In Re Youman

Roger In re YOUMAN and

Marney Morris.

No. 2011-1136. of Appeals,

United States Court

Federal Circuit. 8, 2012.

May Ropes Gray, & Rogers,

Laurence S. York, LLP, York, argued of New New for him was appellants. With on the brief Pristine Johannessen. Weidenfeller,

Scott C. Associate Solici- Solicitor, tor, Office of the United States Office, Patent and Trademark of Alexan- dria, Virginia, argued appellee. for With Chen, Raymond him T. on the brief were Solicitor, A. Gongola, and Janet Associate Solicitor. SCHALL, LOURIE,

Before PROST, Judges. Circuit by Opinion for the court filed Circuit Judge PROST.

Dissenting opinion filed Circuit Judge LOURIE.

PROST, Judge. Circuit ing displaying a plurality of televi- program sion titles on said television (col- Roger Marney Youman and Morris receiver, plurality said pro- television lectively, “applicants”) appeal from a deci- grams displayed title; alphabetically by sion of the United States Patent and (“PTO”), Trademark Office Board of Pat- (“Board”). Appeals ent and Interferences selection allowing means said for rejec-

The Board affirmed the examiner’s user to select a display title on said 24-27, 29-43, tion of claims and 45-55 in television by selecting receiver the first applicants’ patent application title, n characters said where n is under parte 35 U.S.C. 251. Ex You- greater one; equal than or said data man, 2010-007029, No. 2010 WL 3503790 processing being means responsive to (B.P.A.I. 2010) (“Board Sept. Deci- said selection means and adapted to se- ”). sion Because the Board did not prop- plurality lect said of television program erly apply rule’s three-step display titles for on said television re- analysis, we vacate and remand. ceiver in response to said n characters. added). (emphasis J.A. 909 During prose- Background cution, with all the other limitations The invention at issue is directed to an art, prior rejected examiner original program electronic system schedule for a claim 1 based on the “selection means” television that allows the user to access limitation as obvious under 35 U.S.C. navigate program and television informa- in light of three art references: efficiently. tion part system, As a of this a (“Reed 5,241,671 U.S. Patent No. patent”), “By user can access a display Title” 5,253,066 U.S. Patent No. (“Vogel patent”), programs alphabetically lists by title. A 5,353,121 and U.S. Patent No. (“Young can user either scroll through this list or patent”). Young patent teaches a by entering search it the first few letters television programming guide that can dis- program of a using title the remote. As play program television filed, titles on the 08/346,603 Application U.S. Patent screen by using a Vogel contained a user control. The single claim for the invention. 1”) patent 1 (“original Claim teaches a television applica- programming tion guide read as follows: that includes selecting means such triangular as four

An arrow buttons and a electronic television programming selection guide for use in button for selecting programs connection with a televi- list, sion receiver for from a but displaying plurality of does not disclose displaying programs television plurality from a programs alphabetically of by title or select- program sources on a plurality of user- ing by a title selecting the first few charac- selectable television channels compris- ters of titles. The Reed teaches a ing: system multimedia search alphabetical- of

user control means for issuing titles, control ly-listed in which a user can select a commands, including channel-control by title entering one or more characters of commands; a selected title. As each character is en- processing tered,

data means for receiving the Reed patent teaches that said control generat- commands and for program will list titles that are closest to ing commands; video control entry displayed. system The Reed is display generator personal computer video used on a adapted to with access receive keyboard video control to a keys commands from of alphanumeric said data processing generat- means for enter searchable titles. compris- television channels have selectable that it would

The examiner found ordinary ing: skill to one of obvious been guide systems modify the television art to issuing control means for control user patents, which Young Vogel and commands, including channel-control by scrolling titles users to select allow commands; alpha- are not in through programs that receiving processing means for data order, to include a means of select-

betical generat- control commands and for said alphabetical by list title from an ing a commands; ing video control n characters of the title typing the first display adapt- means generator video taught as Reed. keyboard, into a to receive video control commands ed amended then processing from data means for said In filed claims 2-23. remarks and added generating displaying a visual dis- amendment, they argued that with the program play plurality of a of television using by art they overcame receiver, said titles on said television the television control device keys on program of television titles ar- plurality characters, cy- by, example, select the title; by ranged alphabetically than through alphabet, rather cling keyboard, using character entering each allowing selection means for said user supplemental After a taught Reed.1 on display to select a title for said televi- amendment, a notice the examiner issued by selecting receiver the first n sion 1-23, allowability concluding for claims title, n great- characters of said where selecting that the means of characters one; processing said means er data backward, forward, cycling up and down responsive to said selection being means alphanumeric a list of characters adapted plurality to select said of art. light was not obvious the program display television titles for on in response said television receiver to 1997, May On U.S. Patent Number characters; n said (“'733 5,629,733 patent”) issued. Claim (“issued claim”) patent the reads as of '733 display generator wherein said video follows: n displays means said characters and programming comprising

An said selection means means electronic television guide causing for use in connection with a televi- each said n characters to for of displaying plurality cycle for a of and backward a sion receiver forward programs plurality plurality alphanumeric from a of characters television of program plurality assigning sources on a of user- and means for one of said Specifically, applicants explained searching alphanumeric charac- that: based on ters, presents problem pres- an EPG a not [AJlthough may accomplish Reed [search- by systems that ent in nor solved such as by-title capability] for a database search Applicants described in Reed. solve this system using keyboard input a as the de- problem by using existing keys on the vice, suggest it does teach or such a not input remote control device to characters of system Program [Electronic for an EPG program example, a title.... For as dis- system ... disclosed in Reed Guide] [T]he applicants’ specification, up/ closed such, operates using keyboard. it a full As keys changing down arrow used for chan- simple type is a matter to in the first few may contrast, nels in normal television mode be used letters of an article title. In in an environment, cycle through the letters A-Z and the device EPG user control numbers 0-9 in order to choose the individ- typically a handheld remote control program only very ual letters in a title. transmitter with a limited number Therefore, keys. performing J.A. 973-74. of terms of application in the to each of said was surrendered alphanumeric characters patent. '733 n characters. (empha- applicants appealed. 1.49—col.35 1.10 patent ap- col.34 Board

'733 added). plied three-step recapture analysis sis rejection to affirm the examiner’s 13,1999, years two May within On one, step reissue claims. Under Board issuing, applicants filed patent '733 found that the reissue claim was broader 09/313,532, adding application than the issued claim but narrower than accompanying In the decla- claims 24-55. original claim. The reissue claim was 5,629,- ration, patent they stated that “U.S. broader than the issued the Board by reason of said partly inoperative 733 is found, “changing” because limitation a claiming right less than we had in the reissue was broader Following patent.” claim in said J.A. 334. “cycling” than the limitation in the issued rejection of claims and 40 non-final claim. The Board found that the reissue § under 35 U.S.C. claim”) (“reissue original claim was narrower than the to read amended claim because the claim did not contain as follows: any limitation related to how the charac- programming An electronic television changed, ters whereas the reissue claim use in connection with a televi- guide for two, did. Under the Board deter- displaying plurality receiver for of sion mined that the related to the plurality from a programs television Relying matter. on plurality sources on a user-selectable comprising: Examining channels the Manual of Patent Proce- television (“MPEP”) 1402.02(I)(C) (8th ed., dure control, comprising a wireless remote 2008) 7, July rev. and North American nonalphanumeric keys, generates that commands; Plastipak Packaging, Inc. v. control Inc., (Fed.Cir.2005), 415 F.3d 1335 that receives the con- processor data that Board held because the reissue claim remote trol commands from the wireless claim 1 an broadened interme- control; and scope, impermissible diate it constituted an display generator a video connected to recapture of surrendered matter. displays an al- processor the data Decision, 3503790, at *9. Board 2010 WL of a phabetically-arranged display visual a allowing The Board articulated 3 program titles on plurality of television escape recapture reissue claim to the receiver, said television only materially narrowing other through may for a title wherein a user search narrowing limitations “if the limitation is n displayed by selecting to be characters to one or more ‘overlooked as- directed control, where with the wireless remote pects’ of the invention.” Id. at *10. It one, each of greater n is wherein potentially concluded that the other nar- may n characters be selected with rowing limitations in this case—the “wire- a plu- the wireless remote control from remote,” “nonalphanumeric keys,” less charac- rality displayed alphanumeric “changing” limitations —were not over- by a character changing ters from first during prosecution looked and thus the using to a second character the nonal- claim could not avoid the reissue phanumeric keys. rule. Id. at *11. 4, 2007, the exam- J.A. 502. On December timely appealed. This applicants 24-44 rejection iner issued a final of claims jurisdiction under 28 U.S.C. they § im- court has under 35 U.S.C. 251 because 1295(a)(4)(A). § subject matter properly recaptured § patent. of the 35 U.S.C. 251. issuance Discussion result, public As a is on notice two challeng- are appeal, On years following patent the issuance of a rule does indeed ing whether the patent recap- that the can be broadened to claiming “changing” as them from prevent public” “dedicated to the ture matter in reissue claim 24. selecting a means error; year period, after the two I definitively rely can on the public scope patent Doyle, of the claims. rejection evaluating Prior to the Board’s (“[T]he knows, public F.3d at 1364 or rule, important on the it is based know, patent that an issued can be should statutory source from to understand the by two-year a judicial recapture which the rule stems— broadened provides issuance.”); That statute the reissue statute. period following In re Fot- (Fed.Cir.1985) (“The that: land, is, any patent through error purpose Whenever of the law that a reis- intention, any deceptive deemed without applied years sue must be for within two invalid, wholly partly inoperative or or patent grant after is to set a limited time or by specification reason of defective may rely public after which the on the drawing, by patentee or reason of the an scope patent.”). of the claims of issued more or less than he had a claiming § Additionally, 35 U.S.C. 252 ensures that in right patent, to claim the the Director patentee if in obtaining succeeds patent shall ... reissue the for the in- patent, public broader reissue interest original pat- vention disclosed protected through intervening rights. is ent. ... No reissued shall be Tanaka, See In re granted enlarging scope (Fed.Cir.2011) (noting that to the extent original patent ap- claims of the unless public may that the rely on what is actual- years for within two from the plied ly patent, problem claimed is grant original patent. intervening rights addressed stat- § 251. 35 U.S.C. ute, 252); § Doyle, 35 U.S.C. Thus, a paten the statute allows original patent tee to broaden claims its Second, Congress limited reissue to if can show “error without instances where the could demon any deceptive regard intention.” Id. With any deceptive strate an “error without in broadening, Congress weighed to this tention.” 35 U.S.C. 251. Because the competing providing patentee interest of reissue statute is “based on fundamental opportunity

with an correct errors of fairness,” principles equity the “er inadequate in public with the requirement liberally ror” construed. finality certainty terest of patent Medtronic, Inc. v. Corp., Guidant 465 F.3d rights, legislated in of allowing favor (Fed.Cir.2006) 1360, (quoting 1372 Hester patentee to correct through its errors Indus., Stein, Inc., 1472, Inc. v. 142 F.3d necessary. if In broadening, Doyle, See re (Fed.Cir.1998)); 1479 Mentor v. Corp. Co 1355, (Fed.Cir.2002); 293 F.3d 1363-64 In (Fed.Cir. Inc., 992, loplast, 998 F.2d 995 (Fed.Cir.1997). 874, Graff, re 111 F.3d 877 1993). commonly The most asserted cor Yet, so, doing Congress provided paten rectable error is the failure of the public safeguards against with two attorney full First, appreciate tee’s broadening. the reissue statute re prosecution quires during of the invention to file for a Hester, patent years original patent application. reissue within two 142

1343 cases); In re II (citing F.3d at 1479-80 Clem- (Fed.Cir.1998). ent, 1464, 1468 131 F.3d To determine appli whether Yet, every or circumstance that “not event cants’ reissue claims violate the recapture by labeled ‘error’ is correctable might be rule, apply three-step recapture we Hester, 142 F.3d at 1479. reissue.” 1358; analysis. Mostafazadeh, at 643 F.3d Container, 1349; N. Am. 415 at F.3d Pan- Against backdrop the remedial of nu, 258 F.3d at 1371.2 statute, the reissue one such circumstance satisfy require

that does not the “error” A by ment is embodied rule. step, Under the first we “deter rule bars a from mine whether and in what ‘aspect’ matter, recapturing reis reissue claims are broader than patent sue, intentionally that the patentee surren Mostafazadeh, claims.” 643 F.3d at 1358 original prosecution dered Clement, (quoting 1468); 131 F.3d at Pan- art and obtain a prior order overcome nu, 258 F.3d at parties 1371. The do not Mostafazadeh, In re patent. valid 643 contest that regards with to the selecting (Fed.Cir.2011) 1353, (quoting F.3d 1358 means, correctly the Board determined Clement, 1468); Medtronic, 131 F.3d at that the “changing” limitation in claim 24 1372; 465 F.3d at Pannu v. Storz Instru (“the claim”) is broader than the (Fed. ments, Inc., 258 F.3d 1370-71 “cycling” patented limitation of claim 1 of .2001). Cir (“the claim”). patent the '766 patented 44;

Appellants’ Br. Appellee’s Br. 16-17. underlying The rationale the rule is by This dependent conclusion is confirmed that the cancellation or amendment of the reissue claim which limits reissue claim claim in order to overcome calling “changing from a first to necessarily art action that deliberate comprising second character cycling or con excludes inadvertence mistake through displayed alphanumeric charac templated by require the statute’s error ters.” J.A. 33. Medtronic, 1372-73; at

ment. 465 F.3d B Clement, 1468; Mentor, 131 F.3d at at F.2d 995. Having agreed parties with

that the reissue claim is broader Determining whether the claims requires two us to of a reissued violate 35 U.S.C. aspects “determine whether the broader by implicating rule is the reissue claims relate to surrendered a question of law that we review de novo. Mostafazadeh, matter.” 643 F.3d Mostafazadeh, (quoting 643 F.3d at 1358 Clement, (quoting at 1358 at F.3d Container, 1349). N. at Am. 1468-69); N. Am. at underlying findings factual are reviewed parties inquiry 1350. Both answer this Pannu, 45-46; for substantial evidence. Appellants’ the affirmative. Br. Appellee’s Br. 17. purposes articulating applying 2. For fers to claims allowed over the art in the three-step recapture analysis, patent; the the term issued and the term "reissue claim” "original subject claim” refers to the claim in the the claims to the reissue refers to - original application, prior application Mostafazadeh, to amendment or at See 643 issue. cancellation; "patented the term claim” re- at F.3d 1358. 1344 to find that during amendment guments sur-

Yet, constitutes they dispute what subject matter context surrendered subject patentee matter within the rendered “continuous, ar- applicants than the substantial- rule. broader matter subject patented ly that surrendered circular arc” limitation gue than the subject matter broader claim).3 limited to amendment) (i.e., 1 before original claim Thus, urges, the PTO to determine subject matter of necessarily excludes and surrendered, we look applicants the what than that is broader scope intermediate origi- change scope between the to the origi- 1 and narrower patented claim accompa- 1 and the patented nal and claim In Br. 44-46. Appellants’ nal claim applicants made nying arguments so, case law. they misinterpret our doing original prosecution. the in we have instructed Clement As original provid- which amended the changes to we look progeny, and its means,” “cy- “selecting require ed for pros in the arguments and language claim This amend- select characters. cling” to in an ef history that were made ecution overcoming prior targeted was at ment prior art to determine fort to overcome Reed, Vogel, and specifically, art — subject patentee surren what matter accompa- Young In the remarks patents. 1469; at see dered. 131 F.3d Mostafaza amendment, applicants ar- nying this Labs., 1358; deh, Inc. v. F.3d at MBO 643 key in the amend- gued that the distinction Co., Becton, 474 F.3d Dickinson & that art was the ed claim overcame Hester, (Fed.Cir.2007); at “input 36 different char- “cycling” use of consistently held that have 1480-81. We (A-Z 0-9) using only keys a few acters and original narrows the patentee when control device.” J.A. 974- on the remote art in an effort to overcome claim agree with the Board that 75. We arguments support, rejection and makes amendment, appli- argument their subject mat surrenders the subject any was cants’ surrendered matter See, patented than the claim. ter broader than the selecting means that was broader (“The e.g., Mostafazadeh, 643 F.3d at 1360 patented limitation of the claim. cycling triggered only where the recapture rule is pat than the reissue claims are broader C sub ented claims because the surrendered If the reissue claims are in whole or ject matter has been reclaimed in a relative to the claims broader (i.e., an limitation part substantial added subject manner related to the surrendered revised).”); N. Am. has been eliminated or matter, we must “determine whether (looking at subject crept matter has into surrendered scope arguments dur change Mostafazadeh, claim.” the reissue to find surren ing amendment Clement, (citing 131 F.3d at F.3d at 1358 than the dered matter broader Hester, 1469); at 1482. see Un “generally pat convex” limitation of the Pannu, materially narrowed in claim); less the claims are F.3d at 1371 ented that or whole (relying change way on in claim and ar- avoids substantial analy- violating recapture rule—would be also contrary holding 3. A would render wrong. sis in Pannu and North American Container our instruction It would also render Furthermore, holding in Mosta- flawed. prosecu- progeny and its to look in Clement a modified limitation was accompanying history arguments tion fazadeh—that limitation narrower than the superfluous. amendments matter, recaptured IN RE YOUMAN (Fed. 2012) Cite as 679 F.3d 1335 Cir. subject mat- ished the on of the surrendered Board’s reliance this section

recapture ter, subject surrendered matter has inappropriate. 643 F.3d at 1360. they claims and are crept into In erring, distinguish the Board failed to recapture rule. Mosta- barred under the between instances where an added limita- at The Board fazadeh, 643 F.3d 1361. tion has been modified versus instances respects apply this failed in several where an added limitation is in eliminated rule; thus, recapture of the we third teaches, entirety. its As Mostafazadeh vacate and remand. must such a distinction is critical to applying correctly step recapture three of the rule. at Id. [15]First, any the Board considered majority our precedent (including claim via a broadening patented Board) precedent relied on involves limitation, min- regardless modified of how instances where the eliminates imal, recapture sufficient to invoke the the added limitation in in entirety; its such the Board deter- Specifically, rule’s bar. circumstances it is clear that the surren- cycling mined that the from subject dered matter has been recaptured “essentially changing patented broadens scope and the of the reissue claim is even (i.e., 1 to an intermediate nar- See, original. than the e.g., broader N. original patent rower than claim before Am. 415 F.3d at (patentee amendment, but broader than issued claim “generally eliminated the convex” restric- Board, 1).” Decision, 3503790,at 2010 WL limitation, tion on the “inner wall” which Board that broad- “[t]his *9. The then held art); Pannu, was added to overcome ening impermissi- therefore constitutes an (in claim, 258 F.3d at 1371 its reissue subject of surrendered mat- ble any eliminated limitation on the so, doing ter.” Id. In the Board relied on shape haptics, which necessarily had an isolated statement North American been added to overcome art during it is irrelevant that claims Container —that Clement, original prosecution); 131 F.3d at in scope, as a whole are intermediate 1470-71. F.3d at 1350—and the MPEP —which ture limitations render the reissue

ly unrelated to the relevant limitation will not save ter ... has been in ture proper,” MPEP plain states that conducted on a sis, can Container does little more a reissue n.& 5. Such reliance is context, so that rule, rejection application even if the additional narrowing the statement North Ameri- reissue claim from the “[i]f under limitation-by-limitation 1412.02(I)(C). any way limitations claim, 35 U.S.C. misplaced. then a broadened in claim, analysis narrowing complete- Id. § 251 is recap- recap- on the Read at mat- ba- ex- *9 instantly implicate ing modification must be evaluated to de- 3503790, at *9. Such modification does not tially recaptured. Mostafazadeh, 643 F.3d termine as the Board Board at added eliminated; rather, it has been broadened ^[16] 1358,1359,1361. changing. limitation — has matter is not if it In the case at already materially claim such that surrendered held; rather, Board cycling—has determined Decision, entirely narrows relative to bar, however, such a broaden- or substan- 2010 WL not been rule that bar, whole, appellee argues [17] The that material scope.” of “intermediate MPEP, narrowing should be determined relative regard 1350. With to the already than the court has admon- to the rather Mostafazadeh 1346 claims,

original disagree. Using patented appellee claim. We the as the urges, as original claim a frame reference for as prevent any frame of reference and determining claim ma- whether the reissue broadening claims, relative to patented the terially is consistent with narrows both patentees we would bar from doing what purposes underlying case law and the the they otherwise would be entitled to under By measuring reissue statute.4 material the reissue their statute — claim, narrowing original relative to the years claims within two when such claims deliberately which was during surrendered overly during were narrowed prosecution original prosecution, the we are ensuring attorney as a result of error. This would patentee that recapture is unable to frustrate the remedial nature of the reis- it deliberately, what surrendered but al- sue statute and contradict case law. error, lowing required by room for regards With to determining whether a 251; reissue statute. 35 In re U.S.C. modified limitation materially is narrow- Richman, 1083, 56 CCPA 409 F.2d ing, provide should Mostafazadeh (1969) (“We 274-75 ... find neither deci- Board with guidance conducting such authority sion to be proposition for the There, analysis. the “circular attachment that a limitation added to claim in ob- pad” limitation was added to an original taining broadened, its allowance cannot be claim to prior overcome art. Mostafaza- 251], by under if [§ the limitation deh, reissue, 643 F.3d at 1356-57. On turns out to be more restrictive than the patentees that argued claims Medtronic, prior required.”); art see 465 partially were inoperative because lim- this (finding F.3d at 1375 the surrender of unduly itation was limiting, and filed reis- certain matter amendment sue claims that broadened the limitation to not deliberate due to attorney’s error — pad,” that, “attachment regard so with failure to scope understand the in- limitation, the reissue claims were of avoiding vention—and thus recapture scope. intermediate Id. at rule). 1357. The As the court noted In re Rich- rejected court the applicants’ contention man, even when narrowing a claim to that recapture rule was avoided be- art, prior “[e]ertainly overcome might one they cause did not everything err deceptive without intention in adding a they particular’ surrendered. Id. at 1361. limitation The court specific where less feature, explained that regarding argument limitation “the mere same ... that would have been the reissue only sufficient to render the claims constitute a partial patentable claims over art.” is insufficient without a corre- contrast, By F.2d if we use the sponding demonstration of material nár- Mostafazadeh, 4. See (ap- 643 F.3d at scope 1358-59 rame or of broader than those claims plying step "materially narrowing" three’s original applica- were canceled from the analysis original hand, "relative to the claims” tion. patentee On the other is free "original reissue, where acquire, claims” are defined as "the claims that are surrender”); Clement, claims before scope narrower in than the canceled claims. (“If at 1469 of the reissue claim is If the reissue claims are narrower than the claims, the same as or yet broader than that of the can- canceled broader than the [i.e., original] claims, celed then the sought reissue must be within clearly attempting years grant original patent.”); after is, Clement, matter and the reissue claim there- see also ("Compar- 131 F.3d at 1470 fore, unallowable.”); Corp. ing Ball v. United reissue claim with claim 42 before States, (Fed.Cir.1984) ..., May 1988 and June 1987 amendments ("The recapture rule bars the from we see that claim 49 is narrower in one area” reissue, acquiring, through others). claims that are the and broader in (same); Hester, (same); at 1482 limita- the modified Id. Where rowing.” (same). Mentor, art relied 998 F.2d at 996 tion contained was original prosecu- in the by the examiner on to attempted the Board conduct While was, the limita- tion, pad as the attachment analysis, incorrectly it evaluated this at materially narrowing. Id. not tion is during limitations added whether other 4. 1361 & n. materially on wheth- narrow based those added limitations were directed to er establishes, Thus, Mostafazadeh the invention. aspect” an “overlooked of determining whether a ceiling for as a decision, 3503790;at *10- narrows, Board' 2010 WL any limitation material modified recapture applies the rule subject matter 11. Whereas of surrendered recapture original subject the being in the art of surrendered matter is that was when logic ceiling of such a prosecution.5 reclaimed, aspects overlooked definition of “error” under concept from the flows and thus never surren- were never claimed patentee is the reissue statute. When Mostafazadeh, 643 at dered. See to narrowing its claim limitations due Rather, explained as we in 1360. Mostafa- render the claims art that would otherwise zadeh, aspects” separate is a “overlooked only can be do unpatentable, independent reissue that is inquiry under any possibility deliberately, without ing so recapture ap- or not the of whether Thus, if the modifies of error. plies.6 conducting any analysis Without it limitation such that is broader the added beyond determining that the limitations yet materially still patented than the materially nar- identified as original narrows relative to the rowing aspects, were not overlooked rule does not bar reissue. recapture correctly not three. apply Board did distinguish failure to this case Board’s Properly applied, the material limitation from instances where the added narrowing must relate to the surrendered entirety in its and to conduct is deleted subject prevent recapture matter to analysis for a modified limitation is proper (“[T]he at applying. rule from Id. enough to vacate and remand. reason subject mat narrowing must relate to the original prose during ter surrendered (i.e., applicant recapture cution cannot If the modified limitation does not surrendered).”); scope the full of what was (or, cases, in materially narrow other Container, (ap N. Am. 415 F.3d eliminated), must limitation is the Board recapture rule bar because the nar plying claims still determine whether the reissued rowing of not relate to the claims did materially narrowed other re were Pannu, matter); subject spects so that the claims have not been (determining F.3d at 1371-72 that added recapture enlarged, and hence avoid the limitations relating, position to the size and Mostafazadeh, (ap 643 F.3d at 1361 rule. materially narrow haptics of the did not analysis this where limitation modi plying matter, subject to surrendered relative N. materially narrowing); but not fied shape haptics). which related to the Container, at 1349 (applying Am. narrowing If the is unrelated to the sur limitation analysis where added was Pannu, matter, eliminated); at 1371 rendered it is irrelevant Indeed, argument posi- during oral Applicants appeared to take a similar 6. Mostafaza- deh, as- the PTO admitted that "overlooked argument. tion oral pects” rule. are unrelated to 643 F.3d at 1360. surrendered, even if it he be denied that at- analysis should purposes for the claim as a whole inter- because of the rule. On tempt renders the reissue hand, attempts relative to the if the reissue also mediate the other N. significantly claims. Am. narrow the broadened narrowing If the patented, 415 F.3d at 1350. over what been has matter, ways related to the surrendered pertain point other it the reissue claim narrower broadening, must render prong the so-called third pertinent in a manner than it is broader analysis, recapture may then during surrendered subject matter because the claims overall be avoided are recapture order to avoid the in prosecution than is not broader what claimed in the Clement, 131 at 1471. F.3d rule. See patent. issued majority for its relies conclusion Conclusion In re Mostafazadeh, here on which used not properly The Board did conduct “original” noting in what a term reis- recapture analysis. three rule It against sue claim should measured be applicants failed to determine whether the 1353, prong. the third 1358-59 recapture avoided the rule on reissue bar (Fed.Cir.2011). But it makes no sense to by their modifying “cycling” limitation to compare original, a reissue claim to an Thus, “changing” in the reissue claim. we claim in pre-issued orig- this context. The remand, vacate the Board’s decision. On history only inal claim is as far as later properly the Board the re- apply should narrowing is concerned. What should analysis, in capture rule as articulated only count is whether a reissue claim inis opinion Mostafazadeh, and in to the claims toto broadened in relation to the issued necessary findings at issue make of and In princi- claim. with accordance these fact. ples, the court held that the Mostafazadeh VACATED AND REMANDED in recap- that case violated the rule ture because the reissue claims were LOURIE, Judge, dissenting. Circuit broader the issued claims re- respectfully majori- I dissent from subject garding surrendered matter ty’s holding that the claim in scope of a “materially and not in were narrowed a judged pur- reissue is to for recapture be way recapture that of the surren- avoid[ed] poses by comparison with claim as subject Id. at (citing dered matter.” 1361 originally originally filed. When the filed Plastipak N. Am. Inc. v. Pack- amended, especially has been when Inc., (Fed.Cir. 1335, 415 aging, F.3d 1350 was in amendment made order to ob- 2005), Instruments, Inc., Pannu v. Storz allowance, tain a later claim should reissue (Fed.Cir.2001), 1372 and In be in compared with the issued claim order Clement, (Fed.Cir. re F.3d it determine whether has been broad- 1997)). Indeed, by the cases relied on recapture ened and hence constitutes of held likewise that the “ma- Mostafazadeh matter. terially narrowing” inquiry focuses on whether the reissue claims were law, narrowed

Reissue-recapture now encumbered material any respect compared to variety a cases writings, should patent claims, originally- issued not the basically complicated. applica- not be Its Pannu, tion, E.g., is more filed claims. 258 F.3d at though, Simply difficult. stated, (holding applied if that rule patent applicant surrenders when “the claims were not nar- prosecution, matter reissued attempts any respect then what part compared is rowed material respects ally N. narrowed in other to avoid broadening”); Am. Contain- their with er, (holding that re- recapture. 1349-50 Those conclusions were not claims to reissued applied capture lacking contrary in substantial or evidence not “enlarged” been and were that had affirm I therefore to law. would respects”). in other “materially narrowed Accordingly, respect- Board’s decision. I Thus, majority’s extension of dicta dissent. fully is unwarranted. Mostafazadeh is of surrender point amend applicant that an does not

to ensure claim, part of it surrender pending issuance, and then file to obtain

order application broadening the issued accepted in the Patent over what he Racquel DUCHESNEAU, S. It over the issued Office. Claimant-Appellant, claim, originally filed not Moreover, concepts count. such should v. claim, of and partial modification total or SHINSEKI, Secretary Eric K. aspects” only aof claim are “overlooked Affairs, Respondent- Veterans concept dealing with basic tools Appellee. surrender, broadening, and rath- er than basic rules. 2011-7112. No. Here, narrowing was not at materially of Appeals, United States Court limitations by the because the added issue Federal Circuit. corresponded reissue

limitations already present in the issued 17, May Decision, 2010 WL claims. Board originally-filed at 19-20. The not reciting a selection means did claim causing to means for

limit that means cycle forward

characters and backward.

That limitation was inserted overcome Reed,

rejection Young, Vogel over But, once that issued

references. limitation, cycling

with the with broader replacing cycling broadening. was a

changing limitation broadening matters that it was a

What reciting cycling, not a

over the issued claim originally-filed over the compar- cycling By limitation.

without to the

ing originally-filed the reissue claim wrong majority has drawn the from and further

conclusion Mostafazadeh reissue-recapture. the law of

complicated 24- that reissue claims

The Board found 29-43, surren- 45-55 broadened materi- matter were not

dered

Case Details

Case Name: In Re Youman

Court Name: Court of Appeals for the Federal Circuit

Date Published: May 8, 2012

Citation: 679 F.3d 1335

Docket Number: 2011-1136

Court Abbreviation: Fed. Cir.