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Archive for May 9th, 2012

CAFC Again Recalibrates Recapture Doctrine

Posted On: May. 9, 2012   By: Scott A. McKeown
recapture ruleIn re Youman Faults BPAI Recapture Analysis

Back in 2010, the BPAI rejected certain claims in Ex parte Youman as attempting to recapture previously surrendered subject matter via a patent reissue application. This case was noteworthy for several reasons, not the least of which was its 10+ year pendency before reaching a Board decision. A link to the earlier BPAI decision is found (here).

As a reminder, Youman sought to broaden certain means-plus-function elements of his issued patent, and modify language relating to the selection of displayed characters of an electronic program guide via a television remote control.

The originally issued claims recited a “selection means…cycling forward and backward” through displayed characters. This feature was added to distinguish over the art of record during the prosecution of the underlying patent application. In the patent reissue application (broadening), this language was broadened to using a wireless remote control for “changing from a first to a second character.” This change was rejected by the BPAI as an attempt to recapture previously surrendered subject matter.

In rejecting the claim as recapturing previously surrendered subject matter, the BPAI relied upon some of the same MPEP language (”overlooked aspects”) later criticized by the CAFC in In re Mostafazadeh. In its most recent consideration of the recapture doctrine, the CAFC focused on the claim language that must be analyzed in the third prong of the recapture test.  Read the rest of this entry »