bound by the argument that applicant relied upon to overcome
an art rejection in the original application for the patent to be reissued,
regardless of whether the Office adopted the argument in allowing the claims.
Greenliant Systems, Inc. v. Xicor LLC,
692 F.3d 1261, 1271, 103
USPQ2d 1951, 1958 (Fed. Cir. 2012). An SGL or surrendered subject matter can also be
created by presentation of new/amended claims or an argument/statement to obviate a
rejection based on other grounds.
In re McDonald,
43 F.4th 1340,
1348, 2022 USPQ2d 745 (Fed. Cir. 2022).
II.
THREE STEP TEST FOR RECAPTURE:
In
Clement,
131 F.3d at 1468-70, 45 USPQ2d at
1164-65, the Court of Appeals for the Federal Circuit set forth a three step test for
recapture analysis. In
North American Container,
415 F.3d at 1349,
75 USPQ2d at 1556, the court restated this test as follows:
We apply the recapture rule as a three-step
process:
(1) first, we determine whether, and in what
respect, the reissue claims are broader in scope than the original patent
claims;
[NOTE: if the claims are not broader in
scope than the original patent claims, there is no recapture; if the
claims are broader in scope, then proceed to step (2).]
(2) next, we determine whether the broader
aspects of the reissue claims relate to subject matter surrendered in the
original prosecution; and
[NOTE: if the broader aspects of the
reissue claims do not relate to surrendered subject matter, there is no
recapture; if the broader aspects of the reissue claims do relate to
surrendered subject matter, then proceed to step (3).]
en proceed to step (2).]
(2) next, we determine whether the broader
aspects of the reissue claims relate to subject matter surrendered in the
original prosecution; and
[NOTE: if the broader aspects of the
reissue claims do not relate to surrendered subject matter, there is no
recapture; if the broader aspects of the reissue claims do relate to
surrendered subject matter, then proceed to step (3).]
(3) finally, we determine whether the reissue
claims were materially narrowed in other respects, so that the claims may
not have been enlarged, and hence avoid the recapture rule.
[NOTE: if the reissue claims were
materially narrowed in aspects related to the surrendered subject matter,
there is no recapture; if the claims were not materially narrowed in
related aspects or were narrowed in
unrelated
aspects, there
is recapture.]
In
North American Container,
the court cited
Pannu,
258 F.3d at 1371, 59 USPQ2d at 1600;
Hester,
142 F.3d at 1482-83, 46 USPQ2d at 1649-50; and
Clement,
131 F.3d at 1468, 45 USPQ2d at 1164-65 as cases that
lead to, and explain the language in, the
North American Container
recapture test.
A.
The First Step - Is There Broadening?
In every reissue application, the examiner must first review each
claim for the presence of broadening, as compared with the scope of the claims of
the patent to be reissued. A reissue claim is broadened where some limitation of
the patent claims is no longer required in the reissue claim; see
MPEP §
1412.03
for guidance as to the nature of a
"broadening claim."
First Step - Is There Broadening?
In every reissue application, the examiner must first review each
claim for the presence of broadening, as compared with the scope of the claims of
the patent to be reissued. A reissue claim is broadened where some limitation of
the patent claims is no longer required in the reissue claim; see
MPEP §
1412.03
for guidance as to the nature of a
"broadening claim."
If
the reissue claim is not broadened in any respect as compared to the patent
claims, the analysis ends; there is no recapture.
B.
The Second Step - Does Any Broadening Aspect of the Reissue Claim
Relate to Surrendered Subject Matter?
Where a claim in a reissue application is broadened in some
respect as compared to the patent claims, the examiner must next determine whether
the broadening aspect(s) of that reissue claim relate(s) to subject matter that
applicant previously surrendered during the prosecution of the original
application (which became the patent to be reissued). The
"original application"
includes the
patent family’s entire prosecution history.
MBO Laboratories, Inc. v.
Becton, Dickinson & Co.,
602 F.3d 1306, 94 USPQ2d 1598 (Fed. Cir.
2010). Each limitation of the patent claims, which is omitted or broadened in the
reissue claim, must be reviewed for this determination. This involves two
sub-steps.
1.
The Two Sub-Steps:
(A) One must first determine whether applicant surrendered
any subject matter in the prosecution of the original application that
became the patent to be reissued.
If an original patent claim limitation now being omitted
or broadened in the present reissue application was originally relied
upon by applicant in the original application to make the claims
allowable, the omitted limitation relates to subject matter previously
surrendered by applicant. The reliance by applicant to define the
original patent claims over the art can be by presentation of new/amended
claims to define over the art, or an argument/statement by applicant that
a limitation of the claim(s) defines over the art
upon by applicant in the original application to make the claims
allowable, the omitted limitation relates to subject matter previously
surrendered by applicant. The reliance by applicant to define the
original patent claims over the art can be by presentation of new/amended
claims to define over the art, or an argument/statement by applicant that
a limitation of the claim(s) defines over the art. The reliance by
applicant can also be created by presentation of new/amended claims or
arguments/statements to obviate rejections based on other grounds. See
In re McDonald,
43 F.4th 1340, 1348, 2022 USPQ2d
745 (Fed. Cir. 2022). To determine whether such reliance occurred, the
examiner must review the prosecution history of the original application
(of the patent to be reissued and any related application(s)) for
surrender of claimed subject matter which may result in recapture. The
prosecution history includes the rejections and applicant’s arguments
made therein.
With respect to whether applicant
surrendered any subject matter, it is to be noted that a patent owner
(reissue applicant) is bound by the argument that applicant relied upon
to overcome, for example, an art rejection in the original application
for the patent to be reissued, regardless of whether the Office adopted
the argument in allowing the claims.
Greenliant Systems, Inc. v.
Xicor LLC,
692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed.
Cir. 2012). As pointed out by the court, “[i]t does not matter whether
the examiner or the Board adopted a certain argument for allowance; the
sole question is whether the argument was made.”
Id.
If applicant did not surrender any subject matter in the
prosecution of the original application, the analysis ends and there is
no recapture.
(B) If applicant did surrender subject matter in the
original application prosecution, the examiner must then determine
whether any of the broadening of the reissue claims is in the area of the
surrendered subject matter
whether the argument was made.”
Id.
If applicant did not surrender any subject matter in the
prosecution of the original application, the analysis ends and there is
no recapture.
(B) If applicant did surrender subject matter in the
original application prosecution, the examiner must then determine
whether any of the broadening of the reissue claims is in the area of the
surrendered subject matter. The examiner must analyze all of the
broadening aspects of the reissue claims to determine if any of the
omitted/broadened limitation(s) are directed to limitations relied upon
by applicant in the original application to make the claims
allowable.
With respect to the “second step” in the
recapture analysis, it is to be noted that if the reissue claim(s), are
broadened with respect to the previously surrendered subject matter, then
recapture will be present regardless of other
unrelated
narrowing
limitations. In the decision of
In re Mostafazadeh,
643 F.3d
1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:
[T]he recapture rule is violated when a
limitation added during prosecution is eliminated entirely, even if other
narrowing limitations are added to the claim. If the added limitation is
modified but not eliminated, the claims must be materially narrowed relative
to the surrendered subject matter such that the surrendered subject matter
is not entirely or substantially recaptured.
Id.
at
1361.
The situation in
Mostafazadeh
involved substantial recapture of the surrendered subject matter, which was
determined under the third step of the recapture analysis. See subsection II.C
below for more explanation. The focus in the analysis of the second step must
be on the subject matter that was surrendered during the original application
prosecution in the context of the then-existing claims (i.e., the original
claims)
azadeh
involved substantial recapture of the surrendered subject matter, which was
determined under the third step of the recapture analysis. See subsection II.C
below for more explanation. The focus in the analysis of the second step must
be on the subject matter that was surrendered during the original application
prosecution in the context of the then-existing claims (i.e., the original
claims).
When an examiner determines that the broadening
aspect(s) of that reissue claim relate(s) to subject matter that applicant
previously surrendered during the prosecution of the original application
(which became the patent to be reissued) in step 2 of the recapture analysis,
the overlooked aspects inquiry may be applicable. See
MPEP §
1412.01
, subsection III.
2.
Examples of the Second Step Analysis:
(A) Example (1) - Argument without amendment:
In
Hester,
supra
, the Federal Circuit held that the surrender that
forms the basis for impermissible recapture
"can occur through arguments alone."
142
F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims
is omitted in the reissue claims and no other amendments are made. This
omission provides a broadening aspect in the reissue claims, as compared to the
claims of the patent. If the omitted limitation A was argued in the original
application to make the application claims allowable over the art in the
application, then the omitted limitation relates to subject matter previously
surrendered in the original application, and recapture will exist. Accordingly,
where claims are broadened in a reissue application, the examiner should review
the prosecution history of the original patent file for recapture,
even where the claims were never amended
during the
prosecution of the application which resulted in the patent. Note: The argument
that the claim limitation defined over the rejection must have been specific as
to the limitation relied upon, rather than a general statement regarding the
claims as a whole. A general
"boiler
plate"
the prosecution history of the original patent file for recapture,
even where the claims were never amended
during the
prosecution of the application which resulted in the patent. Note: The argument
that the claim limitation defined over the rejection must have been specific as
to the limitation relied upon, rather than a general statement regarding the
claims as a whole. A general
"boiler
plate"
sentence in the original application will not, by
itself, be sufficient to establish surrender and recapture.
An example of a general
"boiler plate"
sentence of argument is:
In closing, it is argued that the
limitations of claims 1-7 distinguish the claims from the teachings of the
prior art, and claims 1-7 are thus patentable.
An argument that merely states that all the limitations of the
claims define over the prior art will also not, by itself, be sufficient to
establish surrender and recapture. An example is:
Claims 1-5 set forth a power-train apparatus which
comprises the combination of A+B+C+D+E. The prior art of record does not
disclose or otherwise teach, providing a material-transfer apparatus as
defined by the limitations of claim 1, including an A member and a B member,
both connected to a C member, with all three being aligned with the D and E
members.
This statement is simply a restatement of the entirety of
claim 1 as allowed. No measure of surrender could be gleaned from such
"boiler-plate" applicant arguments.
In both of the above examples, the argument does not provide
an indication of what specific limitations, e.g., specific element or step of
the claims, cooperative effect, or other aspect of the claims, are being relied
upon for patentability. Thus, applicant has not surrendered anything by the
argument.
(B) Example (2) - Amendment of the claims without
argument:
The limitation omitted in the reissue claim(s) was added in
the original application claims for the purpose of making the application
claims allowable over a rejection or objection made in the application
, or other aspect of the claims, are being relied
upon for patentability. Thus, applicant has not surrendered anything by the
argument.
(B) Example (2) - Amendment of the claims without
argument:
The limitation omitted in the reissue claim(s) was added in
the original application claims for the purpose of making the application
claims allowable over a rejection or objection made in the application. Even
though applicant made no argument on the record that the limitation was added
to obviate the rejection, the nature of the addition to the claim can show that
the limitation was added in direct reply to the rejection. This too will
establish the omitted limitation as relating to subject matter previously
surrendered. To illustrate this, note the following example:
The original application claims recite limitations A+B+C,
and the Office action rejection combines two references to show A+B+C. In
the amendment replying to the Office action, applicant adds limitation D to
A+B+C in the claims, but makes no argument as to that addition. The examiner
then allows the claims. Even though there is no argument as to the addition
of limitation D, it must be presumed that the D limitation was added to
obviate the rejection. The subsequent deletion of (omission of) limitation D
in the reissue claims would be presumed to be a broadening in an aspect of
the reissue claims related to surrendered subject matter. Accordingly, the
reissue claims would be barred by the recapture doctrine (absent the
addition of a materially narrowing limitation related to the surrendered
subject matter). The above result would be the same whether the addition of
limitation D in the original application was by way of applicant’s amendment
or by way of an examiner’s amendment with authorization by applicant.
(C) Example (3) - Who can make the surrendering
argument?
Assume that the limitation A omitted in the reissue claims was
present in the claims of the original application
ndered
subject matter). The above result would be the same whether the addition of
limitation D in the original application was by way of applicant’s amendment
or by way of an examiner’s amendment with authorization by applicant.
(C) Example (3) - Who can make the surrendering
argument?
Assume that the limitation A omitted in the reissue claims was
present in the claims of the original application. The examiner’s reasons for
allowance in the original application stated that it was that limitation A
which distinguished over a potential combination of references X and Y.
Applicant did not present on the record a counter statement or comment as to
the examiner’s reasons for allowance, and permitted the claims to issue.
Ex parte Yamaguchi,
61 USPQ2d 1043 (Bd.
Pat. App. & Inter. 2001)(precedential) held that a surrender of claimed
subject matter cannot be based solely upon an applicant’s failure to respond
to, or failure to challenge, an examiner’s statement made during the
prosecution of an application. Applicant is bound only by applicant’s revision
of the application claims (including examiner's amendments authorized by
applicant) or a positive argument/statement by
applicant.
An
applicant’s failure to present on the record a counter statement or comment as
to an examiner’s reasons for allowance does not give rise to any implication
that applicant agreed with or acquiesced in the examiner’s reasoning for
allowance. Thus, the failure to present a counter statement or comment as to
the examiner’s statement of reasons for allowance does
not
give rise to any finding of surrender.
The
examiner’s statement of reasons for allowance in the original application
cannot,
by itself,
provide the basis for establishing surrender and recapture
.
It is only in the situation where applicant does file comments
on the statement of reasons for allowance, that surrender
may
have
occurred
as to
the examiner’s statement of reasons for allowance does
not
give rise to any finding of surrender.
The
examiner’s statement of reasons for allowance in the original application
cannot,
by itself,
provide the basis for establishing surrender and recapture
.
It is only in the situation where applicant does file comments
on the statement of reasons for allowance, that surrender
may
have
occurred. Note the following scenarios in which an
applicant files comments:
Scenario 1- Limitation C is Surrendered Subject Matter:
The examiner’s statement of reasons for allowance in the original
application stated that it was limitation C (of the combination of ABC)
which distinguished over a potential combining of references X and Y, in
that limitation C provided increased speed to the process. Applicant filed
comments on the examiner’s statement of reasons for allowance essentially
supporting the examiner’s reasons. Limitation C is thus established as
relating to subject matter previously surrendered.
Scenario 2- Limitation C is
Not
Surrendered
Subject Matter:
On the other hand, if applicant’s comments on
the examiner’s statement of reasons for allowance
contain a
counter statement
that it is limitation B (of the combination
of ABC), rather than C, which distinguishes the claims over the art, then
limitation B would constitute a surrender generating limitation, and
limitation C is
not
surrender generating
limitation.
Scenario 3- There is No
Surrender:
If applicant replies to the examiner’s statement of
reasons for allowance with a general statement that the claims are allowable
because the prior art of record does not anticipate or render obvious the
claims as a whole, then there will be no surrender.
C
would constitute a surrender generating limitation, and
limitation C is
not
surrender generating
limitation.
Scenario 3- There is No
Surrender:
If applicant replies to the examiner’s statement of
reasons for allowance with a general statement that the claims are allowable
because the prior art of record does not anticipate or render obvious the
claims as a whole, then there will be no surrender.
C.
The Third Step - Are the Reissue Claims Materially Narrowed in Other
Respects, and Hence Avoid the Recapture Rule?
As pointed out above, this third step of the recapture
determination, as set forth in
North American Container,
considers the significance of the claim limitations that were added and deleted,
during prosecution of the patent (to be reissued) to determine whether the reissue
claims should be barred under the recapture doctrine.
In the decision of
In re
Mostafazadeh,
643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the
Federal Circuit stated that to avoid the recapture rule "the claims must be
materially narrowed relative to the surrendered subject matter such that the
surrendered subject matter is not entirely or substantially recaptured."
Id.
at 1361, 98 USPQ2d at 1644. Under this third step, it
must be determined if there is
entire or substantial
recapture of the
surrendered subject matter because there is no or insufficient material narrowing
to avoid the recapture rule.
The following discussion addresses analyzing the reissue claims
that have eliminated or modified a surrender generating limitation, as determined
under step 2 analysis. In any broadening reissue application, the examiner will
determine, under steps 1 and 2 of the recapture analysis on a claim-by-claim
basis, whether the broadening relates to subject matter that was surrendered
during the examination of the patent for which reissue is requested. Under step 3,
it must be determined if such reissue claims are materially narrowed so as to
escape the effects of the recapture doctrine
g reissue application, the examiner will
determine, under steps 1 and 2 of the recapture analysis on a claim-by-claim
basis, whether the broadening relates to subject matter that was surrendered
during the examination of the patent for which reissue is requested. Under step 3,
it must be determined if such reissue claims are materially narrowed so as to
escape the effects of the recapture doctrine. Note, examiners should consider any
relevant preliminary applicant arguments of record as part of the recapture
determination. See subsection VII, below, “REBUTTAL BY THE REISSUE APPLICANT,”
which points out how the recapture finding of the Office can be rebutted by
applicant, in some limited instances, by showing that material narrowing is
present in the claims.
The modification of a surrender generating limitation (SGL) is
broken down into several possibilities that will be addressed below.
Situation 1 - SGL entirely eliminated: If an SGL has been
entirely
eliminated
from a claim present in the reissue application, then a
recapture rejection under
35 U.S.C. 251
may be
proper. For example, if a claim limitation present in the original patent
that was added to overcome a rejection or that was argued by applicant to
distinguish over the prior art is entirely eliminated from a claim in the
reissue application and not replaced by a new SGL-related limitation, then a
recapture rejection under
35 U.S.C. 251
is proper
and must be made for that claim.
Such an omission in a reissue claim, even if
it is accompanied by other limitations making the reissue claim narrower
than the patent claim in other
unrelated
aspects, is
impermissible recapture.
Pannu,
258 F.3d at 1371-72, 59
USPQ2d at 1600. But note that even if the SGL limitation in the patent
claims was entirely eliminated, the reissue applicant may have added a new
limitation that relates to surrendered subject matter. See situation 3
below
s accompanied by other limitations making the reissue claim narrower
than the patent claim in other
unrelated
aspects, is
impermissible recapture.
Pannu,
258 F.3d at 1371-72, 59
USPQ2d at 1600. But note that even if the SGL limitation in the patent
claims was entirely eliminated, the reissue applicant may have added a new
limitation that relates to surrendered subject matter. See situation 3
below.
Situation 2 - SGL modified but not entirely
eliminated: If the SGL has not been entirely eliminated from a claim in
the reissue application (i.e., the amendment narrowing the claim or the
argued limitation has not been entirely eliminated from the claim in the
reissue application), but rather it has been made less restrictive in the
reissue application claim (such that the claim is broadened), the analysis
(based on
In re Mostafazadeh,
643 F.3d 1353, 98 USPQ2d
1639 (Fed. Cir. 2011) and
In re Youman,
679 F.3d 1335,
102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows:
It must be determined what portion of the
amendment or argued limitation has been retained, and whether the
retained portion materially narrows the original claims to avoid
recapture.
See
Youman,
679 F.3d at
1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the
claims before surrender'"). “[I]f the patentee modifies the added [or
argued] limitation such that it is broader than the patented claim yet still
materially narrows relative to the original claim, the recapture rule does
not bar reissue.”
Id.
at 1347, 102 USPQ2d at 1870.
If the retained portion of the modified
limitation is well known in the prior art, then impermissible recapture
exists, even in a case where a further limitation which is not related to
the surrendered subject matter (i.e., a limitation that does not materially
narrow the claims) has been added to define the claims over the art.
Mostafazadeh,
643 F.3d at 1361, 98 USPQ2d at 1644.
Even if the retained portion of the modified limitation is not well known,
there may still be impermissible recapture
le recapture
exists, even in a case where a further limitation which is not related to
the surrendered subject matter (i.e., a limitation that does not materially
narrow the claims) has been added to define the claims over the art.
Mostafazadeh,
643 F.3d at 1361, 98 USPQ2d at 1644.
Even if the retained portion of the modified limitation is not well known,
there may still be impermissible recapture. For example, “[w]here the
modified limitation was contained within the prior art relied upon by the
examiner in the original prosecution … the limitation is not materially
narrowing.” See
Youman,
679 F.3d at 1347, 102 USPQ2d at
1870.
Situation 3 - Materially narrowed in other respects relative to the
surrendered subject matter: In both situations 1 and 2, even “[i]f the
modified limitation does not materially narrow (or, in other cases, the
limitation is eliminated),” it may be that “the reissued claims were
materially narrowed in other respects so that the claims have not been
enlarged, and hence avoid the recapture rule.”
Youman,
679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified
limitation does not materially narrow, the reissue applicant may have added
a new limitation that still relates to surrendered subject matter (e.g.,
same characteristic or concept).
The material narrowing must relate to what
was amended or argued by applicant in the original application, for example
to define the claim over the art.
Greenliant Systems, Inc. et al v.
Xicor LLC,
692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed.
Cir. 2012). See also
In re General Electric Co.,
789 F.
App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The
additional limitations identified by General Electric, however, relate only
to positioning of the synthetic jet assembly. Any narrowing accomplished by
those limitations is thus unrelated to the surrendered subject matter [the
attachment-related limitations] and therefore insufficient to avoid
recapture”)
ectric Co.,
789 F.
App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The
additional limitations identified by General Electric, however, relate only
to positioning of the synthetic jet assembly. Any narrowing accomplished by
those limitations is thus unrelated to the surrendered subject matter [the
attachment-related limitations] and therefore insufficient to avoid
recapture”). If the reissue applicant believes that “the reissued claims
were materially narrowed in other respects,” the reissue applicant should
point out
explicitly
what limitation has been added
to the claims to materially narrow and how it materially narrows the
claims.
III.
Example
Analysis
The following examples are provided for analyzing the reissue
claims for recapture.
A.
Comparing
Reissue Claims
Narrowed/Broadened Vis-à-vis the
Canceled
Claims
1.
Reissue Claims Are Same or Broader in Scope Than Canceled Claims
in All Aspects:
The recapture rule bars the patentee from acquiring,
through reissue, claims that are in all aspects (A) of the same scope as,
or (B) broader in scope than, those claims
canceled
from the original application to
obtain a patent.
Ball Corp. v. United States,
729 F.2d
at 1436, 221 USPQ at 295.
2.
Reissue Claims Are Narrower in Scope Than Canceled Claims in at
Least One Aspect:
The discussion below is directed to the situation where
the
reissue claims are narrower than the canceled claims in some
aspect, but are broader than the patent claims in some other
aspect
. Note, as discussed above in subsection II.A, if the
reissue claims are equal in scope to, or narrower than, the patent claims
(as opposed to the canceled claims) in all aspects, then there can never
be recapture and the discussion that follows is not applicable
ere
the
reissue claims are narrower than the canceled claims in some
aspect, but are broader than the patent claims in some other
aspect
. Note, as discussed above in subsection II.A, if the
reissue claims are equal in scope to, or narrower than, the patent claims
(as opposed to the canceled claims) in all aspects, then there can never
be recapture and the discussion that follows is not applicable.
If the reissue claims are narrower in scope than the
claims
canceled
from the original application by
inclusion of
the entirety of the limitation added
to define the original application claims over a
rejection
, there will be no recapture, even if the reissue
claims are broader than the canceled claims in some other aspect (i.e.,
an aspect not related to the surrender made in the original
application).
For example, assume combination AB was originally
claimed in the application, and the claim was amended in response to a
rejection to add element C, and thus, provide ABC (after which the patent
issued). The prosecution history of the original application does not
include any patentability arguments based on limitation B alone or in
combination with A, C, or A and C. The reissue claims are then directed
to combination AB
broadened
C. The
AB
broadened
C claims are
narrower
in scope when compared with the canceled
claim subject matter AB
with respect to the addition of
C
(which was added in the application to overcome the art).
Because the reissue claim retains surrender-generating limitation C and
the broadening was not in the area of the surrendered subject matter,
there is no recapture. On the other hand, if the amendment paper that
added element C in the prosecution of the original application included
arguments that the combination of B and C defined the claimed invention
over the prior art (e.g., there is synergistic effect of B and C), then
there will be recapture unless the claim is materially narrowed in a
manner related to the surrendered subject matter. See example (4) in
subsection B below
if the amendment paper that
added element C in the prosecution of the original application included
arguments that the combination of B and C defined the claimed invention
over the prior art (e.g., there is synergistic effect of B and C), then
there will be recapture unless the claim is materially narrowed in a
manner related to the surrendered subject matter. See example (4) in
subsection B below.
As another example, assume combination ABZ was
originally claimed in the application, and the claim was amended in
response to a rejection to add element C and thus provide ABZC (after
which the patent issued). The prosecution history of the original
application does not include any patentability arguments based on
limitation Z. The reissue claims are then directed to combination ABC
(i.e., element Z is deleted from the canceled claims, while element C
remains present). The ABC claims of the reissue are
narrower
in scope as compared to the canceled claim
subject matter ABZ
with respect to the addition of C
(which was added in the application to overcome the art). Because the
reissue claims retain surrender-generating limitation C, there is
no recapture
.
B.
Comparing
Reissue Claims
Narrowed/Broadened Vis-à-vis the
Patent Claims
As pointed out above, where the reissue claims are narrower
than the patent claims in all aspects, then there can never be recapture. If
reissue claims are equal in scope to the patent claims, there is no recapture
as to those reissue claims. Where, however, reissue claims are both
broadened and narrowed
as compared with the patent
claims, the nature of the broadening and narrowing must be examined to
determine whether the reissue claims are barred as being recapture of
surrendered subject matter. If the claims are
"broader than they are narrower in a manner directly
pertinent to the subject matter... surrendered during
prosecution"
s. Where, however, reissue claims are both
broadened and narrowed
as compared with the patent
claims, the nature of the broadening and narrowing must be examined to
determine whether the reissue claims are barred as being recapture of
surrendered subject matter. If the claims are
"broader than they are narrower in a manner directly
pertinent to the subject matter... surrendered during
prosecution"
(
Clement,
131 F.3d at
1471, 45 USPQ2d at 1166), then recapture will bar the claims. This
narrowing/broadening
vis-à-vis
the patent is broken down
into four possibilities that will now be addressed.
If a claim is presented in a reissue application that omits,
in its entirety, the surrender-generating limitation, that claim impermissibly
recaptures what was previously surrendered, and that claim is barred under
35 U.S.C.
251
. Note, however, subsection VII, below, “REBUTTAL BY
THE REISSUE APPLICANT,” which points out how the recapture finding of the
Office can be rebutted by applicant, in some limited instances, by showing that
material narrowing is present in the claims.
1.
Reissue Claims Are Broader by Entirely Omitting Surrender Generating
Limitation(s) and Are Narrower in Unrelated Aspect(s):
In this case, there is
recapture
.
Recapture exists because there is no
addition of a new limitation that is related to the surrendered subject
matter or if there is a new limitation that is related to the surrendered
subject matter but it fails to materially narrow the claim (e.g., only adds
what is known in the prior art).
This situation is where the patent claims are directed to
combination ABC and the reissue claims are directed to ABD (which is not an
overlooked aspect). Element C was either a limitation added to AB to obtain
allowance of the original patent, or was argued by applicant to obviate a
rejection (or both) in the prosecution of the original application. Thus,
addition of C (and/or argument as to C) has resulted in the surrender of any
combination of A & B that does not include subject matter related to C
cted to ABD (which is not an
overlooked aspect). Element C was either a limitation added to AB to obtain
allowance of the original patent, or was argued by applicant to obviate a
rejection (or both) in the prosecution of the original application. Thus,
addition of C (and/or argument as to C) has resulted in the surrender of any
combination of A & B that does not include subject matter related to C.
Element C is a surrender generating limitation. Element D, on the other
hand, is not related to the surrendered subject matter. Thus, the reissue
claim, which completely eliminates C, is broadened in an area related to the
surrender. The narrowing of the claim by the addition of D will not save the
claim from recapture because D is not related to the surrendered subject
matter. If, however, element D were related to the surrendered subject
matter and materially narrowed the claim compared to the canceled claim,
recapture may be avoided. See example 4 below.
Reissue claims that are broader than the original patent
claims by entirely omitting the surrender-generating limitation (element C,
in the example given) without a related replacement limitation
will be barred by the recapture rule
even though
there is narrowing of the claims by adding limitation(s) not related to the
surrendered subject matter. As stated in the decision of
In re
Clement,
131 F.3d at 1470, 45 USPQ2d at 1165, if the reissue
claim is broader in an aspect germane to a prior art rejection, but narrower
in another aspect completely unrelated to the rejection (e.g., fails to
materially narrow the claim relative to the surrendered subject matter), the
recapture rule bars the claim.
Pannu,
258 F.3d 1366, 59
USPQ2d 1597, provides a fact situation in which this scenario was held to be
recapture.
2.
Reissue Claims Are Narrower or Equal in Scope in Area Related to
Surrendered Subject Matter and Are Broader in Unrelated Aspect(s):
In this case, there is
no
recapture
ails to
materially narrow the claim relative to the surrendered subject matter), the
recapture rule bars the claim.
Pannu,
258 F.3d 1366, 59
USPQ2d 1597, provides a fact situation in which this scenario was held to be
recapture.
2.
Reissue Claims Are Narrower or Equal in Scope in Area Related to
Surrendered Subject Matter and Are Broader in Unrelated Aspect(s):
In this case, there is
no
recapture
.
This situation is where the patent claims are directed to
combination ABCDE and the reissue claims are directed to ABDE (element C is
omitted). Assume that the combination of ABCD was present in the original
application as it was filed, and
element E was later added to
overcome a rejection
. No patentability argument was ever
presented based on elements A-C.
In this situation, the ABCDE combination of the patent can
be broadened (in the reissue application) to omit element C, and thereby
claim the combination of ABDE, where element E (the surrender generating
limitation) is not omitted. There would be
no
recapture in this instance. (If an argument had been presented as to element
C defining over the art, in addition to the addition of element E, then the
ABCDE combination could
not
be broadened to entirely
omit element C and thereby claim combination of ABDE. This would be
recapture; see the discussion above as to surrender and recapture based upon
argument and see example 4 below.)
Additionally, the reissue claims are certainly permitted to
recite combination ABDE
specific
(where
surrender-generating element E
is narrowed
). The
patent claims can be broadened in an area not directed to the surrender (by
omitting element C) and narrowed in the area of surrender (by narrowing
element E to E
specific
) without violating the
recapture doctrine.
As another example, assume limitation C was added to
application claims AB to obtain the patent to ABC, and now the reissue
application presents claims to AC or AB
broad
C
rowed
). The
patent claims can be broadened in an area not directed to the surrender (by
omitting element C) and narrowed in the area of surrender (by narrowing
element E to E
specific
) without violating the
recapture doctrine.
As another example, assume limitation C was added to
application claims AB to obtain the patent to ABC, and now the reissue
application presents claims to AC or AB
broad
C. Such
reissue claims avoid the effect of the recapture rule because they are
broader in a way that does not attempt to reclaim what was surrendered
earlier.
Mentor Corp. v. Coloplast, Inc.,
998 F.2d 992,
994, 27 USPQ2d 1521, 1525 (Fed. Cir. 1993). Such claims are considered to be
broader in an aspect not
"germane to a
prior art rejection,"
and thus are not barred by
recapture.
In re Clement,
131 F.3d at 1470, 45 USPQ2d at
1165.
Reissue claims that are broader than the original patent
claims by deletion of a limitation or claim requirement other than the
"surrender-generating
limitation"
will
avoid the effect of
recapture,
regardless of the nature of the narrowing in the
claims, and even if the claims are not narrowed at all from the scope of the
patent claims.
3.
Reissue Claims Retain Surrender Generating Limitation(s) without
Change and Are Narrower or Broader in Unrelated Aspect(s):
In this instance, there is clearly
no
recapture
. In the reissue application, there has been no
change in the claims related to the matter surrendered in the original
application for the patent.
In this instance, element C was added to the AB combination
to provide ABC and overcome a rejection, and the patent was issued. The
reissue omits element B and adds element Z, to thus claim ACZ. There is no
recapture because the surrender generating element C has not been modified
in any way
been no
change in the claims related to the matter surrendered in the original
application for the patent.
In this instance, element C was added to the AB combination
to provide ABC and overcome a rejection, and the patent was issued. The
reissue omits element B and adds element Z, to thus claim ACZ. There is no
recapture because the surrender generating element C has not been modified
in any way. (Note, however, that if, when element C was added to AB,
applicant argued that the association of newly added C with B provides a
synergistic (unexpected) result to thus define over the art, then neither
element B nor element C could be entirely omitted in the reissue
application. See the discussion above as to surrender and recapture based
upon argument and example 4 below.)
4.
Reissue Claims Retain, in Broadened Form, the Surrender Generating
Limitation(s):
In this case, there may be
recapture
.
Assume the combination AB was originally claimed in the
application, and was amended in reply to a rejection to add element C and
thus provide the combination ABC (after which the patent issued). A reissue
application is then filed, and the reissue application claims are directed
to the combination ABC
broadened
. The
ABC
broadened
claims are narrowed in scope when
compared with the canceled claim subject matter AB (e.g., the original
claims), because of the addition of C
broadened
. Thus,
the claims retain, in broadened form, the limitation argued/added to
overcome a rejection in the original prosecution. In this instance, a
recapture rejection can be made even though
ABC
broadened
is narrower than canceled claim
subject matter AB, if C
broadened
was “well known in
the prior art” or otherwise fails to materially narrow the application
claims to avoid recapture of the surrendered subject matter
etain, in broadened form, the limitation argued/added to
overcome a rejection in the original prosecution. In this instance, a
recapture rejection can be made even though
ABC
broadened
is narrower than canceled claim
subject matter AB, if C
broadened
was “well known in
the prior art” or otherwise fails to materially narrow the application
claims to avoid recapture of the surrendered subject matter. In
Mostafazadeh
, the panel explained that “if reissue
claims ‘materially narrow[ed]’ the claims relative to the original claims,”
there is no impermissible recapture, where “
full or substantial
recapture of the subject matter surrendered during prosecution is
avoided.” See
In re Mostafazadeh,
643 F.3d 1353, 1358, 98
USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the
patentee modifies the added limitation such that it is broader than the
patented claim yet still materially narrows relative to the original claim,
the recapture rule does not bar reissue.”
In re Youman et
al.,
679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir.
2012). Even if the retained portion of the modified limitation is not well
known, there may still be impermissible recapture. For example, “[w]here the
modified limitation was contained within the prior art relied upon by the
examiner in the original prosecution … the limitation is not materially
narrowing.”
Id.
Any recapture of surrendered subject
matter that was contained in prior art of the original prosecution forms the
ceiling for determining whether the modified limitation is materially
narrowing.
Id.
IV.
REISSUE TO TAKE ADVANTAGE OF pre-AIA 35 U.S.C. 103(b):
For patents issued on an application subject to the pre-AIA prior
art regime (pre-AIA patents), a patentee may file a reissue application to permit
consideration of process claims which qualify for
pre-AIA 35 U.S.C. 103(b)
treatment if a patent is granted on an application entitled to the benefit of
pre-AIA 35
U.S.C. 103(b)
, without an election having been made as a result
of error without deceptive intent
s issued on an application subject to the pre-AIA prior
art regime (pre-AIA patents), a patentee may file a reissue application to permit
consideration of process claims which qualify for
pre-AIA 35 U.S.C. 103(b)
treatment if a patent is granted on an application entitled to the benefit of
pre-AIA 35
U.S.C. 103(b)
, without an election having been made as a result
of error without deceptive intent. See
MPEP §
2147
.
This is not to be considered recapture.
The addition of process claims, however, will generally be considered to be a
broadening
of the invention (
Ex parte
Wikdahl,
10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such
addition must be applied for within two years of the grant of the original patent, or
in an appropriate continuing broadening reissue application claiming the benefit of a
prior-filed broadening reissue application filed within two years of the grant of the
original patent. See also
MPEP § 1412.03
as to broadened
claims.
V.
REISSUE FOR ARTICLE CLAIMS WHICH ARE FUNCTIONAL DESCRIPTIVE MATERIAL STORED ON
A COMPUTER-READABLE MEDIUM:
A patentee may file a reissue application to permit consideration of
article of manufacture claims (not presented in the patent to be reissued) which are
functional descriptive material stored on a computer-readable medium, where these
article claims correspond to the process or machine claims which have been patented.
The addition of these “article” claims will generally be considered to be a
broadening
of the invention (
Ex parte
Wikdahl,
10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such
addition must be applied for within two years of the grant of the original patent.
See also
MPEP §
1412.03
as to broadened claims.
VI.
REJECTION BASED UPON RECAPTURE:
Reissue claims which recapture surrendered subject matter should be
rejected using form paragraph
14.17
.
This is a copy of a public record, reproduced as it was published. It is not legal advice, and it may not be the version a court would rely on. Check the official source before you cite it.