On Aug. 10, 2022, the Federal Circuit issued a precedential opinion that provides helpful reminders on the issue of recapture, as well as dos and don’ts for prosecution and reissue applications. See In re McDonald, No. 2021-1697 (Fed. Cir. Aug. 10, 2022).

Back in 2008, a patent application was filed for methods and systems related to the display of search results. Original claims 1-9 and 19-21 of that application did not recite a “processor” for performing the searches, and those claims were rejected as violating 35 U.S.C. §101. The applicant, McDonald, then amended those claims by adding a “processor” and argued that eligibility was not an issue because the methods were tied to the processor, which imposed “meaningful limits in the scope of claims 1 and 19.” The examiner agreed, withdrew the §101 rejections, and the application issued as U.S. Patent No. 8,280,901. Before issuance of the ’901 Patent, McDonald filed a continuation application, whose claims included “processor” limitations like the parent application. That continuation application issued as U.S. Patent No. 8,572,111.

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