In Hester, supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture "can occur through arguments alone." 142 F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims is omitted in the reissue claims and no other amendments are made. This omission provides a broadening aspect in the reissue claims, as compared to the claims of the patent. If the omitted limitation A was argued in the original application to make the application claims allowable over the art in the application, then the omitted limitation relates to subject matter previously surrendered in the original application, and recapture will exist. Accordingly, where claims are broadened in a reissue application, the examiner should review the prosecution history of the original patent file for recapture, even where the claims were never amended during the prosecution of the application which resulted in the patent. Note: The argument that the claim limitation defined over the rejection must have been specific as to the limitation relied upon, rather than a general statement regarding the claims as a whole. A general "boiler plate" sentence in the original application will not, by itself, be sufficient to establish surrender and recapture.

Assume that the limitation A omitted in the reissue claims was present in the claims of the original application. The examiner’s reasons for allowance in the original application stated that it was that limitation A which distinguished over a potential combination of references X and Y. Applicant did not present on the record a counter statement or comment as to the examiner’s reasons for allowance, and permitted the claims to issue.

Assume that the limitation A omitted in the reissue claims was present in the claims of the original application. The examiner’s reasons for allowance in the original application stated that it was that limitation A which distinguished over a potential combination of references X and Y. Applicant did not present on the record a counter statement or comment as to the examiner’s reasons for allowance, and permitted the claims to issue.

Assume that the limitation A omitted in the reissue claims was present in the claims of the original application. The examiner’s reasons for allowance in the original application stated that it was that limitation A which distinguished over a potential combination of references X and Y. Applicant did not present on the record a counter statement or comment as to the examiner’s reasons for allowance, and permitted the claims to issue.

As pointed out above, this third step of the recapture determination, as set forth in North American Container, considers the significance of the claim limitations that were added and deleted, during prosecution of the patent (to be reissued) to determine whether the reissue claims should be barred under the recapture doctrine.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 3 – Materially narrowed in other respects relative to the surrendered subject matter: In both situations 1 and 2, even “[i]f the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated),” it may be that “the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule.” Youman, 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified limitation does not materially narrow, the reissue applicant may have added a new limitation that still relates to surrendered subject matter (e.g., same characteristic or concept). The material narrowing must relate to what was amended or argued by applicant in the original application, for example to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). See also In re General Electric Co., 789 F. App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The additional limitations identified by General Electric, however, relate only to positioning of the synthetic jet assembly. Any narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter [the attachment-related limitations] and therefore insufficient to avoid recapture”). If the reissue applicant believes that “the reissued claims were materially narrowed in other respects,” the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow and how it materially narrows the claims.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 3 – Materially narrowed in other respects relative to the surrendered subject matter: In both situations 1 and 2, even “[i]f the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated),” it may be that “the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule.” Youman, 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified limitation does not materially narrow, the reissue applicant may have added a new limitation that still relates to surrendered subject matter (e.g., same characteristic or concept). The material narrowing must relate to what was amended or argued by applicant in the original application, for example to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). See also In re General Electric Co., 789 F. App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The additional limitations identified by General Electric, however, relate only to positioning of the synthetic jet assembly. Any narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter [the attachment-related limitations] and therefore insufficient to avoid recapture”). If the reissue applicant believes that “the reissued claims were materially narrowed in other respects,” the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow and how it materially narrows the claims.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 3 – Materially narrowed in other respects relative to the surrendered subject matter: In both situations 1 and 2, even “[i]f the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated),” it may be that “the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule.” Youman, 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified limitation does not materially narrow, the reissue applicant may have added a new limitation that still relates to surrendered subject matter (e.g., same characteristic or concept). The material narrowing must relate to what was amended or argued by applicant in the original application, for example to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). See also In re General Electric Co., 789 F. App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The additional limitations identified by General Electric, however, relate only to positioning of the synthetic jet assembly. Any narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter [the attachment-related limitations] and therefore insufficient to avoid recapture”). If the reissue applicant believes that “the reissued claims were materially narrowed in other respects,” the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow and how it materially narrows the claims.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 3 – Materially narrowed in other respects relative to the surrendered subject matter: In both situations 1 and 2, even “[i]f the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated),” it may be that “the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule.” Youman, 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified limitation does not materially narrow, the reissue applicant may have added a new limitation that still relates to surrendered subject matter (e.g., same characteristic or concept). The material narrowing must relate to what was amended or argued by applicant in the original application, for example to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). See also In re General Electric Co., 789 F. App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The additional limitations identified by General Electric, however, relate only to positioning of the synthetic jet assembly. Any narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter [the attachment-related limitations] and therefore insufficient to avoid recapture”). If the reissue applicant believes that “the reissued claims were materially narrowed in other respects,” the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow and how it materially narrows the claims.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 3 – Materially narrowed in other respects relative to the surrendered subject matter: In both situations 1 and 2, even “[i]f the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated),” it may be that “the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule.” Youman, 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified limitation does not materially narrow, the reissue applicant may have added a new limitation that still relates to surrendered subject matter (e.g., same characteristic or concept). The material narrowing must relate to what was amended or argued by applicant in the original application, for example to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). See also In re General Electric Co., 789 F. App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The additional limitations identified by General Electric, however, relate only to positioning of the synthetic jet assembly. Any narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter [the attachment-related limitations] and therefore insufficient to avoid recapture”). If the reissue applicant believes that “the reissued claims were materially narrowed in other respects,” the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow and how it materially narrows the claims.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below.
…
Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012) See also In re General Electric Co., 789 F. App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished)

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 3 – Materially narrowed in other respects relative to the surrendered subject matter: In both situations 1 and 2, even “[i]f the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated),” it may be that “the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule.” Youman, 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified limitation does not materially narrow, the reissue applicant may have added a new limitation that still relates to surrendered subject matter (e.g., same characteristic or concept). The material narrowing must relate to what was amended or argued by applicant in the original application, for example to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). See also In re General Electric Co., 789 F. App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The additional limitations identified by General Electric, however, relate only to positioning of the synthetic jet assembly. Any narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter [the attachment-related limitations] and therefore insufficient to avoid recapture”). If the reissue applicant believes that “the reissued claims were materially narrowed in other respects,” the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow and how it materially narrows the claims.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 3 – Materially narrowed in other respects relative to the surrendered subject matter: In both situations 1 and 2, even “[i]f the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated),” it may be that “the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule.” Youman, 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified limitation does not materially narrow, the reissue applicant may have added a new limitation that still relates to surrendered subject matter (e.g., same characteristic or concept). The material narrowing must relate to what was amended or argued by applicant in the original application, for example to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). See also In re General Electric Co., 789 F. App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The additional limitations identified by General Electric, however, relate only to positioning of the synthetic jet assembly. Any narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter [the attachment-related limitations] and therefore insufficient to avoid recapture”). If the reissue applicant believes that “the reissued claims were materially narrowed in other respects,” the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow and how it materially narrows the claims.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 3 – Materially narrowed in other respects relative to the surrendered subject matter: In both situations 1 and 2, even “[i]f the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated),” it may be that “the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule.” Youman, 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified limitation does not materially narrow, the reissue applicant may have added a new limitation that still relates to surrendered subject matter (e.g., same characteristic or concept). The material narrowing must relate to what was amended or argued by applicant in the original application, for example to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). See also In re General Electric Co., 789 F. App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The additional limitations identified by General Electric, however, relate only to positioning of the synthetic jet assembly. Any narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter [the attachment-related limitations] and therefore insufficient to avoid recapture”). If the reissue applicant believes that “the reissued claims were materially narrowed in other respects,” the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow and how it materially narrows the claims.

The discussion below is directed to the situation where the reissue claims are narrower than the canceled claims in some aspect, but are broader than the patent claims in some other aspect. Note, as discussed above in subsection II.A, if the reissue claims are equal in scope to, or narrower than, the patent claims (as opposed to the canceled claims) in all aspects, then there can never be recapture and the discussion that follows is not applicable.

The discussion below is directed to the situation where the reissue claims are narrower than the canceled claims in some aspect, but are broader than the patent claims in some other aspect. Note, as discussed above in subsection II.A, if the reissue claims are equal in scope to, or narrower than, the patent claims (as opposed to the canceled claims) in all aspects, then there can never be recapture and the discussion that follows is not applicable.

If a claim is presented in a reissue application that omits, in its entirety, the surrender-generating limitation, that claim impermissibly recaptures what was previously surrendered, and that claim is barred under 35 U.S.C. 251. Note, however, subsection VII, below, “REBUTTAL BY THE REISSUE APPLICANT,” which points out how the recapture finding of the Office can be rebutted by applicant, in some limited instances, by showing that material narrowing is present in the claims.

This situation is where the patent claims are directed to combination ABC and the reissue claims are directed to ABD (which is not an overlooked aspect). Element C was either a limitation added to AB to obtain allowance of the original patent, or was argued by applicant to obviate a rejection (or both) in the prosecution of the original application. Thus, addition of C (and/or argument as to C) has resulted in the surrender of any combination of A & B that does not include subject matter related to C. Element C is a surrender generating limitation. Element D, on the other hand, is not related to the surrendered subject matter. Thus, the reissue claim, which completely eliminates C, is broadened in an area related to the surrender. The narrowing of the claim by the addition of D will not save the claim from recapture because D is not related to the surrendered subject matter. If, however, element D were related to the surrendered subject matter and materially narrowed the claim compared to the canceled claim, recapture may be avoided. See example 4 below.

Additionally, the reissue claims are certainly permitted to recite combination ABDE specific (where surrender-generating element E is narrowed). The patent claims can be broadened in an area not directed to the surrender (by omitting element C) and narrowed in the area of surrender (by narrowing element E to E specific) without violating the recapture doctrine.

Additionally, the reissue claims are certainly permitted to recite combination ABDE specific (where surrender-generating element E is narrowed). The patent claims can be broadened in an area not directed to the surrender (by omitting element C) and narrowed in the area of surrender (by narrowing element E to E specific) without violating the recapture doctrine.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC broadened. The ABC broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC broadened is narrower than canceled claim subject matter AB, if C broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “ full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

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.

In these four examples, a recapture rejection would be made. For examples 2 and 4, applicant may try to rebut the recapture rejections by showing that limitation F “materially narrows” the reissue claims in a way that relates to the subject matter surrendered during original prosecution. If such is the case, the reissue applicant should point out explicitly what limitation has been added to the claims (in this case, limitation F) and how it materially narrows the claims.

In these four examples, a recapture rejection would be made. For examples 2 and 4, applicant may try to rebut the recapture rejections by showing that limitation F “materially narrows” the reissue claims in a way that relates to the subject matter surrendered during original prosecution. If such is the case, the reissue applicant should point out explicitly what limitation has been added to the claims (in this case, limitation F) and how it materially narrows the claims.

In these four examples, a recapture rejection would be made. For examples 2 and 4, applicant may try to rebut the recapture rejections by showing that limitation F “materially narrows” the reissue claims in a way that relates to the subject matter surrendered during original prosecution. If such is the case, the reissue applicant should point out explicitly what limitation has been added to the claims (in this case, limitation F) and how it materially narrows the claims.

In Hester, supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture "can occur through arguments alone." 142 F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims is omitted in the reissue claims and no other amendments are made. This omission provides a broadening aspect in the reissue claims, as compared to the claims of the patent. If the omitted limitation A was argued in the original application to make the application claims allowable over the art in the application, then the omitted limitation relates to subject matter previously surrendered in the original application, and recapture will exist. Accordingly, where claims are broadened in a reissue application, the examiner should review the prosecution history of the original patent file for recapture, even where the claims were never amended during the prosecution of the application which resulted in the patent. Note: The argument that the claim limitation defined over the rejection must have been specific as to the limitation relied upon, rather than a general statement regarding the claims as a whole. A general "boiler plate" sentence in the original application will not, by itself, be sufficient to establish surrender and recapture.

In Hester, supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture "can occur through arguments alone." 142 F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims is omitted in the reissue claims and no other amendments are made. This omission provides a broadening aspect in the reissue claims, as compared to the claims of the patent. If the omitted limitation A was argued in the original application to make the application claims allowable over the art in the application, then the omitted limitation relates to subject matter previously surrendered in the original application, and recapture will exist. Accordingly, where claims are broadened in a reissue application, the examiner should review the prosecution history of the original patent file for recapture, even where the claims were never amended during the prosecution of the application which resulted in the patent. Note: The argument that the claim limitation defined over the rejection must have been specific as to the limitation relied upon, rather than a general statement regarding the claims as a whole. A general "boiler plate" sentence in the original application will not, by itself, be sufficient to establish surrender and recapture.

The limitation omitted in the reissue claim(s) was added in the original application claims for the purpose of making the application claims allowable over a rejection or objection made in the application. Even though applicant made no argument on the record that the limitation was added to obviate the rejection, the nature of the addition to the claim can show that the limitation was added in direct reply to the rejection. This too will establish the omitted limitation as relating to subject matter previously surrendered. To illustrate this, note the following example:

The original application claims recite limitations A+B+C, and the Office action rejection combines two references to show A+B+C. In the amendment replying to the Office action, applicant adds limitation D to A+B+C in the claims, but makes no argument as to that addition. The examiner then allows the claims. Even though there is no argument as to the addition of limitation D, it must be presumed that the D limitation was added to obviate the rejection. The subsequent deletion of (omission of) limitation D in the reissue claims would be presumed to be a broadening in an aspect of the reissue claims related to surrendered subject matter. Accordingly, the reissue claims would be barred by the recapture doctrine (absent the addition of a materially narrowing limitation related to the surrendered subject matter). The above result would be the same whether the addition of limitation D in the original application was by way of applicant’s amendment or by way of an examiner’s amendment with authorization by applicant.

• (C) Example (3) – Who can make the surrendering argument?

The original application claims recite limitations A+B+C, and the Office action rejection combines two references to show A+B+C. In the amendment replying to the Office action, applicant adds limitation D to A+B+C in the claims, but makes no argument as to that addition. The examiner then allows the claims. Even though there is no argument as to the addition of limitation D, it must be presumed that the D limitation was added to obviate the rejection. The subsequent deletion of (omission of) limitation D in the reissue claims would be presumed to be a broadening in an aspect of the reissue claims related to surrendered subject matter. Accordingly, the reissue claims would be barred by the recapture doctrine (absent the addition of a materially narrowing limitation related to the surrendered subject matter). The above result would be the same whether the addition of limitation D in the original application was by way of applicant’s amendment or by way of an examiner’s amendment with authorization by applicant. (C) Example (3) – Who can make the surrendering argument?

The following discussion addresses analyzing the reissue claims that have eliminated or modified a surrender generating limitation, as determined under step 2 analysis. In any broadening reissue application, the examiner will determine, under steps 1 and 2 of the recapture analysis on a claim-by-claim basis, whether the broadening relates to subject matter that was surrendered during the examination of the patent for which reissue is requested. Under step 3, it must be determined if such reissue claims are materially narrowed so as to escape the effects of the recapture doctrine. Note, examiners should consider any relevant preliminary applicant arguments of record as part of the recapture determination. See subsection VII, below, “REBUTTAL BY THE REISSUE APPLICANT,” which points out how the recapture finding of the Office can be rebutted by applicant, in some limited instances, by showing that material narrowing is present in the claims.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below.

• Situation 1 – SGL entirely eliminated: If an SGL has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 may be proper. For example, if a claim limitation present in the original patent that was added to overcome a rejection or that was argued by applicant to distinguish over the prior art is entirely eliminated from a claim in the reissue application and not replaced by a new SGL-related limitation, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim.
• Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other unrelated aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. But note that even if the SGL limitation in the patent claims was entirely eliminated, the reissue applicant may have added a new limitation that relates to surrendered subject matter. See situation 3 below.
• Situation 2 – SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.
• Situation 3 – Materially narrowed in other respects relative to the surrendered subject matter: In both situations 1 and 2, even “[i]f the modified limitation does not materially narrow (or, in other cases, the limitation is eliminated),” it may be that “the reissued claims were materially narrowed in other respects so that the claims have not been enlarged, and hence avoid the recapture rule.” Youman, 679 F.3d at 1347, 102 USPQ2d at 1870. In other words, even if the modified limitation does not materially narrow, the reissue applicant may have added a new limitation that still relates to surrendered subject matter (e.g., same characteristic or concept). The material narrowing must relate to what was amended or argued by applicant in the original application, for example to define the claim over the art. Greenliant Systems, Inc. et al v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). See also In re General Electric Co., 789 F. App’x 857, 860-61, 2019 USPQ2d 399054 (Fed. Cir. 2019) (unpublished) (“The additional limitations identified by General Electric, however, relate only to positioning of the synthetic jet assembly. Any narrowing accomplished by those limitations is thus unrelated to the surrendered subject matter [the attachment-related limitations] and therefore insufficient to avoid recapture”). If the reissue applicant believes that “the reissued claims were materially narrowed in other respects,” the reissue applicant should point out explicitly what limitation has been added to the claims to materially narrow and how it materially narrows the claims.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 1 – SGL entirely eliminated: If an SGL has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 may be proper. For example, if a claim limitation present in the original patent that was added to overcome a rejection or that was argued by applicant to distinguish over the prior art is entirely eliminated from a claim in the reissue application and not replaced by a new SGL-related limitation, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 1 – SGL entirely eliminated: If an SGL has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 may be proper. For example, if a claim limitation present in the original patent that was added to overcome a rejection or that was argued by applicant to distinguish over the prior art is entirely eliminated from a claim in the reissue application and not replaced by a new SGL-related limitation, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 1 – SGL entirely eliminated: If an SGL has been entirely eliminated from a claim present in the reissue application, then a recapture rejection under 35 U.S.C. 251 may be proper. For example, if a claim limitation present in the original patent that was added to overcome a rejection or that was argued by applicant to distinguish over the prior art is entirely eliminated from a claim in the reissue application and not replaced by a new SGL-related limitation, then a recapture rejection under 35 U.S.C. 251 is proper and must be made for that claim.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other unrelated aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. But note that even if the SGL limitation in the patent claims was entirely eliminated, the reissue applicant may have added a new limitation that relates to surrendered subject matter. See situation 3 below.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other unrelated aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. But note that even if the SGL limitation in the patent claims was entirely eliminated, the reissue applicant may have added a new limitation that relates to surrendered subject matter. See situation 3 below.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other unrelated aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. But note that even if the SGL limitation in the patent claims was entirely eliminated, the reissue applicant may have added a new limitation that relates to surrendered subject matter. See situation 3 below.

This situation is where the patent claims are directed to combination ABC and the reissue claims are directed to ABD (which is not an overlooked aspect). Element C was either a limitation added to AB to obtain allowance of the original patent, or was argued by applicant to obviate a rejection (or both) in the prosecution of the original application. Thus, addition of C (and/or argument as to C) has resulted in the surrender of any combination of A & B that does not include subject matter related to C. Element C is a surrender generating limitation. Element D, on the other hand, is not related to the surrendered subject matter. Thus, the reissue claim, which completely eliminates C, is broadened in an area related to the surrender. The narrowing of the claim by the addition of D will not save the claim from recapture because D is not related to the surrendered subject matter. If, however, element D were related to the surrendered subject matter and materially narrowed the claim compared to the canceled claim, recapture may be avoided. See example 4 below.

This situation is where the patent claims are directed to combination ABC and the reissue claims are directed to ABD (which is not an overlooked aspect). Element C was either a limitation added to AB to obtain allowance of the original patent, or was argued by applicant to obviate a rejection (or both) in the prosecution of the original application. Thus, addition of C (and/or argument as to C) has resulted in the surrender of any combination of A & B that does not include subject matter related to C. Element C is a surrender generating limitation. Element D, on the other hand, is not related to the surrendered subject matter. Thus, the reissue claim, which completely eliminates C, is broadened in an area related to the surrender. The narrowing of the claim by the addition of D will not save the claim from recapture because D is not related to the surrendered subject matter. If, however, element D were related to the surrendered subject matter and materially narrowed the claim compared to the canceled claim, recapture may be avoided. See example 4 below.

We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; [NOTE: if the claims are not broader in scope than the original patent claims, there is no recapture; if the claims are broader in scope, then proceed to step (2).] (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and [NOTE: if the broader aspects of the reissue claims do not relate to surrendered subject matter, there is no recapture; if the broader aspects of the reissue claims do relate to surrendered subject matter, then proceed to step (3).] (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. [NOTE: if the reissue claims were materially narrowed in aspects related to the surrendered subject matter, there is no recapture; if the claims were not materially narrowed in related aspects or were narrowed in unrelated aspects, there is recapture.]

We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; [NOTE: if the claims are not broader in scope than the original patent claims, there is no recapture; if the claims are broader in scope, then proceed to step (2).] (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and [NOTE: if the broader aspects of the reissue claims do not relate to surrendered subject matter, there is no recapture; if the broader aspects of the reissue claims do relate to surrendered subject matter, then proceed to step (3).] (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. [NOTE: if the reissue claims were materially narrowed in aspects related to the surrendered subject matter, there is no recapture; if the claims were not materially narrowed in related aspects or were narrowed in unrelated aspects, there is recapture.]

In Hester, supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture "can occur through arguments alone." 142 F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims is omitted in the reissue claims and no other amendments are made. This omission provides a broadening aspect in the reissue claims, as compared to the claims of the patent. If the omitted limitation A was argued in the original application to make the application claims allowable over the art in the application, then the omitted limitation relates to subject matter previously surrendered in the original application, and recapture will exist. Accordingly, where claims are broadened in a reissue application, the examiner should review the prosecution history of the original patent file for recapture, even where the claims were never amended during the prosecution of the application which resulted in the patent. Note: The argument that the claim limitation defined over the rejection must have been specific as to the limitation relied upon, rather than a general statement regarding the claims as a whole. A general "boiler plate" sentence in the original application will not, by itself, be sufficient to establish surrender and recapture.

In Hester, supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture "can occur through arguments alone." 142 F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims is omitted in the reissue claims and no other amendments are made. This omission provides a broadening aspect in the reissue claims, as compared to the claims of the patent. If the omitted limitation A was argued in the original application to make the application claims allowable over the art in the application, then the omitted limitation relates to subject matter previously surrendered in the original application, and recapture will exist. Accordingly, where claims are broadened in a reissue application, the examiner should review the prosecution history of the original patent file for recapture, even where the claims were never amended during the prosecution of the application which resulted in the patent. Note: The argument that the claim limitation defined over the rejection must have been specific as to the limitation relied upon, rather than a general statement regarding the claims as a whole. A general "boiler plate" sentence in the original application will not, by itself, be sufficient to establish surrender and recapture.

In Hester, supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture "can occur through arguments alone." 142 F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims is omitted in the reissue claims and no other amendments are made. This omission provides a broadening aspect in the reissue claims, as compared to the claims of the patent. If the omitted limitation A was argued in the original application to make the application claims allowable over the art in the application, then the omitted limitation relates to subject matter previously surrendered in the original application, and recapture will exist. Accordingly, where claims are broadened in a reissue application, the examiner should review the prosecution history of the original patent file for recapture, even where the claims were never amended during the prosecution of the application which resulted in the patent. Note: The argument that the claim limitation defined over the rejection must have been specific as to the limitation relied upon, rather than a general statement regarding the claims as a whole. A general "boiler plate" sentence in the original application will not, by itself, be sufficient to establish surrender and recapture.

In Hester, supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture "can occur through arguments alone." 142 F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims is omitted in the reissue claims and no other amendments are made. This omission provides a broadening aspect in the reissue claims, as compared to the claims of the patent. If the omitted limitation A was argued in the original application to make the application claims allowable over the art in the application, then the omitted limitation relates to subject matter previously surrendered in the original application, and recapture will exist. Accordingly, where claims are broadened in a reissue application, the examiner should review the prosecution history of the original patent file for recapture, even where the claims were never amended during the prosecution of the application which resulted in the patent. Note: The argument that the claim limitation defined over the rejection must have been specific as to the limitation relied upon, rather than a general statement regarding the claims as a whole. A general "boiler plate" sentence in the original application will not, by itself, be sufficient to establish surrender and recapture.

The limitation omitted in the reissue claim(s) was added in the original application claims for the purpose of making the application claims allowable over a rejection or objection made in the application. Even though applicant made no argument on the record that the limitation was added to obviate the rejection, the nature of the addition to the claim can show that the limitation was added in direct reply to the rejection. This too will establish the omitted limitation as relating to subject matter previously surrendered. To illustrate this, note the following example:

The following discussion addresses analyzing the reissue claims that have eliminated or modified a surrender generating limitation, as determined under step 2 analysis. In any broadening reissue application, the examiner will determine, under steps 1 and 2 of the recapture analysis on a claim-by-claim basis, whether the broadening relates to subject matter that was surrendered during the examination of the patent for which reissue is requested. Under step 3, it must be determined if such reissue claims are materially narrowed so as to escape the effects of the recapture doctrine. Note, examiners should consider any relevant preliminary applicant arguments of record as part of the recapture determination. See subsection VII, below, “REBUTTAL BY THE REISSUE APPLICANT,” which points out how the recapture finding of the Office can be rebutted by applicant, in some limited instances, by showing that material narrowing is present in the claims.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Such an omission in a reissue claim, even if it is accompanied by other limitations making the reissue claim narrower than the patent claim in other unrelated aspects, is impermissible recapture. Pannu, 258 F.3d at 1371-72, 59 USPQ2d at 1600. But note that even if the SGL limitation in the patent claims was entirely eliminated, the reissue applicant may have added a new limitation that relates to surrendered subject matter. See situation 3 below.

As pointed out above, where the reissue claims are narrower than the patent claims in all aspects, then there can never be recapture. If reissue claims are equal in scope to the patent claims, there is no recapture as to those reissue claims. Where, however, reissue claims are both broadened and narrowed as compared with the patent claims, the nature of the broadening and narrowing must be examined to determine whether the reissue claims are barred as being recapture of surrendered subject matter. If the claims are "broader than they are narrower in a manner directly pertinent to the subject matter… surrendered during prosecution" (Clement, 131 F.3d at 1471, 45 USPQ2d at 1166), then recapture will bar the claims. This narrowing/broadening vis-à-vis the patent is broken down into four possibilities that will now be addressed.

We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; [NOTE: if the claims are not broader in scope than the original patent claims, there is no recapture; if the claims are broader in scope, then proceed to step (2).] (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and [NOTE: if the broader aspects of the reissue claims do not relate to surrendered subject matter, there is no recapture; if the broader aspects of the reissue claims do relate to surrendered subject matter, then proceed to step (3).] (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. [NOTE: if the reissue claims were materially narrowed in aspects related to the surrendered subject matter, there is no recapture; if the claims were not materially narrowed in related aspects or were narrowed in unrelated aspects, there is recapture.]

We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; [NOTE: if the claims are not broader in scope than the original patent claims, there is no recapture; if the claims are broader in scope, then proceed to step (2).] (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and [NOTE: if the broader aspects of the reissue claims do not relate to surrendered subject matter, there is no recapture; if the broader aspects of the reissue claims do relate to surrendered subject matter, then proceed to step (3).] (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. [NOTE: if the reissue claims were materially narrowed in aspects related to the surrendered subject matter, there is no recapture; if the claims were not materially narrowed in related aspects or were narrowed in unrelated aspects, there is recapture.]

We apply the recapture rule as a three-step process: (1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; [NOTE: if the claims are not broader in scope than the original patent claims, there is no recapture; if the claims are broader in scope, then proceed to step (2).] (2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and [NOTE: if the broader aspects of the reissue claims do not relate to surrendered subject matter, there is no recapture; if the broader aspects of the reissue claims do relate to surrendered subject matter, then proceed to step (3).] (3) finally, we determine whether the reissue claims were materially narrowed in other respects, so that the claims may not have been enlarged, and hence avoid the recapture rule. [NOTE: if the reissue claims were materially narrowed in aspects related to the surrendered subject matter, there is no recapture; if the claims were not materially narrowed in related aspects or were narrowed in unrelated aspects, there is recapture.]

Where a claim in a reissue application is broadened in some respect as compared to the patent claims, the examiner must next determine whether the broadening aspect(s) of that reissue claim relate(s) to subject matter that applicant previously surrendered during the prosecution of the original application (which became the patent to be reissued). The "original application" includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 94 USPQ2d 1598 (Fed. Cir. 2010). Each limitation of the patent claims, which is omitted or broadened in the reissue claim, must be reviewed for this determination. This involves two sub-steps.
…
(B) If applicant did surrender subject matter in the original application prosecution, the examiner must then determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter.

With respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:

With respect to the “second step” in the recapture analysis, it is to be noted that if the reissue claim(s), are broadened with respect to the previously surrendered subject matter, then recapture will be present regardless of other unrelated narrowing limitations. In the decision of In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011), the Federal Circuit stated:

As pointed out above, where the reissue claims are narrower than the patent claims in all aspects, then there can never be recapture. If reissue claims are equal in scope to the patent claims, there is no recapture as to those reissue claims. Where, however, reissue claims are both broadened and narrowed as compared with the patent claims, the nature of the broadening and narrowing must be examined to determine whether the reissue claims are barred as being recapture of surrendered subject matter. If the claims are "broader than they are narrower in a manner directly pertinent to the subject matter… surrendered during prosecution" (Clement, 131 F.3d at 1471, 45 USPQ2d at 1166), then recapture will bar the claims. This narrowing/broadening vis-à-vis the patent is broken down into four possibilities that will now be addressed.

As pointed out above, where the reissue claims are narrower than the patent claims in all aspects, then there can never be recapture. If reissue claims are equal in scope to the patent claims, there is no recapture as to those reissue claims. Where, however, reissue claims are both broadened and narrowed as compared with the patent claims, the nature of the broadening and narrowing must be examined to determine whether the reissue claims are barred as being recapture of surrendered subject matter. If the claims are "broader than they are narrower in a manner directly pertinent to the subject matter… surrendered during prosecution" (Clement, 131 F.3d at 1471, 45 USPQ2d at 1166), then recapture will bar the claims. This narrowing/broadening vis-à-vis the patent is broken down into four possibilities that will now be addressed.

This situation is where the patent claims are directed to combination ABC and the reissue claims are directed to ABD (which is not an overlooked aspect). Element C was either a limitation added to AB to obtain allowance of the original patent, or was argued by applicant to obviate a rejection (or both) in the prosecution of the original application. Thus, addition of C (and/or argument as to C) has resulted in the surrender of any combination of A & B that does not include subject matter related to C. Element C is a surrender generating limitation. Element D, on the other hand, is not related to the surrendered subject matter. Thus, the reissue claim, which completely eliminates C, is broadened in an area related to the surrender. The narrowing of the claim by the addition of D will not save the claim from recapture because D is not related to the surrendered subject matter. If, however, element D were related to the surrendered subject matter and materially narrowed the claim compared to the canceled claim, recapture may be avoided. See example 4 below.

This situation is where the patent claims are directed to combination ABC and the reissue claims are directed to ABD (which is not an overlooked aspect). Element C was either a limitation added to AB to obtain allowance of the original patent, or was argued by applicant to obviate a rejection (or both) in the prosecution of the original application. Thus, addition of C (and/or argument as to C) has resulted in the surrender of any combination of A & B that does not include subject matter related to C. Element C is a surrender generating limitation. Element D, on the other hand, is not related to the surrendered subject matter. Thus, the reissue claim, which completely eliminates C, is broadened in an area related to the surrender. The narrowing of the claim by the addition of D will not save the claim from recapture because D is not related to the surrendered subject matter. If, however, element D were related to the surrendered subject matter and materially narrowed the claim compared to the canceled claim, recapture may be avoided. See example 4 below.

This situation is where the patent claims are directed to combination ABC and the reissue claims are directed to ABD (which is not an overlooked aspect). Element C was either a limitation added to AB to obtain allowance of the original patent, or was argued by applicant to obviate a rejection (or both) in the prosecution of the original application. Thus, addition of C (and/or argument as to C) has resulted in the surrender of any combination of A & B that does not include subject matter related to C. Element C is a surrender generating limitation. Element D, on the other hand, is not related to the surrendered subject matter. Thus, the reissue claim, which completely eliminates C, is broadened in an area related to the surrender. The narrowing of the claim by the addition of D will not save the claim from recapture because D is not related to the surrendered subject matter. If, however, element D were related to the surrendered subject matter and materially narrowed the claim compared to the canceled claim, recapture may be avoided. See example 4 below.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 2 – SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 2 – SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 2 – SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.

As another example, assume limitation C was added to application claims AB to obtain the patent to ABC, and now the reissue application presents claims to AC or AB broad C. Such reissue claims avoid the effect of the recapture rule because they are broader in a way that does not attempt to reclaim what was surrendered earlier. Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 994, 27 USPQ2d 1521, 1525 (Fed. Cir. 1993). Such claims are considered to be broader in an aspect not "germane to a prior art rejection," and thus are not barred by recapture. In re Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC broadened. The ABC broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC broadened is narrower than canceled claim subject matter AB, if C broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “ full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC broadened. The ABC broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC broadened is narrower than canceled claim subject matter AB, if C broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “ full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC broadened. The ABC broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC broadened is narrower than canceled claim subject matter AB, if C broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “ full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC broadened. The ABC broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC broadened is narrower than canceled claim subject matter AB, if C broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “ full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC broadened. The ABC broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC broadened is narrower than canceled claim subject matter AB, if C broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “ full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC broadened. The ABC broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC broadened is narrower than canceled claim subject matter AB, if C broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “ full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC broadened. The ABC broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC broadened is narrower than canceled claim subject matter AB, if C broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “ full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

In every reissue application, the examiner must first review each claim for the presence of broadening, as compared with the scope of the claims of the patent to be reissued. A reissue claim is broadened where some limitation of the patent claims is no longer required in the reissue claim; see MPEP § 1412.03 for guidance as to the nature of a "broadening claim." If the reissue claim is not broadened in any respect as compared to the patent claims, the analysis ends; there is no recapture.

In every reissue application, the examiner must first review each claim for the presence of broadening, as compared with the scope of the claims of the patent to be reissued. A reissue claim is broadened where some limitation of the patent claims is no longer required in the reissue claim; see MPEP § 1412.03 for guidance as to the nature of a "broadening claim." If the reissue claim is not broadened in any respect as compared to the patent claims, the analysis ends; there is no recapture.

Where a claim in a reissue application is broadened in some respect as compared to the patent claims, the examiner must next determine whether the broadening aspect(s) of that reissue claim relate(s) to subject matter that applicant previously surrendered during the prosecution of the original application (which became the patent to be reissued). The "original application" includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 94 USPQ2d 1598 (Fed. Cir. 2010). Each limitation of the patent claims, which is omitted or broadened in the reissue claim, must be reviewed for this determination. This involves two sub-steps.

• (A) One must first determine whether applicant surrendered any subject matter in the prosecution of the original application that became the patent to be reissued. If an original patent claim limitation now being omitted or broadened in the present reissue application was originally relied upon by applicant in the original application to make the claims allowable, the omitted limitation relates to subject matter previously surrendered by applicant. The reliance by applicant to define the original patent claims over the art can be by presentation of new/amended claims to define over the art, or an argument/statement by applicant that a limitation of the claim(s) defines over the art. The reliance by applicant can also be created by presentation of new/amended claims or arguments/statements to obviate rejections based on other grounds. See In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d 745 (Fed. Cir. 2022). To determine whether such reliance occurred, the examiner must review the prosecution history of the original application (of the patent to be reissued and any related application(s)) for surrender of claimed subject matter which may result in recapture. The prosecution history includes the rejections and applicant’s arguments made therein. With respect to whether applicant surrendered any subject matter, it is to be noted that a patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome, for example, an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). As pointed out by the court, “[i]t does not matter whether the examiner or the Board adopted a certain argument for allowance; the sole question is whether the argument was made.” Id. If applicant did not surrender any subject matter in the prosecution of the original application, the analysis ends and there is no recapture.
• (B) If applicant did surrender subject matter in the original application prosecution, the examiner must then determine whether any of the broadening of the reissue claims is in the area of the surrendered subject matter. The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable.

Where a claim in a reissue application is broadened in some respect as compared to the patent claims, the examiner must next determine whether the broadening aspect(s) of that reissue claim relate(s) to subject matter that applicant previously surrendered during the prosecution of the original application (which became the patent to be reissued). The "original application" includes the patent family’s entire prosecution history. MBO Laboratories, Inc. v. Becton, Dickinson & Co., 602 F.3d 1306, 94 USPQ2d 1598 (Fed. Cir. 2010). Each limitation of the patent claims, which is omitted or broadened in the reissue claim, must be reviewed for this determination. This involves two sub-steps.
…
The examiner must analyze all of the broadening aspects of the reissue claims to determine if any of the omitted/broadened limitation(s) are directed to limitations relied upon by applicant in the original application to make the claims allowable.

In Hester, supra, the Federal Circuit held that the surrender that forms the basis for impermissible recapture "can occur through arguments alone." 142 F.3d at 1482, 46 USPQ2d at 1649. For example, limitation A of the patent claims is omitted in the reissue claims and no other amendments are made. This omission provides a broadening aspect in the reissue claims, as compared to the claims of the patent. If the omitted limitation A was argued in the original application to make the application claims allowable over the art in the application, then the omitted limitation relates to subject matter previously surrendered in the original application, and recapture will exist. Accordingly, where claims are broadened in a reissue application, the examiner should review the prosecution history of the original patent file for recapture, even where the claims were never amended during the prosecution of the application which resulted in the patent. Note: The argument that the claim limitation defined over the rejection must have been specific as to the limitation relied upon, rather than a general statement regarding the claims as a whole. A general "boiler plate" sentence in the original application will not, by itself, be sufficient to establish surrender and recapture.

The following discussion addresses analyzing the reissue claims that have eliminated or modified a surrender generating limitation, as determined under step 2 analysis. In any broadening reissue application, the examiner will determine, under steps 1 and 2 of the recapture analysis on a claim-by-claim basis, whether the broadening relates to subject matter that was surrendered during the examination of the patent for which reissue is requested. Under step 3, it must be determined if such reissue claims are materially narrowed so as to escape the effects of the recapture doctrine. Note, examiners should consider any relevant preliminary applicant arguments of record as part of the recapture determination. See subsection VII, below, “REBUTTAL BY THE REISSUE APPLICANT,” which points out how the recapture finding of the Office can be rebutted by applicant, in some limited instances, by showing that material narrowing is present in the claims.

As pointed out above, where the reissue claims are narrower than the patent claims in all aspects, then there can never be recapture. If reissue claims are equal in scope to the patent claims, there is no recapture as to those reissue claims. Where, however, reissue claims are both broadened and narrowed as compared with the patent claims, the nature of the broadening and narrowing must be examined to determine whether the reissue claims are barred as being recapture of surrendered subject matter. If the claims are "broader than they are narrower in a manner directly pertinent to the subject matter… surrendered during prosecution" (Clement, 131 F.3d at 1471, 45 USPQ2d at 1166), then recapture will bar the claims. This narrowing/broadening vis-à-vis the patent is broken down into four possibilities that will now be addressed.

As pointed out above, where the reissue claims are narrower than the patent claims in all aspects, then there can never be recapture. If reissue claims are equal in scope to the patent claims, there is no recapture as to those reissue claims. Where, however, reissue claims are both broadened and narrowed as compared with the patent claims, the nature of the broadening and narrowing must be examined to determine whether the reissue claims are barred as being recapture of surrendered subject matter. If the claims are "broader than they are narrower in a manner directly pertinent to the subject matter… surrendered during prosecution" (Clement, 131 F.3d at 1471, 45 USPQ2d at 1166), then recapture will bar the claims. This narrowing/broadening vis-à-vis the patent is broken down into four possibilities that will now be addressed.

A patentee may file a reissue application to permit consideration of article of manufacture claims (not presented in the patent to be reissued) which are functional descriptive material stored on a computer-readable medium, where these article claims correspond to the process or machine claims which have been patented. The addition of these “article” claims will generally be considered to be a broadening of the invention (Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such addition must be applied for within two years of the grant of the original patent. See also MPEP § 1412.03 as to broadened claims.

If a claim is presented in a reissue application that omits, in its entirety, the surrender-generating limitation, that claim impermissibly recaptures what was previously surrendered, and that claim is barred under 35 U.S.C. 251. Note, however, subsection VII, below, “REBUTTAL BY THE REISSUE APPLICANT,” which points out how the recapture finding of the Office can be rebutted by applicant, in some limited instances, by showing that material narrowing is present in the claims.

In this situation, the ABCDE combination of the patent can be broadened (in the reissue application) to omit element C, and thereby claim the combination of ABDE, where element E (the surrender generating limitation) is not omitted. There would be no recapture in this instance. (If an argument had been presented as to element C defining over the art, in addition to the addition of element E, then the ABCDE combination could not be broadened to entirely omit element C and thereby claim combination of ABDE. This would be recapture; see the discussion above as to surrender and recapture based upon argument and see example 4 below.)

In this situation, the ABCDE combination of the patent can be broadened (in the reissue application) to omit element C, and thereby claim the combination of ABDE, where element E (the surrender generating limitation) is not omitted. There would be no recapture in this instance. (If an argument had been presented as to element C defining over the art, in addition to the addition of element E, then the ABCDE combination could not be broadened to entirely omit element C and thereby claim combination of ABDE. This would be recapture; see the discussion above as to surrender and recapture based upon argument and see example 4 below.)

In this situation, the ABCDE combination of the patent can be broadened (in the reissue application) to omit element C, and thereby claim the combination of ABDE, where element E (the surrender generating limitation) is not omitted. There would be no recapture in this instance. (If an argument had been presented as to element C defining over the art, in addition to the addition of element E, then the ABCDE combination could not be broadened to entirely omit element C and thereby claim combination of ABDE. This would be recapture; see the discussion above as to surrender and recapture based upon argument and see example 4 below.)

Examples of reissue application claims that are to be rejected for recapture under 35 U.S.C. 251 include:

Patent Claim – A claim in the patent for which reissue is being sought. Some court decisions use the phrase "original patent claim" for patent claim. Patent claims are the claims in effect as of the date of filing of the reissue application. See 37 CFR 1.173(g).

When an examiner determines that the broadening aspect(s) of that reissue claim relate(s) to subject matter that applicant previously surrendered during the prosecution of the original application (which became the patent to be reissued) in step 2 of the recapture analysis, the overlooked aspects inquiry may be applicable. See MPEP § 1412.01, subsection III.

• (A) Example (1) – Argument without amendment:

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 2 – SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 2 – SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 2 – SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 2 – SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.

Surrender Generating Limitation (SGL) or Surrendered Subject Matter – An SGL is a “limitation” presented, argued, or stated to make the claims patentable (in the original application) and “generates” the surrender of claimed subject matter. An SGL or surrendered subject matter can be created by presentation of new/amended claims to define the invention over the art or an argument/statement by applicant that a limitation of the claim(s) (including a limitation in an original claim) defines the invention over the art. A patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). An SGL or surrendered subject matter can also be created by presentation of new/amended claims or an argument/statement to obviate a rejection based on other grounds. In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d 745 (Fed. Cir. 2022).

Surrender Generating Limitation (SGL) or Surrendered Subject Matter – An SGL is a “limitation” presented, argued, or stated to make the claims patentable (in the original application) and “generates” the surrender of claimed subject matter. An SGL or surrendered subject matter can be created by presentation of new/amended claims to define the invention over the art or an argument/statement by applicant that a limitation of the claim(s) (including a limitation in an original claim) defines the invention over the art. A patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). An SGL or surrendered subject matter can also be created by presentation of new/amended claims or an argument/statement to obviate a rejection based on other grounds. In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d 745 (Fed. Cir. 2022).

Surrender Generating Limitation (SGL) or Surrendered Subject Matter – An SGL is a “limitation” presented, argued, or stated to make the claims patentable (in the original application) and “generates” the surrender of claimed subject matter. An SGL or surrendered subject matter can be created by presentation of new/amended claims to define the invention over the art or an argument/statement by applicant that a limitation of the claim(s) (including a limitation in an original claim) defines the invention over the art. A patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). An SGL or surrendered subject matter can also be created by presentation of new/amended claims or an argument/statement to obviate a rejection based on other grounds. In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d 745 (Fed. Cir. 2022).

Surrender Generating Limitation (SGL) or Surrendered Subject Matter – An SGL is a “limitation” presented, argued, or stated to make the claims patentable (in the original application) and “generates” the surrender of claimed subject matter. An SGL or surrendered subject matter can be created by presentation of new/amended claims to define the invention over the art or an argument/statement by applicant that a limitation of the claim(s) (including a limitation in an original claim) defines the invention over the art. A patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). An SGL or surrendered subject matter can also be created by presentation of new/amended claims or an argument/statement to obviate a rejection based on other grounds. In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d 745 (Fed. Cir. 2022).

Surrender Generating Limitation (SGL) or Surrendered Subject Matter – An SGL is a “limitation” presented, argued, or stated to make the claims patentable (in the original application) and “generates” the surrender of claimed subject matter. An SGL or surrendered subject matter can be created by presentation of new/amended claims to define the invention over the art or an argument/statement by applicant that a limitation of the claim(s) (including a limitation in an original claim) defines the invention over the art. A patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). An SGL or surrendered subject matter can also be created by presentation of new/amended claims or an argument/statement to obviate a rejection based on other grounds. In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d 745 (Fed. Cir. 2022).

Surrender Generating Limitation (SGL) or Surrendered Subject Matter – An SGL is a “limitation” presented, argued, or stated to make the claims patentable (in the original application) and “generates” the surrender of claimed subject matter. An SGL or surrendered subject matter can be created by presentation of new/amended claims to define the invention over the art or an argument/statement by applicant that a limitation of the claim(s) (including a limitation in an original claim) defines the invention over the art. A patent owner (reissue applicant) is bound by the argument that applicant relied upon to overcome an art rejection in the original application for the patent to be reissued, regardless of whether the Office adopted the argument in allowing the claims. Greenliant Systems, Inc. v. Xicor LLC, 692 F.3d 1261, 1271, 103 USPQ2d 1951, 1958 (Fed. Cir. 2012). An SGL or surrendered subject matter can also be created by presentation of new/amended claims or an argument/statement to obviate a rejection based on other grounds. In re McDonald, 43 F.4th 1340, 1348, 2022 USPQ2d 745 (Fed. Cir. 2022).

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 2 – SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.

As another example, assume limitation C was added to application claims AB to obtain the patent to ABC, and now the reissue application presents claims to AC or AB broad C. Such reissue claims avoid the effect of the recapture rule because they are broader in a way that does not attempt to reclaim what was surrendered earlier. Mentor Corp. v. Coloplast, Inc., 998 F.2d 992, 994, 27 USPQ2d 1521, 1525 (Fed. Cir. 1993). Such claims are considered to be broader in an aspect not "germane to a prior art rejection," and thus are not barred by recapture. In re Clement, 131 F.3d at 1470, 45 USPQ2d at 1165.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC broadened. The ABC broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC broadened is narrower than canceled claim subject matter AB, if C broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “ full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC broadened. The ABC broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC broadened is narrower than canceled claim subject matter AB, if C broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “ full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

Assume the combination AB was originally claimed in the application, and was amended in reply to a rejection to add element C and thus provide the combination ABC (after which the patent issued). A reissue application is then filed, and the reissue application claims are directed to the combination ABC broadened. The ABC broadened claims are narrowed in scope when compared with the canceled claim subject matter AB (e.g., the original claims), because of the addition of C broadened. Thus, the claims retain, in broadened form, the limitation argued/added to overcome a rejection in the original prosecution. In this instance, a recapture rejection can be made even though ABC broadened is narrower than canceled claim subject matter AB, if C broadened was “well known in the prior art” or otherwise fails to materially narrow the application claims to avoid recapture of the surrendered subject matter. In Mostafazadeh, the panel explained that “if reissue claims ‘materially narrow[ed]’ the claims relative to the original claims,” there is no impermissible recapture, where “ full or substantial recapture of the subject matter surrendered during prosecution is avoided.” See In re Mostafazadeh, 643 F.3d 1353, 1358, 98 USPQ2d 1639, 1642 (Fed. Cir. 2011) (emphasis added). In other words, “if the patentee modifies the added limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” In re Youman et al., 679 F.3d 1335, 1347, 102 USPQ2d 1862, 1870 (Fed. Cir. 2012). Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” Id. Any recapture of surrendered subject matter that was contained in prior art of the original prosecution forms the ceiling for determining whether the modified limitation is materially narrowing. Id.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 2 – SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.

The modification of a surrender generating limitation (SGL) is broken down into several possibilities that will be addressed below. Situation 2 – SGL modified but not entirely eliminated: If the SGL has not been entirely eliminated from a claim in the reissue application (i.e., the amendment narrowing the claim or the argued limitation has not been entirely eliminated from the claim in the reissue application), but rather it has been made less restrictive in the reissue application claim (such that the claim is broadened), the analysis (based on In re Mostafazadeh, 643 F.3d 1353, 98 USPQ2d 1639 (Fed. Cir. 2011) and In re Youman, 679 F.3d 1335, 102 USPQ2d 1862 (Fed. Cir. 2012)) is as follows: It must be determined what portion of the amendment or argued limitation has been retained, and whether the retained portion materially narrows the original claims to avoid recapture. See Youman, 679 F.3d at 1346 n.4, 102 USPQ2d at 1870 n.4 ("'original claims' are defined as 'the claims before surrender'"). “[I]f the patentee modifies the added [or argued] limitation such that it is broader than the patented claim yet still materially narrows relative to the original claim, the recapture rule does not bar reissue.” Id. at 1347, 102 USPQ2d at 1870. If the retained portion of the modified limitation is well known in the prior art, then impermissible recapture exists, even in a case where a further limitation which is not related to the surrendered subject matter (i.e., a limitation that does not materially narrow the claims) has been added to define the claims over the art. Mostafazadeh, 643 F.3d at 1361, 98 USPQ2d at 1644. Even if the retained portion of the modified limitation is not well known, there may still be impermissible recapture. For example, “[w]here the modified limitation was contained within the prior art relied upon by the examiner in the original prosecution … the limitation is not materially narrowing.” See Youman, 679 F.3d at 1347, 102 USPQ2d at 1870.

In every reissue application, the examiner must first review each claim for the presence of broadening, as compared with the scope of the claims of the patent to be reissued. A reissue claim is broadened where some limitation of the patent claims is no longer required in the reissue claim; see MPEP § 1412.03 for guidance as to the nature of a "broadening claim." If the reissue claim is not broadened in any respect as compared to the patent claims, the analysis ends; there is no recapture.

The limitation omitted in the reissue claim(s) was added in the original application claims for the purpose of making the application claims allowable over a rejection or objection made in the application. Even though applicant made no argument on the record that the limitation was added to obviate the rejection, the nature of the addition to the claim can show that the limitation was added in direct reply to the rejection. This too will establish the omitted limitation as relating to subject matter previously surrendered. To illustrate this, note the following example:

Patent Claim – A claim in the patent for which reissue is being sought. Some court decisions use the phrase "original patent claim" for patent claim. Patent claims are the claims in effect as of the date of filing of the reissue application. See 37 CFR 1.173(g).

Patent Claim – A claim in the patent for which reissue is being sought. Some court decisions use the phrase "original patent claim" for patent claim. Patent claims are the claims in effect as of the date of filing of the reissue application. See 37 CFR 1.173(g).

Recapture – A doctrine based upon the error requirement in 35 U.S.C. 251 that prevents a reissue applicant from claiming subject matter surrendered during the prosecution of the original application.

The following discussion addresses analyzing the reissue claims that have eliminated or modified a surrender generating limitation, as determined under step 2 analysis. In any broadening reissue application, the examiner will determine, under steps 1 and 2 of the recapture analysis on a claim-by-claim basis, whether the broadening relates to subject matter that was surrendered during the examination of the patent for which reissue is requested. Under step 3, it must be determined if such reissue claims are materially narrowed so as to escape the effects of the recapture doctrine. Note, examiners should consider any relevant preliminary applicant arguments of record as part of the recapture determination. See subsection VII, below, “REBUTTAL BY THE REISSUE APPLICANT,” which points out how the recapture finding of the Office can be rebutted by applicant, in some limited instances, by showing that material narrowing is present in the claims.

For patents issued on an application subject to the pre-AIA prior art regime (pre-AIA patents), a patentee may file a reissue application to permit consideration of process claims which qualify for pre-AIA 35 U.S.C. 103(b) treatment if a patent is granted on an application entitled to the benefit of pre-AIA 35 U.S.C. 103(b), without an election having been made as a result of error without deceptive intent. See MPEP § 2147. This is not to be considered recapture. The addition of process claims, however, will generally be considered to be a broadening of the invention (Ex parte Wikdahl, 10 USPQ2d 1546 (Bd. Pat. App. & Inter. 1989)), and such addition must be applied for within two years of the grant of the original patent, or in an appropriate continuing broadening reissue application claiming the benefit of a prior-filed broadening reissue application filed within two years of the grant of the original patent. See also MPEP § 1412.03 as to broadened claims.