By Kevin Liu
The Court of Appeals for the Federal Circuit (“Federal Circuit”) has recently ruled that the recapture rule applies to claim amendments for Section 101 rejections. In Re McDonald, No. 21-1697 (Fed. Cir. 2022). In 2008, a patent application was filed for methods and systems related to the display of primary and secondary search results. The application’s original claims did not recite a “processor” for conducting the claimed searches, and the examiner rejected the claims as being directed to patent-ineligible subject matter. In response, the claims were amended to include “a processor”. While this application was pending, a continuation application was filed, which ultimately issued as US Patent No. 8,572,111 (the ’111 Patent), and these claims also included the “processor” limitations similar to that parent application to overcome the §101 patent eligibility rejection.
In 2015, a reissue application seeking to broaden the claims of the ’111 Patent was filed, and notably, the reissue application included amendments to remove the “processor” limitations that were previously added. The Examiner rejected the claims, and the Applicant appealed to the Patent Trial and Appeal Board (“PTAB”). The PTAB affirmed the obviousness rejection of the claims and entered two new grounds of rejection, including an impermissible attempt to recapture subject matter intentionally surrendered during prosecution to overcome the § 101 rejection. The Applicant appealed to the Federal Circuit.
The recapture rule analysis comprises three steps: 1) whether and in what aspect the reissue claims are broader than the patent claims; 2) if broader, whether those broader aspects of the reissue claims relate to the surrendered subject matter; and 3) if so, whether the surrendered subject matter has crept into the reissue here. Here, the Federal Circuit determined that by adding the “processor” limitations during prosecution, then seeking to remove these limitations through reissue, the recapture rule is violated. For instance, reissue cannot be used as a “Trojan horse” to recapture surrendered subject matter.
Furthermore, the Federal Circuit was not persuaded by the argument that recapture is only limited to §102 and §103. For instance, the Federal Circuit stated that the common thread through their prior decisions remains whether there is an intentional surrender of claim scope and that many of their prior cases involved prior art rejections does not expressly preclude the application of the recapture rule to amendments made for other reasons such as to overcome §101 rejections. Accordingly, the Federal Circuit ruled that the PTAB properly applied the recapture rule to bar the attempt to reclaim claim scope already surrendered during prosecution.