Reissue Error Does Not Include Amending Claims To Overcome Patent Eligibility Rejection

In In re McDonald,¹ the Federal Circuit held that the recapture rule prevented reissue claims from including features deliberately relinquished in response to a patent eligibility rejection. As a result, the accompanying reissue declaration failed to identify errors correctable by reissue.

John Bradley McDonald filed a patent application in 2008 (2008 application) related to the display of primary and secondary search results for search queries. The 2008 application's initial claims 1-9 and 19-21 did not include a "processor" for performing the search queries. The Examiner refused the claims for reciting patent-ineligible subject matter under 35 U.S.C. § 101.

Mr. McDonald responded by adding a processor to the claims and asserting that the addition of a processor provided meaningful restrictions on the scope of claims 1 and 19 by specifying a particular machine. The Examiner was persuaded and rescinded the Section 101 rejection. The 2008 patent application