Last Month at the Federal Circuit
Last Month at the Federal Circuit

June 2012

Prior Art Disclosure Establishes the Ceiling for Surrendered Subject Matter in a Recapture Rule Analysis


Judges:  Lourie (dissenting), Schall, Prost (author)
[Appealed from Board]

In In re Youman, No. 11-1136 (Fed. Cir. May 8, 2012), the Federal Circuit vacated and remanded the Board’s decision rejecting the claims of Roger Youman and Marney Morris’s (collectively “Youman”) reissue application as improperly recapturing subject matter surrendered in the original patent. 

Youman had filed a patent application, which eventually issued to Youman as U.S. Patent No. 5,629,733 (“the ’733 patent”).  The ’733 patent described an electronic program schedule system for televisions that permits a user to efficiently access and navigate television program information.  As originally filed, the patent application contained a single independent claim (“the patented claim”), reciting, inter alia, “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.”  Slip op. at 3 (emphasis and citation omitted).  During prosecution, in order to overcome a 35 U.S.C. § 103 rejection in light of three prior art references, Youman added a limitation to claim 1, reciting “said selection means comprising means for causing each of said n characters to cycle forward and backward through a plurality of alphanumeric characters . . . .”   Slip op. at 6 (citation omitted).  This language was included in the patented claim.  Within two years of the ’733 patent reissuing, Youman filed a reissue application.  In the reissue application, Youman added an independent reissue claim similar to the patented claim, but reciting “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.”  Id. at 7 (citation omitted).  The examiner finally rejected this claim under 35 U.S.C. § 251 as improperly recapturing subject matter surrendered in the application for the ’733 patent.  Youman appealed to the Board.

The Board applied the three-step recapture rule analysis to affirm the examiner’s rejection.  Specifically, the Board found that the modified “changing” limitation of the reissue claim was broader than the “cycling” limitation of the patented claim, and was related to the surrendered subject matter.  The “Board held that because the reissue claim broadened patented claim 1 to an intermediate scope, it constituted an impermissible recapture of surrendered subject matter.”  Id. at 7-8.  Further, the Board held that, because other narrowing limitations of the reissue claim were not overlooked aspects of the invention, step three of the recapture rule could not rescue the reissue claim.

On appeal, the Federal Circuit considered whether the Board had correctly applied the three-step recapture rule to the instant case.  “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.”  Id. at 10 (citing In re Mostafazadeh, 643 F.3d 1353, 1358 (Fed. Cir. 2011)).  That is, 35 U.S.C. § 251 permits reissue when a patentee claims less then it had a right to “through error without any deceptive intention.”  The intentional surrendering of subject matter does not constitute error under 35 U.S.C. § 251.


[I]f 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.  Slip op. at 19.

Applying the three-step recapture rule, the first step is to determine “whether and in what ‘aspect’ the reissue claims are broader than the patent claims.”  Id. at 11-12 (quoting Mostafazadeh, 643 F.3d at 1358).  In the present case, it was undisputed that the “changing” limitation of the reissue claim was broader than the “cycling” limitation of the ’733 patent.  The Court agreed.

The second step is “whether the broader aspects of the reissue claims relate to surrendered subject matter.  Id. at 12 (quoting Mostafazadeh, 643 F.3d at 1358).  Youman and the Board disputed what constitutes surrendered subject matter.  Youman argued that the surrendered subject matter is limited to that which is broader than the original claims.  The Board argued that the surrendered subject matter was defined by the patented claim.  The Court agreed with the Board, noting that “[w]e have consistently held that when a patentee narrows the original claim in an effort to overcome a prior art rejection and makes arguments in support, the patentee surrenders the subject matter broader than the patented claim.”  Id. at 13.

Finally, if the first two steps are affirmative, then the third step is whether the surrendered subject matter has crept back into the reissue claim.  If the answer to this step is yes, the recapture rule then bars the reissue claim.  In applying this step, the Board erred by determining that any broadening of the patented claim related to the surrendered subject matter was barred by the recapture rule.  Rather, the Court found that claims of intermediate scope (i.e., broader than the patented claims yet narrower than the original claims) were not per se barred by the recapture rule.  According to the Court, “a broadening modification must be evaluated to determine if it materially narrows relative to the original claim such that surrendered subject matter is not entirely or substantially recaptured.”  Id. at 16.

In making this determination, the Court asserted that the prior art of the original prosecution defines the limit of surrendered subject matter.  “Mostafazadeh establishes, as a ceiling for determining whether a modified limitation material [sic] narrows, any recapture of surrendered subject matter that was in the prior art of the original prosecution.”  Id. at 19.  The Court reasoned that, during prosecution, claims may, through error and without deceptive intent, be narrowed further than required by the prior art.  In such a situation, the Court asserted, where a modified limitation is broader than that of the patented claim, yet still materially narrowing with respect to the original claim and the prior art, the recapture rule does not bar reissue.  The Court found that the Board failed to distinguish cases involving a modified limitation and cases involving the outright elimination of a limitation, and stated that this error alone was reason to vacate and remand.

The Court, however, extended its analysis to show that the Board had also failed to appropriately consider whether other limitations added during reissue materially narrowed the claims.  The Board determined that, because the other limitations introduced during reissue were not related to overlooked aspects of the invention, they could not prevent bar under the recapture rule.  The Court, citing Mostafazadeh, however, disagreed with this analysis, noting that the “overlooked aspects” inquiry is unrelated to the recapture rule.  Thus, if other limitations are related to overlooked aspects of the invention, such limitations have no effect on a recapture rule analysis, as the subject matter of overlooked aspects of the invention was never surrendered and therefore not subject to recapture.  The other limitations introduced to the reissue claims must, as with the modified limitation, be analyzed as to whether they materially narrow the claims with relation to the surrendered subject matter in order to avoid the bar of the recapture rule.

Accordingly, following the rule set forth in Mostafazadeh, the Federal Circuit vacated the Board’s decision and remanded for further proceedings.

Judge Lourie dissented from the majority’s holding, agreeing with the Board.  In Judge Lourie’s view, reissue claims must be judged against patented claims in making a recapture determination.  Any broadening related to subject matter surrendered during prosecution, according to Judge Lourie, triggers a recapture rule bar.  He stated that materially narrowing a claim in aspects not related to the surrendered subject matter may rescue a claim from a recapture bar if the reissue claim, in toto, is not broadened with respect to the patented claim.