Scott Daniels | March 3, 2010

The PTO Board ruled last week that the reissue application claims of In re Marui (USP 6,216,558) did not violate the Recapture Rule.

The Recapture Rule prevents a patentee from recapturing by a reissue application, claimed subject matter that he had surrendered in the original prosecution in order to obtain allowance.  To determine whether the Recapture Rule applies, the courts ask three questions:

(1) are the reissue application claims broader in scope than the patented claims;

(2)  if so, do the broader aspects of the reissue claims relate to the subject matter surrendered in the original prosecution; and

(3)  has the surrendered subject matter “crept into” the reissue claims.

In re Clement, 131 F.3d 1464 (Fed. Cir. 1997).

The ‘558 patent claims a bicycle pedal.  In the original prosecution the ‘558 applicant replied to a prior art rejection by rewriting dependent claim 2 – that recited a “helical spring” – in independent form to include the limitations of independent claim 1. During the later reissue application, the applicant submitted three new independent claims that included the limitation of a “helical spring.”

The reissue examiner found that these new claims were broader in scope in certain respects than the corresponding original independent claims.  Accordingly, the reissue examiner rejected those claims for violating the Recapture Rule.

The PTO Board disagreed.  It explained that rewriting claim 2 in independent form had constituted a surrender of claimed subject matter, specifically, bicycle pedals not having a “helical spring.”  However, since the three new reissue claims required the “helical spring,” the broader aspects of the reissue claims did not relate to the subject matter surrendered in the original prosecution.  The fact that the new reissue claims were broader than the original claims in certain other respects, unrelated to the surrender, did not matter.

The PTO Board therefore concluded that the Recapture Rule had not been violated and reversed the examiner’s rejection.

In addition to stating a significant legal principle, the Marui case has a startling, and certainly frustrating, procedural history.

That history began in March 2002, when the ‘558 patentee decided that his specification disclosed the same invention as recited in the claims of USP 6,205,885, that two patents “interfered.” Since the PTO cannot declare an interference between two patents (there must be at least one pending application), the ‘558 patentee filed a reissue application based on his patent.  He then added to his reissue application claims that had been copied from the ‘885 patent, and asked the PTO to declare an interference.

Instead, the examiner rejected the copied claims, finding that they constituted new matter and violated the Recapture Rule.  Eventually, in 2005, the PTO Board reversed the rejections and sent the case back to the examiner.  The examiner, however, made new rejections until the PTO Board reversed the examiner this past week for the second time.

In the meantime, the ‘885 patent – that the ‘558 patent sought to attack by reissue – was abandoned last year for failure to pay the second maintenance fee.  Eight years of prosecuting a reissue application to attack a patent that was ultimately abandoned!

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