mulligan1ass=”alignleft size-full wp-image-2028″ title=”mulligan1″ src=”” alt=”mulligan1″ width=”225″ height=”225″ />All hackers err… golfers know there are both appropriate and inappropriate times to take a mulligan.  When is it OK to take a mulligan via reissue?  The 3-step test to determine whether the recapture rule prohibits a mulligan in reissue has been well-established since In re Clement[1] was decided in 1997.  As set out by the MPEP in § 1412.02, the 3-step test requires an examiner to make the following determinations:

(1) whether, and in what respect, the reissue claims are broader in scope than the original patent claims; (2) whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and (3) 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.  {Emphasis added.}

You may recall the 2003 Board of Patent Appeals and Interferences (“Board”) precedential decision In re Eggert[2].  In Eggert, the Board concluded that the “materially narrowed” language of step (3) permitted a reissue claim reciting a claim element having an intermediate scope between the original scope of the claim element and the scope of that element as amended to overcome prior art.  For example, according to Eggert, if an original claim recited an apparatus comprising, among other elements “a fastener,” and if the allowed claim recited “a screw” to overcome prior art that included a nail, then Eggert permits a reissue claim reciting “a threaded fastener” as claiming an intermediate scope between “a fastener” and “a screw.” In 2005, the Federal Circuit decided North American Container v. Plastipak Packaging, Inc.[3] The reissue claims in North American Container completely omitted a claim element relied on during the original prosecution of the subject patent to overcome prior art.  In deciding that the reissue claims violated the recapture doctrine, the Federal Circuit stated that, even if the reissue claims when looked at as a whole may be of “intermediate scope,” the recapture rule must be applied on a limitation-by-limitation basis such that a limitation relied on during prosecution to overcome prior art may not be omitted without triggering the recapture rule.[4] Notably, many commentators believe that North American Container may be inconsistent with but does not expressly overrule Eggert.  This is because, based on the facts of North American Container, the Federal Circuit did not address the “intermediate scope” issue of Eggert.  Instead, in North American Container, the limitation relied on during prosecution was omitted in its entirety.  A few Board decisions and dissenting/concurring opinions distinguish North American Container from Eggert on this basis.[5] Nonetheless, the Board’s decisions subsequent to North American Container reflect that the Board is applying North American Container and not its own precedent, Eggert.  That is, the Board is disallowing any claim reciting a claim element which is broader (even if the element is broadened to an intermediate scope) than the claim elements original scope where the claim element was narrowed during prosecution to overcome prior art.[6] Thus, if “a fastener” was recited by an original claim, and “a screw” were recited at allowance to overcome a prior art reference that includes a nail, then the Board has concluded that a reissue claim reciting “a threaded fastener” constitutes impermissible recapture. Interestingly, of the thirty-eight Board decisions we reviewed addressing the recapture doctrine, ten of the cases were reversed.[7] Eight of the ten reversals turned on whether the claimed subject matter at issue was properly shown by the examiner as being surrendered during the original prosecution of the application which matured into the subject patent. Thus, it appears that an appellant’s best hope in obtaining a reversal on appeal is to rebut the examiner’s finding of surrendered subject matter.  Stay tuned for a follow-up posting that examines the Board’s current view on surrendered subject matter.

[1] 131 F.3d 1464 (Fed. Cir. 1997). [2] 67 USPQ2d 1716 (Bd Pat. App. & Int. 2003). [3] 415 F.3d 1335 (Fed. Cir. 2005). [4] Id at 1350. [5] See e.g., Appeal 2007-3925 and Appeal 2007-0700.  These appeal decisions can be found using the link provided in footnote 7. [6] Appeal 2007-0040.  This appeal decision can be found using the link provided in footnote 7. [7] We searched for the Board’s recapture decisions decided after North American Container using the USPTO’s database which can be found at: