Appeal No. 2005-0841
Application No. 08/230,083
RECAPTURE UNDER 35 U.S.C. § 251
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.
BURDEN OF PROOF
We agree with the plurality that an examiner has the burden of
making out a prima facie case of recapture. However, we believe
that the examiner makes out the prima facie case of recapture by
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