Recapture rule extended to patent ineligible subject matter

In deciding In re McDonald, the Federal Circuit applied the recapture rule to § 101 rejections.  A patent may be reissued when the original patent is inoperative or invalid “through error without any deceptive intention.”  The recapture rule generally prevents recapturing claimed subject matter surrendered during prosecution to obtain the original claims, and it had previously been applied to prior art rejections under § 102 and § 103.  In the present case, original claims related to displaying search results and were amended with “a processor” to overcome a § 101 rejection.  Subsequently, a reissue application sought to broaden the claims by removing the processor limitation.  The Court held that McDonald “cannot now use the reissue application as a Trojan horse to recapture that which he deliberately gave up.”  The Court went on to explain that because “McDonald deliberately—not erroneously or inadvertently—added the ‘processor’ limitations … to overcome the § 101 rejection, the recapture rule does not permit him to now remove those limitations to broaden his claim.”