Aug 15, 2022Legal
No Recapturing of Surrendered Patent-Ineligible Subject Matter


Before Newman, Stoll, and Cunningham.  Appeal from the Patent Trial and Appeal Board.

Summary: When applying for reissue, a patent applicant may not recapture subject matter that was intentionally surrendered to overcome a § 101 rejection.

Inventor John McDonald applied for a patent on methods and systems related to the display of search results in response to search queries.  In response to a § 101 rejection, McDonald amended certain claims to include a “processor” and the rejection was withdrawn.  The application ultimately issued as U.S. Patent No. 8,280,901 (“the ’901 patent”).  Before the ’901 patent issued, McDonald filed a continuation with similar claims that also included the “processor” limitations and this application ultimately issued as U.S. Patent No. 8,572,111 (“the ’111 patent”).  McDonald then filed a reissue application seeking to amend the claims of the ’111 patent by adding several new limitations and removing the “processor” limitations.  The examiner rejected claims 1-7, 10, 12-16, and 18-38 (“the reissue claims”) as obvious and McDonald appealed to the Patent Trial and Appeal Board.

The Board entered two new grounds of rejection: first, that the reissue claims were based on a defective reissue declaration and, second, that a subset of the reissue claims also impermissibly attempted to reclaim subject matter intentionally surrendered during prosecution when the “processor” limitations were added.  McDonald appealed to the Federal Circuit.

The Federal Circuit affirmed the Board’s decision.  The Court applied a three-step analysis on the issue of recapture.  First, it found that the subset of reissue claims under consideration were broader than the original patent claims.  Second, it found that the broader aspects directly related to surrendered subject matter (i.e. methods and systems that did not use a processor).  Third, it found that the surrendered subject matter had “crept into the reissue claim[s].”  The Court clarified that the recapture rule is not limited to subject matter surrendered to overcome prior art rejections under 35 U.S.C. §§ 102–103, and applies equally to subject matter surrendered to overcome subject matter eligibility rejections under 35 U.S.C. § 101.  The Court reasoned that the “public’s reliance interest on a patent’s public record” applies equally to subject matter surrendered to overcome rejections under any of these grounds and that the Court had never “expressly preclude[d] the application of the recapture rule to amendments made for other reasons.”

Addressing the Board’s rejection based on a defective reissue declaration, the Court held that the “the statement of error in the Reissue Declaration relates to an error that is uncorrectable by reissue.”  The Court reasoned that the supposed error (inclusion of the “processor” limitations) could not be corrected without violating the recapture rule.

Editor: Paul Stewart

Written by: Logan P. Young & Justin J. Gillett

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