Reissue Applicant Loses to Recapture Rule

Scott Daniels | June 30, 2010

Yesterday the PTO Board denied Appellant’s request for rehearing in Ex parte Hollingsworth, stating that rehearing is “limited to matters misapprehended or overlooked by the Panel” in original decision.  (37 C.F.R. § 41.52(a)(1)).  Appellant’s argument – that the Recapture Rule does not apply because the pending claims are patentably distinguishable over the prior art – was not “misapprehended or overlooked” for the simple reason that the argument did not appear in the original briefing.  The case, however, is more than a lesson on the standard for rehearing: it recites the sequence of steps followed by the Board in determining whether the Recapture Rule applies.

Appellant’s U.S. Patent No. 6,073,699 claims a “wellbore tubular elevator.”  During the prosecution of the original application, Appellant amended the claims to recite “a second roller” and argued that this limitation distinguished the claimed elevator over the prior art.  In the reissue application, Appellant deleted this “second roller” limitation from the claims, thereby broadening the claims “with respect to subject matter surrendered during prosecution of the original patent.”  Appellant argued, however, that the Recapture Rule did not apply because the claims were “materially narrower in other overlooked respects,” specifically, narrowed by the amendment of the reissue claims to recite two “lifting ears.”

The reissue examiner disagreed and rejected the claims under 35 U.S.C. § 251 and the test of  In re Clement, 131 F.3d 1464, 1470 (Fed. Cir. 1997).[i] The Board affirmed the rejection in its initial decision of February 17, 2010, also Ex parte Hollingsworth.  The Board asserted that the Appellant had failed to explain how the pending claims were patentably distinguishable over the prior art.  In its request for reconsideration, Appellant tried to present its explanation.

But the Board denied the request, stating that to invoke the Recapture Rule, the examiner has the burden of establishing a prima facie case that (1) the reissue claim is broader than the patent claims, (2) the broader aspect of the reissue claim relates to subject surrendered during the original prosecution, and (3) the surrendered subject matter of the patent claims “has crept into the reissue application claim.”  The reissue applicant may then rebut this prima facie case by showing that the claim has been “materially narrowed in overlooked aspects.”  To do so, the reissue applicant must show that the claim is limited to aspects of the invention (1) which had not been claimed and (2) which patentably distinguish over the prior art.

It was this last point of “patentable distinction” that the Appellant failed to address.  Since the reissue examiner did not reject the claims over the cited references, the Appellant stated in its original brief that it could “only presume that the Examiner agrees pending claims 4-7 are patentably distinguished over the prior art.”  Because the prior art used by the examiner to reject the claims in the original prosecution disclosed the feature added to the reissue claims – “lifting ears” – the Board found that the “burden was squarely on Appellant to make some showing to demonstrate that these reissue claims patentably distinguish over the art in order to show that the claimed lifting ears were an overlooked aspect of the invention.”  Having not argued such distinctions in its original briefing, the Appellant was not entitled to do so in rehearing.


[i] Claims 4-7 were rejected and are the subject of this decision; the examiner found claims 1-3 to be allowable.

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