## Facts

- Patent owners obtained a patent directed to an electronic television program guide with a “By Title” display listing programs alphabetically and allowing title searching.
- During original prosecution, the PTO rejected broad claims as obvious over prior art teaching electronic guides and selecting titles from alphabetical lists via keyboard entry.
- To obtain allowance, the applicants narrowed the claims, surrendering some subject matter related to the selection feature.
- Within two years of issuance, the applicants filed a reissue application under 35 U.S.C. § 251 seeking broader claims covering selection using non-alphanumeric remote-control keys (e.g., cycling through characters).
- The examiner finally rejected reissue claims as impermissibly recapturing surrendered subject matter.
- The Board affirmed the rejection using the recapture rule’s three-step framework and concluded no exception applied.
- The applicants appealed to the U.S. Court of Appeals for the Federal Circuit.

## Issues

1. Whether the Board correctly applied the § 251 recapture rule in rejecting the reissue claims as reclaiming subject matter surrendered during original prosecution.
2. Whether partially broadened (“intermediate”) reissue claims are barred whenever they broaden in a way that touches surrendered subject matter, or instead require analysis of material narrowing in other limitations.

## Decision

- The Federal Circuit vacated the Board’s decision and remanded.
- The court held the Board misapplied the recapture rule by treating any broadening toward surrendered subject matter as effectively dispositive, without properly evaluating whether other limitations materially narrowed the claims.
- The court directed the Board to apply the recapture doctrine through a claim-by-claim, limitation-focused analysis consistent with the three-step test.
- Judge Lourie dissented and would have affirmed the Board’s recapture determination.

## Legal Principles

- Under 35 U.S.C. § 251, a patentee may not obtain reissue claims that recapture subject matter surrendered to overcome a prior art rejection during original prosecution.
- Recapture is analyzed through a three-step inquiry:
  - Determine whether the reissue claims are broader than the issued claims in any respect.
  - If broader, determine whether the broadening relates to surrendered subject matter.
  - If it does, determine whether the reissue claims are materially narrowed in other respects so that they do not, overall, improperly reclaim what was surrendered.
- The recapture analysis must be conducted limitation by limitation, separating broadened aspects tied to surrender from added or changed limitations that may meaningfully restrict claim scope on other grounds.
- There is no categorical rule that partially broadened reissue claims are barred whenever they implicate surrendered subject matter; the net effect depends on whether material narrowing avoids recapture.

## Conclusion

The Federal Circuit required the Board to reassess the reissue claims under a structured, limitation-specific application of the three-step recapture test, rejecting the Board’s approach that effectively treated any re-broadening toward surrendered subject matter as a per se bar.


In re Youman, 679 F.3d 1335 (Fed. Cir. 2012)