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Reissue Claims Rejected for Impermissibly Recapturing Subject Matter Surrendered During Prosecution of Original Patent Application

May 03, 2011
McAnulty, Timothy P.

Decision icon Decision

Last Month at the Federal Circuit - June 2011

Judges: Dyk (author), Friedman, Prost

[Appealed from: Board]

In In re Mostafazadeh, No. 10-1260 (Fed. Cir. May 3, 2011), the Federal Circuit affirmed the Board’s rejection of claims 11-23 in Shahram Mostafazadeh and Joseph O. Smith’s (collectively “applicants”) reissue patent application based on U.S. Patent No. 6,034,423 (“the ’423 patent”) and held that the reissue claims impermissibly attempted to recapture subject matter surrendered during prosecution of the original patent application. 

The applicants appealed a decision from the Board affirming the examiner’s rejection of claims 11-23 in the applicants’ reissue application for impermissibly recapturing subject matter that was surrendered during original prosecution.  The ’423 patent is directed to lead-frame-based semiconductor packaging that supports and protects semiconductor “chips” while providing electrical pathways between the chips and external devices.  The ’423 patent describes two embodiments, a pin-type package and a bottom-surface-mount package.  As originally filed, the claims in the ’423 patent application encompassed both embodiments.  All of the originally filed claims were rejected over prior art that disclosed the pin-type embodiment.  To overcome the rejection, the applicants amended the claims to include “circular attachment pads” that are specific to the bottom-surface-mount package embodiment.  The ’423 patent issued with the amended claims.

The applicants later filed a reissue application to the ’423 patent with new claims, stating that the ’423 patent claims were partially inoperative because the circular-attachment-pad limitation was “unduly limiting,” and presenting reissue claims omitting the circular shape requirement.  The examiner rejected the reissue claims under 35 U.S.C. § 251 as improper recapture of surrendered subject matter, noting that the circular-attachment-pad limitation was added and argued to be critical to the invention and distinguishing over the prior art.  The applicants appealed to the Board, which affirmed the examiner’s rejection.  The Board concluded that the reissue claims recaptured surrendered subject matter because the reissue claims were broadened with respect to the patented claims and were not materially narrowed in other respects so as to avoid the recapture rule.

On appeal, the Federal Circuit noted that under the reissue statute, a patent holder may reissue an existing patent and seek broader claims, but a patentee cannot regain subject matter that was surrendered in an effort to obtain allowance of the original claims.  Under this rule against recapture, claims that are broader than the original patent claims in a manner directly pertinent to the subject matter surrendered during original prosecution are impermissible.  As explained by the Court, the recapture rule is applied as a three-step process.  The first step is to determine whether and in what aspects the reissue claims are broader than the patent claims.  The second step is to determine whether the broader aspects relate to surrendered subject matter.  The third step is to determine whether the reissue claims include surrendered subject matter.

Here, there was no dispute regarding the first and second steps—both parties agreed that the reissue claims were broader than the patented claims in aspects that related to surrendered subject matter.  In addressing the third step, the Court specifically pointed out that it is important to differentiate between the original claims (i.e., the claims before surrender), the patented claims (i.e., claims allowed after surrender), and the reissue claims.  Violation of the recapture rule may be avoided if the reissue claims materially narrow the claims relative to the original claims such that full or substantial recapture of the subject matter surrendered during original prosecution is avoided.  To avoid violating the recapture rule, the narrowing of the reissue claims must relate to the subject matter surrendered during the original prosecution. 

Although the Court affirmed the rejection of the reissue claims on appeal, the Court found the Board’s analysis of the third step contrary to precedent.  In its decision, the Board concluded that a limitation materially narrows a claim only if it is directed to one or more overlooked aspects of the invention.  The Board defined “overlooked aspects” as features directed to patentably distinct inventions, embodiments, or species not claimed during original prosecution.  The Court rejected this rationale, noting that in such scenarios, i.e., where a reissue claim is directed to a patentably distinct and previously unclaimed invention, embodiment, or species, there is no need to apply the recapture rule.  The recapture rule is triggered only where reissue claims are broader than the patented claims and the surrendered subject matter has been reclaimed.  Reissue claims that include subject matter that was not originally claimed include subject matter wholly unrelated to the subject matter that was surrendered.

Thus, the Court concluded that the 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. 

Applying this three-step analysis to the applicants’ reissue claims, the Court held that the claims violated the recapture rule.  During original prosecution, the applicants added the “circular attachment pad” feature to the claims.  In the reissue application, the applicants eliminated the “circular shape” requirement while retaining the “attachment pad” feature.  The applicants argued that they avoided the recapture rule because they had not broadened the claims to encompass everything that was surrendered.  The Court found that retention of the attachment-pad limitation was related to the surrendered subject matter, but that it was not materially narrowing because the use of an attachment pad itself was well known in the art.  The applicants also argued that the reissue claims each have a number of other narrowing limitations relating to a bus bar feature.  The Court found that while these features narrowed the reissue claims relative to the original claims, the narrowing relates only to the bus bar, not to the circular attachment pad.  That is, these narrowing limitations are unrelated to the surrendered subject matter and thus are not sufficient to avoid the rule against recapture. 


Summary authored by Timothy P. McAnulty, Esq.