In re Youman

679 F.3d 1335 (2012)

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In re Youman

United States Court of Appeals for the Federal Circuit
679 F.3d 1335 (2012)

  • Written by Nicole Gray , JD

Facts

Roger Youman and Marney Morris (plaintiffs) held a patent for a television-guide system that allowed users to select program titles by cycling through a list of alphanumeric characters to enter the first few characters of a title. The claims as filed had a broader selection feature and were rejected as obvious considering prior art teachings of television-guide systems and selection of titles from alphabetical lists by typing the first few characters into a keyboard. The inventors narrowed the selection feature in order to overcome the rejection and secure allowance. Less than two years after the patent issued, the inventors filed a reissue application claiming selection by changing from a first to a second character using nonalphanumeric keys on a remote control. The reissue claims were finally rejected for improperly recapturing subject matter surrendered during prosecution of the original patent. The Board of Patent Appeals and Interferences (the board) (defendant) affirmed the examiner’s final rejection after finding, in accordance with the three-step, recapture-rule analysis, that: the reissue claims were broader than the issued claims; the broadening was related to surrendered subject matter; and the recapture rule could not be avoided because potentially narrowing limitations were not overlooked during prosecution. Youman and Morris appealed.

Rule of Law

Issue

Holding and Reasoning (Prost, J.)

Dissent (Lourie, J.)

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