IN RE SHAHRAM MOSTAFAZADEH AND JOSEPH O. SMITH , 2010-1260, Decided: May 3, 2011, Before DYK, FRIEDMAN, and PROST, Circuit Judges
Appeal from a decision of the United States Patent and Trademark Office, Board of Patent Appeals and Interferences (“Board”). The Board affirmed the Examiner’s rejection of claims 11–23 in the applicants’ reissue patent application. In re Mostafazadeh, No. 2009-004238 (B.P.A.I. Aug. 27, 2009) because the reissue application impermissibly attempted to recapture subject matter surrendered during prosecution of the original patent application. CAFC affirms the Board’s decision.
The rule against recapture applies to reissue applications. Essentially, a patentee may not broaden the scope of a particular claim limitation if he had earlier narrowed that claim limitation during prosecution of the original application. This rule applies even during the first two years of a patent’s life during which a broadening reissue would otherwise be allowed.
U.S. Patent Number 6,034,423 (“the ’423 patent”), which issued in 2000, is generally directed to lead frame based semiconductor packaging.
Originally filed claim 1 covered both embodiments illustrated in Fig. 1 (pin-type) and Fig. 2 (bottom-mount type):
In an integrated circuit package, a lead frame comprising:
a die attach platform;
a plurality of elongated leads which are electrically isolated from said die attach platform; and
a first bus bar which is electrically isolated from said die attach platform and said plurality of elongated leads.
In response to a prior art rejection showing a pin-type embodiment, claim 1 was amended to require circular attachment pads of the bottom-mount embodiment:
An integrated circuit package comprising:
(a) a lead frame comprising:
a die attach platform; and
a plurality of elongated leads which are electrically isolated from said die attach platform, each of said elongated leads including a circular portion formed as an attachment pad; and
(b) a substrate, having first and second surfaces on opposite sides of said substrate, for providing rigid support to said lead frame, said substrate contacting said lead frame on said first surface and having vias of non-circular cross sections to allow electrical connections between said first and second surfaces.
In the Remarks of the above amendment, it was argued that neither the circular pads nor their attendant benefits were disclosed or suggested by the prior art.
Reissue claim 11 is illustrative of the scope sought in the reissue application:
An integrated circuit package comprising:
a lead frame including a die attach platform, a plurality of contacts that are spaced apart from the die attach platform and a bus bar that is positioned between the die attach platform and at least some of the contacts, wherein bottom surfaces of the die attach platform, the contacts and the bus bar are substantially co-planar, and wherein each of the contacts includes a portion that forms an attachment pad;
a die carried by the die attach platform and electronically connected to the bus bar and at least some of the contacts; and
a protective casing covering the die and the lead frame while leaving bottom surfaces of the die attach platform, the bus bar and the conductive contacts ex-posed, wherein encapsulation material that forms the protective casing is exposed at a bottom surface of the package to physically isolate the bus bar from at least some of the conductive contacts, whereby the attachment pads are exposed at the bottom surface of the package.
Application of the recapture rule is a three step process. In re Clement, 131 F.3d 1464, 1468(Fed. Cir. 1997). The first step is to “determine whether and in what ‘aspect’ the reissue claims are broader than the patent claims.” Clement, 131 F.3d at 1468. “[A] reissue claim that deletes a limitation or element from the patent claims is broader” with respect to the modified limitation. Id. Next, the court must “determine whether the broader aspects of the reissue claims relate to surrendered subject matter.” In this final step, the court must “determine whether the surrendered subject matter has crept into the reissue claim.”
Both parties agree that the reissue claims are broader than the patented claims and that the broader aspects relate to the surrendered subject matter (i.e., the circular-attachment-pad limitation). Thus, only the third step of the recapture analysis is at issue. Here, it is important to look at the original claims before surrender, the patented claims after surrender, and the reissue claims.
As highlighted above, the applicants added “a circular portion as an attachment pad” to gain allowance. In the reissue application, this limitation was amended as “a portion that forms an attachment pad.”
Applicants argue that recapture is avoided in two ways. First, although the circular shape requirement was eliminated, applicants argue that the retained attachment pad limitation was maintained in a manner which narrows in a manner germane to the prior art. This argument fails because only a partial recapture is insufficient without a corresponding demonstration of material narrowing, especially where an attachment pad was well known in the art.
Second, applicants argue that the reissue claims each have a number of other narrowing limitations to the surrendered subject matter. This argument also fails because the narrowing is related to the bus bar, not the circular attachment pad.
The applicants in the present decision may have been able to reach a different result if claims directed to the pin-type and bottom mount type embodiments in Figs. 1 and 2 were presented in the reissue application. However, since the original claim was directed to both embodiments, the narrowing amendment to avoid the pin-type prior art may have likely foreclosed the use of such strategy, particularly since the amendment to the circular portion was specific to the bottom-mount embodiment.