Federal Circuit Snubs Applicant’s Attempt to ‘Recapture’ Ineligible Subject Matter via Reissue

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the Patent Trial and Appeal Board (PTAB) correctly rejected a patent applicant’s reissue claims as “impermissibly attempting to recapture subject matter that the patentee intentionally surrendered during prosecution.” The opinion, authored by Judge Cunningham, explained that John Bradley McDonald, who is named as the inventor on U.S. Patent No. 8,572,111, amended claims 1-9 and 19-21 following an examiner’s rejection of them as patent ineligible, since they were not tied to a processor for conducting the claimed searches. McDonald added “a processor” to certain claim limitations in order to meet the requirement for tying the methods described by the patent to a particular machine and the examiner ultimately withdrew the Section 101 rejection.Read More