In Re Mostafazadeh

United States Court of Appeals
for the Federal Circuit
__________________________

(Serial No. 10/016,750)
IN RE SHAHRAM MOSTAFAZADEH AND JOSEPH
O. SMITH
__________________________

2010-1260
__________________________

Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
___________________________

Decided: May 3, 2011
___________________________

STEVE D. BEYER, Beyer Law Group LLP, of Cupertino,
California, argued for appellants. With him on the brief
was EDWARD VAN GIESON.

JANET A. GONGOLA, Associate Solicitor, Office of the
Solicitor, United States Patent and Trademark Office, of
Alexandria, Virginia, argued for the Director of the
United States Patent and Trademark Office. With her on
the brief were RAYMOND T. CHEN, Solicitor, and FRANCES
M. LYNCH, Associate Solicitor.
__________________________

Before DYK, FRIEDMAN, and PROST, Circuit Judges.
IN RE MOSTAFAZADEH 2

DYK, Circuit Judge.
Shahram Mostafazadeh and Joseph O. Smith (collec-
tively, “applicants”) appeal from a decision of the United
States Patent and Trademark Office, Board of Patent
Appeals and Interferences (“Board”). The Board affirmed
the examiner’s rejection of claims 11–23 in the applicants’
reissue patent application. In re Mostafazadeh, No. 2009-
004238 (B.P.A.I. Aug. 27, 2009) [hereinafter Board Deci-
sion]. Because the reissue application impermissibly
attempted to recapture subject matter surrendered during
prosecution of the original patent application, we affirm.
BACKGROUND
U.S. Patent Number 6,034,423 (“the ’423 patent”),
which issued in 2000, is generally directed to lead frame
based semiconductor packaging. This type of semiconduc-
tor packaging supports and protects the integrated circuit
module (“chip”), while providing electrical pathways
between the chip and external devices. The ’423 patent
describes two embodiments, the pin-type package and the
bottom-surface-mount package. Both embodiments
include a chip (also known as a die), which is mounted on
a metal lead frame and encapsulated by a ceramic or
plastic casing. Within the lead frame, the chip is sup-
ported by a die attach pad and connected to a pair of bus
bars, which are used to facilitate electrical connections to
external devices.
In the pin-type embodiment, shown in Figure 1 below,
the protective casing [130] covers the top, sides, and
bottom surfaces of the lead frame [220]. The lead frame
electrically connects the chip [110] to external devices
through a number of metal leads [122] that extend out-
side the casing. The portions of the leads that extend
outside the casing are typically bent downward to form
3 IN RE MOSTAFAZADEH

pins [140]. These pins are used to connect the package to
external devices.

Figure 1
In the bottom-surface-mount embodiment, shown in
Figure 2 below, the protective casing [160] covers only the
top and side surfaces of the lead frame [220], leaving the
bottom surface [170] exposed. In this embodiment, elec-
trical connections to external devices are made through
solder balls [150] on the bottom surface of the lead frame.
The exposed bottom surface of the lead frame contains
several attachment pads [126], to which the solder balls
are attached.
IN RE MOSTAFAZADEH 4

Figure 2
As originally filed, the claims encompassed both the
pin-type and bottom-surface-mount embodiments. All of
the originally filed claims were rejected as either antici-
pated or obvious because the prior art disclosed the pin-
type embodiment encompassed by the claims. 1 To over-

1 Original claim 1 is representative:
In an integrated circuit package, a lead frame com-
prising:
a die attach platform;
a plurality of elongated leads which are electri-
cally isolated from said die attach platform; and
a first bus bar which is electrically isolated from
said die attach platform and said plurality of elongated
leads.

J.A. 318.
5 IN RE MOSTAFAZADEH

come this rejection, claims 1 and 9 (the only independent
claims) were amended to add the requirement of “circular
attachment pads.” 2 The applicants made no assertion
that attachment pads as such were novel. Rather, the
assertion was that a circular attachment pad was novel.
In the remarks accompanying the amendment, the appli-
cants argued that “neither the circular pads . . . nor their
attendant benefits [were] disclosed or suggested by [the
prior art].” J.A. 308. The ’423 patent issued with the
amended claim set.
In 2001, the applicants filed an application to reissue
the ’423 patent. This application included twelve new
claims. In the reissue declaration, the applicants alleged
that the original claims were partially inoperative be-
cause the circular-attachment-pad limitation was “unduly
limiting in the context of claims directed at the bus bar
feature.” J.A. 106–07. Though the reissue claims re-
tained the requirement of “an attachment pad,” the

2 As amended, claim 1 required:
An integrated circuit package comprising:

(a) a lead frame comprising:
a die attach platform; and
a plurality of elongated leads which are elec-
trically isolated from said die attach platform, each of said
elongated leads including a circular portion formed as an
attachment pad; and

(b) a substrate, having first and second surfaces
on opposite sides of said substrate, for providing rigid
support to said lead frame, said substrate contacting said
lead frame on said first surface and having vias of non-
circular cross sections to allow electrical connections
between said first and second surfaces.

J.A. 305–06 (emphasis added).
IN RE MOSTAFAZADEH 6

circular shape requirement was omitted. 3 The examiner
rejected the reissue claims under 35 U.S.C. § 251 as being
an improper recapture of subject matter surrendered
during prosecution of the ’423 patent. The examiner
noted that the circular-attachment-pad limitation, which
was added during prosecution of the ’423 patent, had been
“argued to be both critical to the invention and distin-
guishing over the prior art.” J.A. 111–12.
The applicants appealed to the Board, which affirmed
the examiner’s rejection of the reissue claims. The Board
concluded that the reissue claims impermissibly recap-
tured subject matter surrendered during the prosecution
because the reissue claims were broadened with respect to
3 Reissue claim 11 is illustrative:
An integrated circuit package comprising:

a lead frame including a die attach platform, a
plurality of contacts that are spaced apart from the die
attach platform and a bus bar that is positioned between
the die attach platform and at least some of the contacts,
wherein bottom surfaces of the die attach platform, the
contacts and the bus bar are substantially co-planar, and
wherein each of the contacts includes a portion that forms
an attachment pad;

a die carried by the die attach platform and elec-
tronically connected to the bus bar and at least some of
the contacts; and

a protective casing covering the die and the lead
frame while leaving bottom surfaces of the die attach
platform, the bus bar and the conductive contacts ex-
posed, wherein encapsulation material that forms the
protective casing is exposed at a bottom surface of the
package to physically isolate the bus bar from at least
some of the conductive contacts, whereby the attachment
pads are exposed at the bottom surface of the package.

J.A. 204 (emphases added).
7 IN RE MOSTAFAZADEH

the patented claims by eliminating the requirement that
the attachment pads be circular, and the reissue claims
were not materially narrowed in other respects so as to
avoid the recapture rule. Board Decision, at 12, 16.
The applicants timely appealed. This court has juris-
diction under 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
I
Under the reissue statute, a patent holder may seek
reissue of an existing patent. See 35 U.S.C. § 251. The
statute provides that:
Whenever [the] patent is, through error without
any deceptive intention, deemed wholly or partly
inoperative or invalid, by reason of a defective
specification or drawing, or by reason of the pat-
entee claiming more or less than he had a right to
claim in the patent, the Director shall . . . reissue
the patent for the invention disclosed in the origi-
nal patent . . . . No new matter shall be intro-
duced into the application for reissue.
Id. It is well established, however, that a patentee may
not “regain[ ] through reissue the subject matter that he
surrendered in an effort to obtain allowance of the origi-
nal claims.” In re Clement, 131 F.3d 1464, 1468 (Fed. Cir.
1997); see also Mentor Corp. v. Coloplast, Inc., 998 F.2d
992, 995 (Fed. Cir. 1993). Under this rule against recap-
ture, “claims that are broader than the original patent
claims in a manner directly pertinent to the subject
matter surrendered during prosecution are impermissi-
ble.” Clement, 131 F.3d at 1468 (internal citation and
quotation marks omitted). “Whether the claims of a
reissue patent violate 35 U.S.C. § 251, and thus are
invalid, is a question of law, which we review de novo.” N.
IN RE MOSTAFAZADEH 8

Am. Container, Inc. v. Plastipack Packaging, Inc., 415
F.3d 1335, 1349 (Fed. Cir. 2005).
Application of the recapture rule is a three step proc-
ess. Clement, 131 F.3d at 1468; see also N. Am. Con-
tainer, 415 F.3d at 1349; Pannu v. Storz Instruments, Inc.,
258 F.3d 1366, 1371 (Fed. Cir. 2001). The first step is to
“determine whether and in what ‘aspect’ the reissue
claims are broader than the patent claims.” Clement, 131
F.3d at 1468. “[A] reissue claim that deletes a limitation
or element from the patent claims is broader” with respect
to the modified limitation. Id. Next, the court must
“determine whether the broader aspects of the reissue
claims relate to surrendered subject matter.” Id. at 1468–
69. “To determine whether an applicant surrendered
particular subject matter, we look to the prosecution
history for arguments and changes to the claims made in
an effort to overcome a prior art rejection.” Id. at 1469.
Here there is no dispute regarding the first and sec-
ond steps of the recapture analysis. Both parties agree
that the reissue claims are broader than the patented
claims and that the broader aspects relate to the surren-
dered subject matter (i.e., the circular-attachment-pad
limitation). Thus, only the third step of the recapture
analysis is at issue. In this final step, the court must
“determine whether the surrendered subject matter has
crept into the reissue claim.” Id. In discussing this third
step, it is important to distinguish among the original
claims (i.e., the claims before the surrender), the patented
claims (i.e., the claims allowed after surrender), and the
reissue claims. Violation of the rule against recapture
may be avoided under this final step of the analysis if the
reissue claims “materially narrow” the claims relative to
the original claims such that full or substantial recapture
of the subject matter surrendered during prosecution is
9 IN RE MOSTAFAZADEH

avoided. N. Am. Container, 415 F.3d at 1349; see also
Pannu, 258 F.3d at 1371; Clement, 131 F.3d at 1470.
To avoid violation of the rule against recapture in this
way, the narrowing must relate to the subject matter
surrendered during the original prosecution (i.e., the
applicant cannot recapture the full scope of what was
surrendered). See N. Am. Container, 415 F.3d at 1350;
Pannu, 258 F.3d at 1372; Clement, 131 F.3d at 1471. For
example, in North American Container, the original
claims were directed to a one-piece, blow-molded plastic
bottle. 415 F.3d at 1338. During prosecution of the
original claims, the claims were amended by adding a
limitation requiring that the inner walls be “generally
convex.” Id. at 1340. This amendment was designed to
overcome a prior art patent which had “slightly concave”
inner walls. Id. On reissue, the applicant sought to
broaden the patented claims by omitting the “generally
convex” limitation, but also narrowed them relative to the
original claim scope by requiring a specific relationship
between the diameter of the inner walls and the overall
diameter of the bottle. Id. at 1341–42. We held that the
reissue claims violated the recapture rule because the
alleged narrowing did not relate to the surrendered
subject matter (i.e., the generally convex inner wall
limitation added during prosecution). Id. at 1350.
Similarly, in Pannu, the original “application dis-
closed a round lens called an ‘optic’ that focuses light on
the retina, and two or more elements called ‘haptics’ that
are attached to the optic and contact internal tissue in the
eye for the purpose of positioning and securing the optic.”
258 F.3d at 1368. To overcome a prior art rejection, the
applicant amended the original claims by adding a limita-
tion defining the shape of the haptics as “a continuous,
substantially circular arc having a diameter greater than
the diameter of said lens body, said arc curved toward
IN RE MOSTAFAZADEH 10

said lens circumference.” Id. at 1369. On reissue, the
applicant eliminated the limitation on the shape of the
haptics, but argued that recapture was avoided because
the claims were materially narrowed relative to the
original claims by the addition of two limitations relating
to the size and positioning of the haptics. Id. at 1371–72.
We rejected the applicant’s argument because the alleg-
edly narrowing limitations did not relate to the surren-
dered subject matter (i.e., the shape of the haptics). Id. at
1372.
The applicants argue that narrowing is material
where the additional claim limitations “render an other-
wise invalid claim valid,” whether or not the narrowing is
related to the surrendered subject matter. Br. of Appel-
lants at 29. In making this argument, the applicants rely
on this court’s decision in Hester Industries, Inc. v. Stein,
Inc., 142 F.3d 1472 (Fed. Cir. 1998). The applicants
misinterpret Hester. In Hester, we rejected the applicant’s
argument that the added limitations were materially
narrowing, finding that the limitations were unrelated to
the surrendered subject matter. Id. at 1482–83. We did
not suggest that the materiality of the allegedly narrow-
ing limitations was determined by whether the limita-
tions rendered the claims patentable.
Thus, a limitation that is added during prosecution to
overcome prior art cannot be entirely eliminated on
reissue because doing so would constitute recapture of the
surrendered subject matter. The limitation may be
modified, however, so long as it continues to materially
narrow the claim scope relative to the surrendered subject
matter such that the surrendered subject matter is not
entirely or substantially recaptured.
11 IN RE MOSTAFAZADEH

II
The Board held here that the third step of the recap-
ture analysis had not been satisfied (i.e., the surrendered
subject matter was entirely within the scope of the reissue
claims). The Board’s analysis on this point is perplexing.
The Board stated that the recapture rule is violated “if
the reissue claim omits or broadens any limitation that
was added/argued during the original prosecution to
overcome an art rejection, even if it includes other limita-
tions that narrow the claims in other aspects.” Board
Decision, at 14. To support this proposition, the Board
relied on a portion of § 1412.02 of the Manual of Patent
Examining Procedure (“MPEP”), which states in part:
If surrendered subject matter . . . has been in any
way broadened in a reissue application, . . . then a
recapture rejection under 35 U.S.C. § 251 is
proper and must be made for that claim.
MPEP § 1412.02(I)(C), Rev. 7, July 2008. The reference to
“broadening” the added limitation or “broadening” the
“surrendered subject matter” is confusing. It could mean
that the limitation is less restrictive or it could mean that
the limitation is more restrictive. The former presents a
recapture, while the latter does not. See N. Am. Con-
tainer, 415 F.3d at 1350; Pannu, 258 F.3d at 1372; Clem-
ent, 131 F.3d at 1471. It is far clearer to speak in terms of
broadening or narrowing the claims than to speak of
broadening or narrowing the “limitation” or the “surren-
dered subject matter.”
Though the Board went on to analyze whether the
claims were materially narrowed “in other respects so as
to avoid recapture,” it seems to have defined “materially
narrowed” in a manner contrary to our precedent. See
Board Decision, at 15. Based on this provision of the
MPEP, the Board concluded that “[a] limitation materi-
IN RE MOSTAFAZADEH 12

ally narrows the . . . claims if the narrowing limitation is
directed to one or more overlooked aspects of the inven-
tion.” Id. (internal quotations omitted). It then defined
“overlooked aspects” of the invention as “patentably
distinct (1) inventions; (2) embodiments; or (3) species not
originally claimed—not mere incidental features of the
originally-claimed invention.” Id. at 17. The Board noted
that “[t]he latest version of the MPEP confirms this point”
by emphasizing that if “the reissue claim(s) are really
claiming additional inventions/embodiments/species not
originally claimed (i.e., overlooked aspects of the disclosed
invention), then recapture will not be present.” Id. at 16;
see also MPEP § 1412.02(I)(C), Rev. 7, July 2008. Accord-
ingly, the Board concluded that rejection of the reissue
claims was proper because the narrowing limitations,
which related to the bus bar, were “not directed to distinct
inventions; rather they [were] different definitions of the
same [bottom-surface-mount embodiment disclosed in the
original patent], varying in breadth or scope of definition.”
Board Decision, at 18.
The Board’s reliance on this portion of the MPEP is
misplaced. This portion of the MPEP deals with claims in
which there is no need to apply the recapture rule in the
first place. The recapture rule is triggered only where the
reissue claims are broader than the patented claims
because the surrendered subject matter has been re-
claimed in whole or substantial part (i.e., an added limita-
tion has been eliminated or revised). See Clement, 131
F.3d at 1468–69. In contrast, this portion of the MPEP
addresses reissue claims directed at “additional inven-
tions/embodiments/species not originally claimed.”
Because the subject matter of these claims was “not
originally claimed,” it is wholly unrelated to the subject
matter that was surrendered during prosecution and the
recapture rule is not even triggered. At oral argument,
13 IN RE MOSTAFAZADEH

the PTO conceded this point, noting that this portion of
the MPEP is unrelated to recapture.
As discussed above, the recapture rule is violated
when a limitation added during prosecution is eliminated
entirely, even if other narrowing limitations are added to
the claim. If the added limitation is modified but not
eliminated, the claims must be materially narrowed
relative to the surrendered subject matter such that the
surrendered subject matter is not entirely or substantially
recaptured.
III
Here, the applicants argue that recapture is avoided
in two ways. First, even though the circular shape re-
quirement has been eliminated, the applicants contend
that the “retained attachment pad limitation still narrows
the reissue claims in a manner germane to the prior art
rejections in the original prosecution.” Br. of Appellants
at 44. The applicants urge that they have avoided the
recapture rule because they have not broadened the
claims to encompass everything that was surrendered
during prosecution. This argument is plainly contrary to
our precedent. Here there is no dispute that the reissue
claims are broader than the patented claims. Where this
is the case, the recapture rule is avoided only if the claims
are materially narrowed in a way that avoids recapture of
the surrendered subject matter. See N. Am. Container,
415 F.3d at 1350; Pannu, 258 F.3d at 1372; Clement, 131
F.3d at 1471. Thus, the mere argument that the reissue
claims constitute only a partial recapture is insufficient
without a corresponding demonstration of material nar-
rowing. Retention of the attachment pad limitation is
related to the surrendered subject matter, but is not
materially narrowing because the use of an attachment
IN RE MOSTAFAZADEH 14

pad was well known in the prior art. 4
Second, the applicants argue that the reissue claims
“each have a number of limitations that are narrowing
relative to the surrendered [subject matter].” Br. of
Appellants at 29. Specifically, the applicants rely on
limitations related to the bus bar, which require that: (1)
the “bottom surfaces of the die attach platform, the con-
tacts and the bus bar [be] substantially co-planar,” (2) the
“protective casing cover[ ] the die and lead frame while
leaving bottom surfaces of the die attach platform, the bus
bar and the conductive contacts exposed,” and (3) the
protective casing “physically isolate the bus bar from at
least some of the conductive contacts.” J.A. 204. While
these limitations certainly narrow the reissue claims
relative to the original claims, the narrowing is related
only to the bus bar, not the circular attachment pad. In
other words, the narrowing limitations are unrelated to
the surrendered subject matter and thus insufficient to
avoid recapture.
IV
We thus affirm the rejection of claims 11–23 in the
applicants’ reissue application.
AFFIRMED

4 As part of the “background of the invention,” U.S.
Patent Number 5,796,589 col.1 ll.39–44 (filed Dec. 20,
1995), which was relied on by the examiner in the original
prosecution, discloses the use of “solder pads” (i.e., at-
tachment pads).