Prior Art Disclosure Establishes The Ceiling For Surrendered Subject Matter In A Recapture Rule Analysis

This article previously appeared in Last Month at the Federal Circuit, June 2012

Judges: Lourie (dissenting), Schall, Prost (author)

[Appealed from Board]

In In re Youman, No. 11-1136 (Fed. Cir. May 8, 2012), the Federal Circuit vacated and remanded the Board's decision rejecting the claims of Roger Youman and Marney Morris's (collectively "Youman") reissue application as improperly recapturing subject matter surrendered in the original patent.

Youman had filed a patent application, which eventually issued to Youman as U.S. Patent No. 5,629,733 ("the '733 patent"). The '733 patent described an electronic program schedule system for televisions that permits a user to efficiently access and navigate television program information. As originally filed, the patent application contained a single independent claim ("the patented claim"), reciting, inter alia, "selection means for allowing said user to select a title for display on said television receiver by selecting the first n characters of said title." Slip op. at 3 (emphasis and citation omitted). During prosecution, in order to overcome a 35 U.S.C. § 103 rejection in light of three prior art references, Youman added a limitation to claim 1, reciting "said selection means comprising means for causing each of said n characters to cycle forward and backward through a plurality of alphanumeric characters . . . ." Slip op. at 6 (citation omitted). This language was included in the patented claim. Within two years of the '733 patent reissuing, Youman filed a reissue application. In the reissue application, Youman added an independent reissue claim similar to the patented claim, but reciting "wherein each of the n characters may be selected with the wireless remote control from a plurality of displayed alphanumeric characters by changing from a first character to a second character using the nonalphanumeric keys." Id. at 7 (citation omitted). The examiner finally rejected this claim under 35 U.S.C. § 251 as improperly recapturing subject matter surrendered in the application for the '733 patent. Youman appealed to the Board.

The Board applied the three-step recapture rule analysis to affirm the examiner's rejection. Specifically, the Board found that the modified "changing" limitation of the reissue claim was broader than the "cycling" limitation of the patented claim, and was related to the surrendered subject matter. The "Board held that because the reissue claim broadened patented claim 1 to...