Reissue’s Recapture Doctrine Clarified

Takeaways:

• Recent MPEP amendments clarify the Recapture doctrine, narrowing the scope of what claim features can be broadened in a reissue application.
• Examiners to consider all prior amendments and arguments as potential surrender of subject matter.

Patent Examiners rely upon the Manual of Patent Examination Procedure (MPEP) to instruct application of the law to the most common patent prosecution situations. The MPEP’s forward refers to itself as a “guidance document” and makes clear that “the manual does not have the force and effect of law or the force of the rules in Title 37 of the Code of Federal Regulation, and are not meant to bind the public in any way.” But the forward also makes clear that the MPEP “contains instructions to examiners, and other material in the nature of information and interpretation, and outlines the current procedures which the examiners are required or authorized to follow in appropriate cases in the normal examination of a patent application and during other Office proceedings” (emphasis added). Thus, when a legal decision is added to the MPEP, as was recently done in November’s revisions to MPEP 1412.02 (Recapture of Canceled Subject Matter), practitioners must take note.

In particular, November’s revisions to the MPEP’s Ninth Edition add citations to In re McDonald, 43 F.4^th 1340 (Fed. Cir. 2022) and to In re Youman, 679 F.3d 1335 (Fed. Cir. 2012) to MPEP 1412.02.  As we have previously noted, in McDonald the Federal Circuit makes clear that the recapture rule applies to amendments made to overcome 35 U.S.C. § 101 rejections. The McDonald court relied upon the three step recapture rule analysis in Youman at 1343–45 and considered (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 claim relate to the surrendered subject matter; and (3) if so, whether the surrendered subject matter has crept into the reissue claim. Thus the recapture analysis beings with a determination of surrendered subject matter, or a surrender generating limitation (SGL) in the application’s prior prosecution history.

Prior to McDonald and Youman, MPEP 1402 defined a SGL as “a limitation presented, argued, or stated to make the claims patentable over the art (in the original application)” (emphasis added). The MPEP consistently referred to the SGL as that which was done to secure allowance “over the art” or “over the prior art rejections” in prior prosecution(s), citing Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271 (Fed. Cir. 2012) (holding that in order to surrender subject matter though amendment or argument, a patentee “must clearly and unmistakably argue that his invention does not cover [that] subject matter to overcome and examiner’s rejection based on prior art.”). With the latest MPEP revisions, however, SGLs have been broadened from prior argument or amendment to define the invention “over the art of record” to prior argument or amendment to “overcome a rejection.”

The courts continue to narrow the ability to broaden claims after allowance via reissue. As the broadening door closes, practitioners seeking broadened Reissue claims must now consider all prior amendments and arguments in all prior related prosecutions (i.e., the full patent family) as potentially triggering the recapture doctrine. This would include amendments to overcome rejections not based in prior art as described in MPEP 706.03. Such analysis may assist practitioners as they carefully navigate broadened claim language around the recapture doctrine.