Recapturing subject matter surrendered from patent claim not allowed. IN RE: GENERAL ELECTRIC

A patent is a set of exclusive rights granted to the inventor of a new invention. A patent is not automatically granted to an inventor. To be granted a patent in the United States an inventor must file a patent application with the United States Patent and Trademark Office. The USPTO will assign an examining attorney to review the patent application and ensure that all appropriate requirements are met. Patent prosecution is the formal name for the patent application review process. During patent prosecution there is a certain amount of back and forth between the applicant and the examining attorney. The applicant will want to claim as much as possible in the patent and the examining attorney is tasked with finding reasons to limit the claims.

The patent prosecution process is so nuanced and complex that there is a special separate bar examination that attorneys must pass before they are allowed to represent clients seeking patents. This separate bar examination is necessary because every step of the patent prosecution process has consequences. A patent application that is amended to avoid prior art cannot later be amended again to recapture the subject matter that was surrendered. This becomes especially relevant in reissue patent applications. Reissue applications are allowed to correct an error in a patent which has been granted, namely that the patent application did not claim everything to which he was entitled. However, no new matter shall be introduced into the application for reissue. 35 U.S.C. § 251(a).

IN RE: GENERAL ELECTRIC COMPANY, 2019-1112, 2019-1113, 2019-1115 (C.A.F.C. 2019) is a case which illustrates a patent application being denied for attempting to recapture surrendered subject matter. The case begins with a patent granted August 2, 2011. That patent was directed to synthetic jet enhanced convection cooling of component enclosures, which encompass a heat-generating element. It describes using a synthetic jet assembly to direct jet fluid
toward or onto the external surface of such enclosures. During prosecution of the original application, the examiner rejected the original claims as anticipated under 35 U.S.C. § 102(b) or obvious under 35 U.S.C. § 103(a) three times. The patent application was then amended to avoid the prior art and the patent was allowed.

On August 1, 2013, General Electric filed a reissue application, which the patent examiner rejected because it attempted to recapture subject matter that was surrendered to avoid the prior art in the original application. In response, General Electric filed three divisional applications. The examiner rejected these patent applications also and General Electric appealed to the Patent Trial and Appeal Board. The Board rejected the divisional patent applications as well because the reissue claims were broader than the original patent. The Board came to this conclusion because limitations on the patent claims in the original patent were absent in the reissue applications. General Electric then appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit affirmed the Board’s decision. In its opinion the Federal Circuit noted that the recapture rule does not apply to reissue claims directed to “overlooked aspects” such as “additional inventions /embodiments /species not originally claimed.” Overlooked aspects, however, are not merely incidental features of the originally
claimed invention. Rather, they are distinct elements which “were never claimed and thus never surrendered.” The Federal Circuit concluded that the reissue claims were broader than the original patent and that the limitations in the reissue claims cannot be said to be an overlooked aspect of the original patent.

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