No Recaputre if / Reissue Claim Narrower / Than Original

In re Youman and Morris, [2011-1136] (May 8, 2012) [PROST, Lourie Schall], the Federarl Circuit reversed the BPAI's affirmance of the rejection of claims in a reissue application, because the Board misapplied the recapture rule.
DISCUSSION:  During a broadening reissue of U.S. Patent No. 5,629,733 directed to an electronic television programming guide. In the original patent, the applicant had added language about cycling forward and backward through a plurality of alphanumeric characters to distinguish over the prior art, which allowed entry of characters from a keyboard.  In the reissue, the patentee sought to replace the "cycling" limitation with a "changing" limitation, which the Examiner found would violate the recapture rule.  The BPAI affirmed finding that a reissue claim can escape the recapture rule only through other materially narrowing limitations "if the narrowing limitation is directed to one or more ‘overlooked aspects’ of the invention," but concluded that the aspects in which the claim was narrower were not overlooked in the original prosecution.
The recapture rule limitation on reissue is based upon the fact that cancellation or amendment of the original claim in order to overcome prior art is a deliberate action that necessarily excludes the inadvertence or mistake contemplated by the statute’s error requirement. There is a three part test to determine whether reissue claims violate the recapture rule:

1. First determine whether and in what aspects the reissue claim is broader that the original claims.
2. Determine whether the broader aspects of the reissue claim relate to surrendered subject matter.
3. Determine whether surrendered subject matter has crept into the reissue claim.

The Federal Circuit found that the Board erred in its application of the third step, failing to distinguish between in-stances where an added limitation has been modified versus instances where an added limitation is eliminated in its entirety.   The Federal Circuit said that the cycling limitation has not been eliminated, rather it was broadened to changing.  The Federal Circuit said that such a broadening modification must be evaluated to determine if it materially narrows relative to the original claim such that surrendered subject matter is not entirely or substantially recaptured.
The Federal Circuit instructed that the starting point for this analysis is not the patented y measuring material narrowing relative to the original claim, which was deliberately surrendered during the original prosecution, we are ensuring that the patentee is unable to recapture what it surrendered deliberately, but allowing room for error, as required by the reissue statute."  Certainly one might err without deceptive intention in adding a particular limitation where a less specific limitation regarding the same feature would have been sufficient to render the claims patentable over prior art. Thus, the Federal Circuit said that the proper analysis is to determine whether the modified limitation was contained in the prior art relied on by the examiner in the original prosecution -- if it is, then the limitation is not materially narrowing.

Minkin v. Gibbons, P.C., [2011-1178] (May 4, 2012) [REYNA, Rader, O'Malley] The Federal Circuit affirmed summary judgment for a patent law firm because the former client did not show that its hypothetical alternate claim was ptaentable.
DISCUSSION:  Minkin claimed that his patent lawyers committed malpractice in failing to get broad enough claims in U.S. Patent No. 6,012,363.  However, Minkin made no attempt to show that his proposed alternate claim would have been allowed by the U.S. Patent Office.  The district court granted summary judgment, finding that Minkin's expert "utterly fails to provide any sort of analysis with respect to the non-obviousness of his claims and give s no opinions or explanation showing why his claims would not be deemed obvious."  The Federal Circuit agreed, stating that "providing no evidence of nonobviousness failed to establish a genuine dispute of material fact as to the patentability of its alternate claims."