Reissue Error Does Not Include Amending Claims To Overcome Patent Eligibility Rejection

• Jurisdiction: United States,Federal
• Law Firm: Manatt, Phelps & Phillips LLP
• Subject Matter: Intellectual Property, Patent
• Author: Mr Irah H. Donner
• Published date: 18 January 2023

In In re McDonald,¹ the Federal Circuit held that the recapture rule prevented reissue claims from including features deliberately relinquished in response to a patent eligibility rejection. As a result, the accompanying reissue declaration failed to identify errors correctable by reissue.

John Bradley McDonald filed a patent application in 2008 (2008 application) related to the display of primary and secondary search results for search queries. The 2008 application's initial claims 1-9 and 19-21 did not include a "processor" for performing the search queries. The Examiner refused the claims for reciting patent-ineligible subject matter under 35 U.S.C. ' 101.

Mr. McDonald responded by adding a processor to the claims and asserting that the addition of a processor provided meaningful restrictions on the scope of claims 1 and 19 by specifying a particular machine. The Examiner was persuaded and rescinded the Section 101 rejection. The 2008 patent application subsequently issued as U.S. Patent No. 8,280,901.

While the 2008 patent application was pending, Mr. McDonald submitted a continuation that application, which later issued as U.S. Patent No. 8,572,111 (the '111 patent). The continuation patent application claims also included "processor" language like the language added to the 2008 parent patent application to overcome the Section 101 eligibility rejection.

Mr. McDonald subsequently submitted a reissue application requesting to broaden the '111 patent claims. Mr. McDonald amended claim 1 of the '111 patent as follows:

1. (Amended) A computer-implemented method of displaying search results in a search and display window, the method comprising:

a) receiving a primary search query from a user;

b) determining a primary search result comprising a first plurality of search results [using a processor executing] by executing the primary search query;

c) displaying a plurality of primary electronic representations representing at least a subset of [data] search results in the primary search result, the plurality of primary electronic representations being displayed in a primary search results portion of the search and display window, wherein each primary electronic representation represents a single respective corresponding [data item] search result in the primary search result;

d) receiving a secondary search query, wherein the secondary search query comprises a user selection of one of the primary electronic representations;

e) determining a secondary search result [using the processor executing] comprising a second plurality of search results by executing the secondary search query, wherein at least a portion of the [data] search results in the primary search result is...