Examiner Applies Recapture Rule too Broadly

Scott Daniels | November 9, 2010

The PTO Board ruled last week that the examiner in Ex parte James had misapplied the Recapture Rule when he rejected amended reissue claims under 35 U.S.C. § 251 for improper recapture.

The Recapture Rule prohibits a patentee from recapturing through a reissue application subject matter that it had surrendered by amendment or by argument during the prosecution of the original application to overcome prior art.  It is based on the right of the public to rely upon such amendments or arguments as a permanent surrender of that subject matter.  The question of whether “surrender” has occurred is considered from the perspective of “an ordinary observer viewing the prosecution history.”

The patent for which reissue was sought claimed a method for cutting and sealing two layers.  During the original prosecution, applicants distinguished their claimed method from the prior art because of the location of a heater in an air space between V-belts. In two later actions, the examiner acknowledged that the claims recited patentable subject matter by requiring the heater be suspended between the belts.

After the patent issued, the patentee filed a broadening reissue application, amending the recitation in the claims of “V-belts” to “belts.”  The reexamination examiner rejected the claims as being an improper recapture of surrendered subject matter.

The Board disagreed and reversed the examiner.  It explained that the applicants’ arguments in the original prosecution were clearly directed to the location of the heater, not to the presence of V-belts.  Similarly, the original examiner’s identification of patentable subject matter referred to the heater location, not to the V-belts.  The Board concluded “that an objective observer looking to the record as a whole would conclude that Applicants had surrendered every heater location except the location of the heater or heat generating means being suspended between the belts, but did not surrender all belts except ‘V-belts.’”

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