In re Youman

The Patent and Trademark Office must determine whether the narrowing language related to surrendered subject matter.

Opinion (Prost): Youman and Morris (“Youman”) appealed a re-issuance claim the U.S. Patent and Trademark Office board rejected for improper recapture of surrendered subject matter. Youman patented a program guide allowing users to search for alphabetically listed television programs via “cycling through alphanumeric characters.” Youman applied for a re-issuance, and changed the original language from “cycling” to “changing.” The Court of Appeals held that the board correctly deemed the term “changing” as a broadening of the patent claims, and related to surrendered material; however, the board improperly failed to recognize the materially narrowing language of “wireless remote,” “non-alphanumeric keys,” and “changing.” Thus, the board invoked the recapture rule per se rather than determining whether the narrowing language related to surrendered subject matter. The board was required to determine whether the re-issuance language narrowed the term “changing.” If it did not, the term was ineffective, and re-issuance would not be permitted. The board’s decision was VACATED.