Appeal No. 2005-1674
Application 09/613,153
There is a three-step process for applying the recapture rule:
The first step is to determine whether and in what aspect the reissue
claims are broader than the patent claims. The second step is to determine
whether the broader aspects of the reissued claim related to surrendered
subject matter. Finally, the court must determine whether the reissued
claims were materially narrowed in other respects to avoid the recapture
rule.
Kim, slip op. 13 (quoting Pannu, 258 F.3d at 1371, 59 USPQ at 1600, omitting internal quotation
marks and citations).
The first step is clearly satisfied. The reissue claims do not recite a price/sales ratio or a
price/earnings ratio and therefore are broader in that respect than the independent patent claims,
which recite "at least one of [a] price/sales ratio and a price/earnings ratio."
Turning now to the second step, "[a] patentee can surrender subject matter either through
arguments or amendments made during the prosecution of the original patent." Kim, slip op.
at 14 (citing Hester Indus., Inc. v. Stein, Inc., 142 F.3d 1472, 1480-81, 46 USPQ2d 1641, 1648
(Fed. Cir. 1998)). The examiner bases the alleged surrender on arguments rather than an
amendment.6 Specifically, he argues that appellant surrendered subject matter claims having the
scope of the reissue claims when arguing, during prosecution of the claims in the original patent,
6 The only amendment of the independent claims made by appellant during prosecution
of the original patent was to insert "ratio" after the second and third occurrences of
"price/earnings," which amendment appellant accurately characterized at the time as
"correct[ing] minor informalities." Amendment received July 23, 1999, at 5. In an examiner's
amendment dated September 13, 1999, the examiner amended the preamble of claim 19 from "A
computer program product for generating a buyback investment report comprising:" to "A
computer readable medium containing instructions or controlling a data processing system for
generating a buyback investment report comprising:." In the patent, however, "or" was printed
(Continued on next page.)
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