Recapture Issues in a Reissue Application

Dennis Hubbs | May 30, 2012

In Re Roger Youman and Marney Morris

May 8, 2012

Panel: Lourie, Schall and Prost. Opinion by Prost. Dissent by Lourie.


Applicants filed a broadening reissue application within two years of the patent issuing.  The examiner rejected the claims because applicants attempted to recapture surrendered subject matter.  The Board of Patent Appeals and Interferences (BPAI) affirmed the examiner’s rejection but the Court of Appeals for the Federal Circuit (CAFC) overturned the BPAI ruling and in doing so, clarified the three step process to determine if applicant is barred by the recapture rule.


Applicants filed a broadening reissue application within two years of the patent date.  Applicants sought to broaden independent claim 1 of the reissue application, but the examiner rejected the broadened claim alleging that applicants improperly recaptured subject matter that was surrendered during prosecution of the original application.

Specifically, in the originally filed application, the claim feature at issue recited:

selection means for allowing said user to select a title for display on said television receiver by selecting the first n characters of said title, where n is greater than or equal to one.  (Originally filed claim feature.)

During prosecution of the original application, applicants amended the claimed feature to recite:

said selection means comprising means for causing each of said n characters to cycle forward and backward through a plurality of alphanumeric characters.  (Emphasis added.)

The amendment distinguished the claim over the art and resulted in allowance of the application.

Applicants then sought to broaden the issued claim by filing a reissue application and amended the feature to recite:

a wireless remote control comprising nonalphanumeric keys … wherein each of the n characters may be selected with the wireless remote control from a plurality of displayed alphanumeric characters by changing from a first character to a second character using the nonalphanumeric keys.  (Emphasis added. Claim feature sought to be patented in reissue application.)

BPAI Analysis:

After the claim was rejected by the examiner for recapturing surrendered subject matter, applicants appealed to the BPAI.  The BPAI applied a three step recapture rule analysis (discussed in more detail under the CAFC analysis).  The BPAI found that the reissue claim was broader than the issued claim because the feature of “changing” in the reissue claim was broader than the feature of “cycling” in the issued claim.

Next, the BPAI determined that the broadening related to the surrendered subject matter.  Finally, the BPAI determined that other potentially narrowing limitations were not overlooked and thus the reissue claim could not avoid the recapture rule.  Thus the BPAI upheld the examiner’s rejection.

CAFC Analysis:

“The  recapture rule bars a patentee from recapturing subject matter, through reissue, that the patentee intentionally surrendered during the original prosecution in order to overcome prior art and obtain a valid patent.”

“The rationale underlying the rule is that the cancellation or amendment of the original claim in order to overcome prior art is a deliberate action that necessarily excludes the inadvertence or mistake contemplated by the statute’s error requirements.”

Three step analysis to determine recapture:

  1. Determine whether and in what ‘aspect’ the reissue claims are broader than the patent claims.
  2. Determine whether the broader aspects of the reissue claims relate to surrendered subject matter.
  3. Determine whether the surrendered subject matter has crept into the reissue claim.

The CAFC, BPAI and both parties to the appeal agreed that the reissue feature of “changing” is broader than the patented feature of “cycling.”  Thus, the first prong of the test was determined to be satisfied.

Regarding the second prong of the test, the court looked to the change in scope between the original claims and the patented claims (and accompanying arguments made during the original prosecution).  The CAFC agreed with the BPAI that surrendered subject matter was any “selecting means” that was broader than the cycling limitation of the patented claim.  Thus the CAFC determined that the broader aspects of the reissue claims related to the surrendered subject matter.

Finally, regarding the last prong of the recapture test, the court cited to Mostafazadeh (Fed. Cir. 2011):

Unless the claims are materially narrowed in a way that avoids substantial or whole recapture of the surrendered subject matter, the surrendered subject matter has crept into the reissue claims and they are barred under the recapture rule.  (Citation omitted.)

The court began this analysis by pointing out that the BPAI improperly relied on MPEP § 1412.02(I)(C).  Here the MPEP cited to a case on point and stated that if the surrendered subject matter is in any way broadened, then a recapture rejection is proper.

According to the CAFC, “Such reliance is misplaced.”  The CAFC went on to explain that the MPEP misconstrued the case and the proper analysis was laid out in Mostafazadeh.  The court clarified that the “material narrowing” of a reissue claim must be measured based on the original claim, and not the patented claim.  By doing this, the CAFC stated that:

…we are ensuring that the patentee is unable to recapture what is surrendered deliberately, but allowing room for error, as required by the reissue statute.

Because the BPAI did not properly apply the third step of the recapture rule test, the CAFC vacated and remanded the case to the BPAI to properly apply the test and make necessary findings of fact.  The BPAI must determine if the reissue claim feature was “materially narrowing,” with respect to the original claim.


“When the originally filed claim has been amended, especially when the amendment was made in order to obtain allowance, a later reissue claim should be compared with the issued claim in order to determine whether it has been broadened and hence constitutes recapture of surrendered subject matter.”  (Emphasis added.)

“Simply stated, if a patent applicant surrenders subject matter during prosecution, and then attempts to recapture part of what is surrendered, he should be denied that attempt because of the recapture rule.”

Thus the dissent would have upheld the BPAI decision as the reissue claim is recapturing at least part of the formerly surrendered subject matter.

Prosecution Tip:

Keep in mind that even if a feature is narrowed with an amendment during prosecution, it may be eligible to be broadened in a reissue application as long as the feature of the reissue claim still materially narrows and avoids substantial or whole recapture of the feature, relative to the original claim.  Thus a broad originally filed independent claim can give applicants more leeway for a broadening reissue application.  The MPEP isn’t always right.

“Thus if a 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.”

Full Opinion

Patent At Issue

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