How can a reissue applicant rebut a recapture rejection?

A reissue applicant can rebut a recapture rejection by demonstrating that the reissue claims include limitations that materially narrow the claims in a way related to the surrendered subject matter. According to MPEP 1412.02:

“The reissue applicant may rebut a recapture rejection by demonstrating that a claim rejected for recapture includes one or more claim limitations that ‘materially narrow’ the reissue claims in a way that relates to the subject matter surrendered during original prosecution.”

To rebut a recapture rejection, the applicant should:

1. Identify the specific limitation(s) added to the claims
2. Explain how the added limitation(s) materially narrow the claims
3. Demonstrate how the narrowing relates to the surrendered subject matter

It’s important to note that the narrowing must be more than just adding a limitation that is well-known in the prior art.

To learn more:

• recapture rejection
• rebuttal
• material narrowing
• patent reissue