Affirming a decision by the Board of Patent Appeals and Interferences (the Board), the U.S. Court of Appeals for the Federal Circuit concluded that the rejection of an applicants’ reissue application for semiconductor packaging based on improper recapture of previously surrendered subject matter was correct. In re Shahram Mostafazadeh and Joseph O. Smith, Case No. 10-1260 (Fed. Cir., May 3, 2010) (Dyk, J.).

The applicants were issued a patent with a claim directed to “[a]n integrated circuit package comprising: (a) a lead frame comprising . . . a plurality of elongated leads … including a circular portion formed as an attachment pad.” The claim term “circular portion formed as an attachment pad” limitation was added during prosecution. The applicants argued to the examiner that “neither the circular pads … nor their attendant benefits [were] disclosed or suggested by [the prior art].” Within the statutory two-year period, the applicants filed an application to reissue the patent with 12 new claims, alleging that the original claims were partially inoperative because the circular-attachment-pad limitation was unduly limiting. The reissue claims retained the requirement of “an attachment pad” and added limitations defining a bus bar. However, the circular shape limitation was omitted. After the Board affirmed the examiner’s rejection based on recapture, application appealed.

The Federal Circuit, citing to In re Clement, applied the three-part recapture test, noting that there was no dispute regarding the first and second parts of the test, i.e., that “the reissue claims are broader than the patented claims” and “the broader aspects relate to the surrendered subject matter (i.e., the circular-attachment-pad limitation).” The Court thus focused on the third part of the recapture analysis: determining “whether the surrendered subject matter has crept into the reissue claim.”

The Court noted that a limitation added during prosecution to overcome prior art cannot be entirely eliminated on reissue. However, an added limitation may be modified, so long as the limitation continues to materially narrow the claim scope relative to the surrendered subject matter such that the surrendered subject matter is not entirely or substantially recaptured. The Court found the Board’s analysis (expressed in terms of broadening or narrowing of the limitation) to be “perplexing,” explaining that it was to clearer to speak in terms of broadening or narrowing of the claims.

Nevertheless, the Court affirmed the U.S. Patent and Trademark Office’s rejection, finding that although the reissue claim retained the attachment pad limitation, that limitation was related to the surrendered subject matter and, as posed in the reissue claims, the limitation was not materially narrowing because the use of an attachment pad per se was well known in the prior art. The Court further concluded that the other narrowing limitations in the reissue claims were unrelated to the surrendered subject matter and thus insufficient to avoid the rule against recapture.