Appeal 2005-0801
Application 09/848,628
The reissue statute expressly permits a patentee to obtain reissue
claims broader than the originally issued claims at any time within two years
from the date the original patent issues. 35 U.S.C. § 251. The scope of
permissible broadened reissue claims is limited by a judicial doctrine known
as the "recapture rule." The "recapture rule" was developed to prohibit a
patentee from obtaining by reissue broadened claims that "recapture" subject
matter the patentee "deliberately surrendered" during the course of the
original prosecution to obtain the patent. When an Applicant cancels or
amends a claim to overcome a prior art rejection, and then relies on the
changes made to the claim in arguing patentability of the amended claim, the
law infers that the patent applicant admits that the prior art forecloses the
scope of the original claim. As a result of this inferred admission,
competitors are free to practice the subject matter surrendered by the
patentee through the cancellation or amendment. To preserve the public
notice function of the file history, the "recapture rule" precludes the patentee
from recanting the admission that the prior art precluded a certain breadth of
claim scope.
The examiner has the burden of making out a prima facie case of
recapture. We believe that the examiner makes out the prima facie case of
recapture by establishing: (1) the scope of the surrendered subject matter;
and (2) that the surrendered subject matter has crept into a reissue claim.
Also, we note that the Court has stated in In re Oetiker, 977 F.2d 1443,
1445, 24 U.S.P.Q.2d 1443, 1444 (Fed. Cir. 1992), that the prima facie case
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