In the case, In re Roger Youman and Marney Morris, the Federal Circuit reiterated that the proper test for determining whether a Reissue Application improperly claims subject matter forfeited in a prior issued patent is the three-step recapture rule (“Recapture Rule”) laid out in In re Shahram Mostafazadeh,.

This case involves Reissue Patent Application, 09/313,532 (the “Reissue Application”), describing an electronic program schedule system for a television system that allows the user to access and navigate television program information efficiently.  The Reissue Application involved U.S. Patent 5,629,733.

In considering the Reissue Application, the USPTO examiner issued a final rejection of all claims “because they improperly recaptured subject matter that was surrendered in the application for the ‘733 patent.”

The applicant appealed the rejection to the Board of Patent Appeals and Interferences (“Board”), who attempted to apply the Recapture Rule.  In doing so, the Board affirmed the examiner’s rejection, specifically finding that the Reissue Application failed the third prong of the Recapture Rule, because the applicant “essentially broadens patented claim 1 to an intermediate scope. . . .  This broadening therefore constitutes an impermissible recapture of surrendered subject matter.”

The applicant appealed the Board’s decision to the Federal Circuit, who found the Board did not property apply the third prong of the Recapture Rule.  The incorrect standard applied by the Board considered whether “surrendered subject matter . . . has been in any way broadened in a reissue application claim, then a recapture rejection . . . is proper.”  The Board specifically compared applicant’s original claim (requiring “cycling” to select a character) to the new claim (requiring “changing” to select a character), determining that the latter “essentially broadens patented claim 1 to an intermediate scope.”

The Federal Circuit criticized the Board’s approach, as it failed to follow the third prong of the Recapture Rule as laid out in Mostafazadeh, which asks “whether the surrendered subject matter has crept into the reissue claim.”  The Federal Circuit indicated that this failure kept the Board from making the critical distinction “between instances where an added limitation has been modified versus instances where an added limitation is eliminated in its entirety.”  Based on this failure, the Federal Circuit vacated and remanded the Board’s decision.

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