Rule against recapture during reissue proceedings can apply where, during  reissue prosecution, process claim limitations are removed from originally issued product-by-process claims and the process imparts novel structural characteristics to the claimed product. 

The Federal Circuit affirmed the district court’s holding that the challenged claims violated the rule against recapture where the broadest claims of the original patent were product-by-process claims and the reissue claims omitted the process limitation.  In reaching this conclusion, the court analyzed the prosecution history “to determine whether an objective observer viewing the prosecution history would conclude that the purpose of the patentee’s amendment or argument concerning a particular claim was for reasons of patentability.”  Slip Op. at 10, quoting Kim v. ConAgra Foods, Inc., 465 F.3d 1312, 1323 (Fed. Cir. 2006). 

In so holding, the Federal Circuit rejected the patentee’s argument that since the addition of a novel process does not impart patentability in an otherwise anticipated product, the addition of a process limitation cannot be for reasons of patentability.  Specifically, the court recognized that where a process imparts unique structural characteristics in a product-by-process claim, that process limitation and the differences imparted on the resulting product are relevant to patentability.  Where the patentee argued during prosecution that the process limitation did impart novel structural characteristics on the claimed product, that limitation can support a finding that the limitation was made for purposes of patentability.  As such, the patentee’s claiming of that same process absent the process limitation would violate the rule against recapture. 

A copy of the opinion can be found here.