In Re Youman
679 F.3d 1335
| Fed. Cir. | 2012Background
- Youman and Morris appeal a PTO Board decision affirming rejection of reissue claims 24-27, 29-43, and 45-55 under 35 U.S.C. § 251.
- The invention is an electronic program guide with a By Title display allowing selection by first n characters; the original claim used a cycling selecting means.
- Reissue claim 24 adds a wireless remote with nonalphanumeric keys and a display of alphabetically arranged titles; the narrowing/expansion centers on the selecting means being changed from cycling to changing.
- The Board applied a three-step recapture rule analysis, concluding the reissue claim broadens surrendered subject matter and recaptures it.
- The court vacates the Board decision for improper step-three analysis and remands for correct application of the recapture rule.
- Dissent notes that reissue-recapture should compare to the issued claim, not the original filed claim, but the majority’s decision rests on the Board’s misapplication of step three.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the recapture rule bars reissue claim 24-55 for broadening over the issued claim. | Youman: recapture applies because changing broadens beyond the patented claim and surrenders subject matter. | PTO: broadening relates to surrendered matter; step-three analysis shows recapture. | Vacated and remanded for proper step-three application. |
Key Cases Cited
- In re Mostafazadeh, 643 F.3d 1353 (Fed. Cir. 2011) (recapture analysis focusing on material narrowing relative to the issued claim)
- North American Container, Inc. v. Plastipak Packaging, Inc., 415 F.3d 1335 (Fed. Cir. 2005) (recapture analysis depends on relationship to surrendered subject matter and original prosecution)
- In re Clement, 131 F.3d 1464 (Fed. Cir. 1997) (look to prosecution history to determine surrendered subject matter)
- Pannu v. Storz Instruments, Inc., 258 F.3d 1366 (Fed. Cir. 2001) (added limitations must relate to surrendered subject matter to avoid recapture)
- In re Richman, 409 F.2d 269 (C.C.P.A. 1969) (early framing of error requirement and surrender consideration)