Appeal 2007-1432
Application 09/141,186
Patent 5,549,673
Our belief is supported by what appears to be dicta in MBO
Laboratories, Inc. v. Becton, Dickinson & Company, 474 F.3d 1323, 1331-
32, 81 USPQ2d 1661, 1666-67 (Fed. Cir. 2007):
The recapture rule is a limitation on the ability of patentees to
broaden their patents after issuance. . . . . Section 251 is
“remedial in nature, based on fundamental principles of equity
and fairness, and should be construed liberally.” However, the
remedial function of the statute is limited. Material which has
been surrendered in order to obtain issuance cannot be
reclaimed via Section 251: . . . It is critical to avoid allowing
surrendered matter to creep back into the issued patent, since
competitors and the public are on notice of the surrender and
may have come to rely on the consequent limitations on claim
scope. . . . (“[T]he recapture rule ... ensur[es] the ability of the
public to rely on a patent’s public record.”). The public’s
reliance interest provides a justification for the recapture rule
that is independent of the likelihood that the surrendered
territory was already covered by prior art or otherwise
unpatentable. The recapture rule thus serves the same policy as
does the doctrine of prosecution history estoppel: both operate,
albeit in different ways, to prevent a patentee from encroaching
back into territory that had previously been committed to the
public. (citations omitted.)
B. § 251- The Examiner’s Prima Facie Case
Our Findings of Fact 44-47 set out the basis upon which the Examiner
made a recapture rejection. As noted in Finding of Fact 48, the record
supports the Examiner’s findings with respect to claims 16-26.
Basically, in the application which matured into the patent now sought
to be reissued, the Examiner rejected originally filed independent claim 18
and dependent claim 13 (depending from claim 18) over the prior art.
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