In Re MCDONALD

During prosecution of U.S. Patent No. 8,280,901 (relating methods and systems related to the display of primary and secondary search results in response to search queries), the examiner rejected claims that did not recite a “processor” for conducting the claimed searches as being directed to patent-ineligible subject matter under 35 U.S.C. § 101. In response, Mr. McDonald amended those claims, adding a “processor” to certain claim limitations and the examiner withdrew the 101 rejection. McDonald filed a continuation application, which ultimately issued as U.S. Patent No. 8,572,111 with claims that included “processor” limitations like those added to the parent application to overcome the § 101 patent eligibility rejection. McDonald filed a reissue application seeking to broaden the claims of the ’111 patent, removing the previously added “processor” limitations. The Board not only rejected the reissue claims as being based on a defective reissue declaration as lacking an error correctable by reissue, but also rejected them as impermissibly attempting to recapture subject matter that the patentee intentionally surrendered during prosecution to overcome a § 101 rejection. The Board denied McDonald’s request for rehearing, and McDonald appealed. The CAFC rejects the argument that the recapture rule leaves a unique gap that would permit the recapture of claim scope surrendered in response to § 101 rejections. The CAFC notes that the common thread through their prior decisions remains whether there is an intentional surrender of claim scope. The fact that many prior cases involved prior art rejections does not preclude the application of the recapture rule to amendments made for other reasons. Because McDonald deliberately (not erroneously or inadvertently) added the “processor” limitations during prosecution of the original claims to overcome the § 101 rejection, the recapture rule does not permit him to now remove those limitations to broaden his claim. With respect to the defective reissue declaration, the CAFC finds that McDonald’s argument on the defectiveness of the declaration rises and falls with his argument on the violation of the recapture rule. Accordingly, the CAFC affirms.

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