In this appeal from the Northern District of Georgia, the Federal Circuit will consider whether the district court erred in its application of the recapture rule to Barco’s reissue claims. During prosecution of the original application, the examiner rejected several claims as obvious in light of the Mochizuki reference. The district court found that Barco clearly and unambiguously disclaimed the subject matter subject to the rejection, and held that Barco’s reissue claims violated the recapture rule.
Barco argues that it merely corrected the examiner’s misreading of the prior art and did not disclaim the subject matter. Barco further argues that the Court erred by extending the scope of any surrender to reissue claims that were not implicated by Barco’s discussion of Mochizuki during prosecution. EIZO argues that the broader aspects of the reissue claims relate directly to subject matter surrendered during the original prosecution. It asserts that Barco relied on specific limitations to distinguish its claimed invention and overcome the examiner’s obviousness rejection and then recaptured the claim scope by securing reissue claims that omitted the limiting features.