mistakesLast Friday, In re Mostafazadeh was argued before the CAFC (argument here). The case explored the boundaries of the patent reissue recapture rule. At dispute in the appeal was whether or not the third step of the rule, as outlined in MPEP 1412.02, is tied to the “critical limitation” (i.e., originally surrendered subject matter) or not. {10:30 min. mark}

The three step analysis of In re Clement is as follows:

(1) first, we determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims; 

(2) next, we determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and

(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. (emphasis added)

In considering the case, the CAFC found both the MPEP discussion of step (3) and BPAI decision on this point to be confusing. {14.50 min mark}

During original prosecution, the Patentee cancelled claims to a semiconductor package having leads and a bus bar. To overcome art showing a package having leads and a bus bar, these claims were cancelled in favor of claims directed to a semiconductor package having circular pads. In their patent reissue application, the circular pad feature was removed, and the claims cancelled during original prosecution were re-presented, with the bus bar feature now requiring exposure at the bottom of the package. Due to the removal of the circular pad feature steps (1) and (2) of the recapture test were seemingly satisfied.

With respect to step (3) the Patentee argued that the new reissue claims required bus bars that were exposed at the bottom of the package, and thus materially narrowed relative to the cancelled claims (i.e., surrendered subject matter). In essence, the Patentee argued that the claim scope surrendered was limited to the scope of the cancelled claims only, and not an intermediate scope that would have otherwise been available. (such as a package with exposed bus bars).

The PTO argued that the “other respects” aspect of step (3) cannot relate to the disavowed element (bus bars), but instead the broadening (removal of circular pads). The PTO cited the following example of the MPEP to illustrate their point:

Assume that, in the original prosecution of the patent, applicant claimed a method of making a glass lens, where the ion implantation step used a molten bath to diffuse ions into the lens, and that step had to be amended to recite a pressure of 50-60 PSI and temperature between 150-200 degrees C – to define over the art. That pressure and temperature range-set is “frozen” in place for any molten bath ion implantation claim, and it cannot be deleted or broadened by reissue. However, if in the original application, applicant had failed to claim a disclosed embodiment to plasma ion implantation (i.e., using a plasma stream rather than a molten bath to provide the ions), that is a proper 35 U.S.C. 251 error, which can be corrected by reissue. Applicant can, in a reissue application, add a set of claims to plasma ion implantation, without including the “50-60 PSI and temperature between 150-200 degrees C” limitation. The “50-60 PSI – 150-200 degrees C limitation” is totally irrelevant to plasma implantation and is clearly wrong for the plasma species/embodiment, as opposed to being right for the molten bath species/embodiment.

At the close of the argument, the CAFC seemed to understand the MPEP. However, both the solicitor and the judges agreed that the explanation in the MPEP was imprecise. The solicitor indicated that the discussion of step (3) would greatly benefit from the decision in this case. {25.30 min. mark}.

Stay tuned.