Prosecution History Invokes Rule Against Recapture

In North American Container, Inc. v. Plastipak Packaging, Inc., et al. (Fed. Cir., July 14, 2005), the court invaildated reissue claims 29-42 of U.S. Reissue Patent 36,639 (left) for violating the rule against recapture.

During prosecution of the parent application, the originally-filed claims were rejected as obvious over Dechene (middle) in view of Jakobsen (right). In response to the original rejection, the applicant amended his claims by specifying that the shape of the inner walls in his invention was "generally convex." The applicant also distinguished the claimed invention from the prior art by making the following argument:

The independent Claims 15, 24 and 33 have been amended to refer to the convex
nature of the inner wall portions of the central re-entrant portion (i.e. those
wall portions disposed inwardly of the lowermost points of the base upon which
the container rests) . . . . The shape of the base as now defined in the claims
differs from those of both the Dechenne patent [middle], wherein the corresponding wall portions 3 are slightly concave . . . and the Jakobsen patent [right], wherein the
entire re-entrant portion is clearly concave in its entirety. This is also
generally true of all of the prior art known to the applicant and/or referred to
by the examiner.

During reissue, the applicant added new claims which deleted the claim language "inner wall portions are generally convex" because, according to the patentee, "the invention is not limited to such a structure." Protests were filed under 37 C.F.R. § 1.291(a) by manufacturers and
distributors of bottles against the newly added claims, alleging violation of the recapture rule on the ground that "subject matter which the reissue applicant has intentionally removed from the reissue claims . . . is the same subject matter that was introduced during prosecution of the original patent in order to distinguish over the prior art." However, the examiner rejected the protests, stating that the reissue claims "are considered to be of intermediate scope and the deleted language such as that directed to the convexity of the inner wall . . . are not considered to be critical limitations." ’ The examiner then allowed the newly added claims and U.S. Patent 5,072,841 patent was reissued as Reissue Patent 36,639.

Under the recapture rule, a patentee is precluded "from regaining the subject matter that he surrendered in an effort to obtain allowance of the original claims." The Federal Circuit applies the recapture rule as a three-step process:

1. first, determine whether, and in what respect, the reissue claims are broader in scope than the original patent claims;
2. next, determine whether the broader aspects of the reissue claims relate to subject matter surrendered in the original prosecution; and
3. finally, 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.

In applying that process in this case, the court did not give any deference to the Examiner's analysis of criticality:

The examiner’s basis for denying the protests filed against the reissue claims,
i.e., that the claims "are considered to be of intermediate scope and the
deleted language . . . directed to the convexity of the inner wall . . . are not
considered to be critical limitations," demonstrates the examiner’s inattention
to the rule against recapture. For the reasons set forth above, the deleted
language was critical in that it allowed the applicant to overcome the Dechenne
reference. Moreover, that the reissue claims, looked at as a whole, may be of
"intermediate scope" is irrelevant. As the district court recognized, the
recapture rule is applied on a limitation-by-limitation basis, and the
applicant’s deletion of the "generally convex" limitation clearly broadened the
"inner wall" limitation. Thus, reissue claims 29-42 are invalid for violating
the rule against recapture.