TAKEAWAY: The Federal Circuit has made clear that subject matter surrendered to overcome a § 101 patent eligibility rejection is subject to the rule against recapture in reissue applications.

The Federal Circuit recently issued a decision in In Re McDonald (Fed. Cir. Aug. 10, 2022) that provides further guidance on the rule of recapture in reissue applications.

Leading up to this case, applicant McDonald filed an application seeking claims on displaying search results. During the course of prosecution, the applicant added a “processor” limitation to overcome a § 101 patent eligibility rejection. This first application was allowed and the applicant filed a continuation application with “processor” claims like those in the parent application. Upon grant of the continuation, the applicant filed a reissue application seeking broader claims to remove the “processor” limitation. The USPTO rejected the reissue claims as impermissibly attempting to recapture subject matter that was intentionally surrendered during prosecution of the continuation.

In its decision in In Re McDonald, the Federal Circuit disagreed with McDonald’s argument that USPTO guidance in M.P.E.P. § 1412.02 appeared to limit recapture to amendments made to overcome prior art rejections. The Court noted that USPTO guidance is informative but not binding, and that it summarizes existing case law with regard to prior art rejections. In its decision, the Court stated “The public’s reliance interest on a patent’s public record applies not only to subject matter surrendered in light of § 102 or §103 rejections but also to subject matter surrendered in light of § 101 rejections.”

While patent practitioners should keep in mind the limits presented by recapture, there are avenues for avoiding complications when seeking additional claim scope through a reissue application or a continuation application. For example, an applicant should consider using alternative terms or limitations when responding to a rejection to avoid relying on the exact same language. With particular regard to continuation applications, a disclaimer made during prosecution of the parent can be expressly rescinded as provided by Hakim v. Cannon Avent Grp. 479 F.3d 1313 (Fed. Cir. 2007) to allow for recapture.