Board decision that reissue claims improperly recapture surrendered subject matter affirmed

In Re: General Electric Company (“GE”)

Docket No. 2019-1112, -1113, -1115
October 18, 2019

Brief Summary: Board decision that reissue claims improperly attempted to recapture surrendered subject matter affirmed (e.g., the attachment limitation was added during prosecution “in response to the examiner’s rejections”, and the reissue claims “eliminate the attachment-related limitations entirely”).

Summary: GE appealed three PTAB decisions regarding resissue applications (§ 251) of US 7,990,705 directed to “a synthetic jet assembly”, each decision rejecting “the reissue claims as an attempt to recapture subject matter intentionally surrendered during prosecution of the ‘705 patent.” The PTAB “found (1) that the reissue claims were broader than the issued claims because the reissue claims can read on a jet assembly unattached to a sidewall whereas the ‘705 patent’s claims cannot; (2) that the broadened aspect of the reissue claims relates to surrendered subject matter, i.e., an unattached jet assembly; and (3) that the surrendered subject matter had crept into the reissue claims because the attachment-related limitations added during prosecution were entirely absent from the proposed reissue claims”, and denied GE’s request for rehearing. The FC panel explained that “[a]n inventor may not…recapture through reissue subject matter that was surrendered to obtain allowance of the issue claims” which is decided by determining: 1) “whether and in what aspect the reissue claims are broader than the patent claims”; 2) “whether the broader aspects of the reissue claims related to the surrendered subject matter”; and, 3) “whether the surrendered subject matter has crept into the reissue claim” (In re Mostafazadeh; In re Youman; In re Clement), and that “[v]iolation of the rule against recapture may be avoided…if the reissue claims ‘materially narrow’ the [original] claims…such that full or substantial recapture of the subject matter surrendered during prosecution is avoided” (In re Mostafazadeh; N. Am. Container, FC 2005 (“The narrowing must, therefore, relate to the surrendered subject matter.”)) In addition, this opinion explains that this rule “does not apply to reissue claims directed to ‘overlooked aspects’ such as ‘additional inventions / embodiments / species not originally claimed’” (“not merely incidental features” but “distinct elements which ‘were never claimed and thus never surrendered’” (In re Mostafazadeh, In re Youman)). The FC panel agreed with the PTAB because the attachment limitation was added during prosecution “in response to the examiner’s rejections”, and the reissue claims “eliminate the attachment-related limitations entirely” which “expands the scope of the claims to cover unattached jet assemblies which were surrendered during prosecution.” It also concluded that “[a]ny narrowing accomplished” by the “additional narrowing limitations” are “unrelated to the surrendered subject matter and therefore insufficient to avoid recapture” (In re Mostafazadeh) and “within the scope of at least one original claim of the ‘705 patent and therefore, cannot be said to be an ‘overlooked aspect’” (the “subcombination is not an overlooked aspect of the invention”). Thus, the Board decision was affirmed.

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