Appeals 2006-2874 and 2006-2747
Applications 08/544,212 and 09/287,664
Patent 5,401,305
1 In this case, the Examiner held that subject matter calling for a
2 precursor of silicon oxide beyond that appearing in application original
3 claim 11 would not have been enabled. Appellants amended original
4 application claim 1 to include the silicones of original application claim 11.
5 As in the case of a prior art rejection, it is possible under the facts of this
6 case to see precisely what was surrendered. Accordingly, we see no reason
7 why a recapture rejection cannot be based on a prosecution history where
8 amendments were made to overcome a rejection based on a lack of
9 enablement commensurate in scope with the breadth of a claim. The
10 principles which govern recapture based on amendments made as a result of
11 a prior art rejection apply equally to the rejection made by the Examiner
12 during original prosecution. The notice a member of the public would get
13 from studying the prosecution history of the original application is the same
14 one would normally get from reading a prosecution involving narrowing of
15 claims to avoid a prior art rejection. In this respect, we adopt as our holding
16 what appears to be dicta in MBO Laboratories, Inc. v. Becton, Dickinson &
17 Company, No. 2006-1062, slip. op. at 12-13 (Fed. Cir. Jan. 24, 2007):
18 The recapture rule is a limitation on the ability of
19 patentees to broaden their patents after issuance.
20 . . . . Section 251 is “remedial in nature, based on
21 fundamental principles of equity and fairness, and
22 should be construed liberally.” However, the
23 remedial function of the statute is limited.
24 Material which has been surrendered in order to
25 obtain issuance cannot be reclaimed via Section
26 251: . . . It is critical to avoid allowing surrendered
27 matter to creep back into the issued patent, since
28 competitors and the public are on notice of the
29 surrender and may have come to rely on the
30 consequent limitations on claim scope. . . . The
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