NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: IFTIKHAR KHAN, NAZIR KHAN,
Appellants
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2017-2207
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/509,949.
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Decided: February 15, 2018
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IFTIKHAR KHAN, NAZIR KHAN, Burr Ridge, IL, pro se.
NATHAN K. KELLEY, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Andrei Iancu. Also represented by MICHAEL
SUMNER FORMAN, BENJAMIN T. HICKMAN, THOMAS W.
KRAUSE, FRANCES LYNCH.
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Before PROST, Chief Judge, MOORE, and CHEN, Circuit
Judges.
PER CURIAM
Drs. Iftikhar Khan and Nazir Khan (collectively, “the
Khans”) appeal from a decision of the United States
Patent and Trademark Office (“PTO”) Patent Trial and
2 IN RE: KHAN
Appeal Board (“Board”) affirming the examiner’s rejec-
tions of claims 21–41 of U.S. Patent Application No.
14/509,949 (’949 application) seeking reissue of U.S.
Patent No. 8,282,591 (’591 patent). Because the claims of
the reissue application recapture surrendered subject
matter in violation of 35 U.S.C. § 251, we affirm.
BACKGROUND
The ’591 patent describes an “arteriovenous shunt” for
use in hemodialysis of a patient. ’591 patent at 1:14–18.
Typically, blood is removed from and returned to the
patient through a “graft” connected to a vein, which poses
dangers of infection, clotting, and hyperplasia.
Id. at
1:20–36, 1:39–45, 2:1–32. The Khans’ shunt avoids these
dangers by connecting a graft to an artery, rather than a
vein, and passing the returned blood through a “single
lumen venous outflow catheter” into the right atrium of a
patient’s heart.
Id. at Abstract, 2:1–5, 2:11–15, 4:14–15,
4:32–33.
During prosecution of the ’591 patent, the examiner
rejected claims 1 and 17 as anticipated by U.S. Patent No.
6,102,884 (“Squitieri”). The Khans amended these claims
to require that the “arterial graft has a first diameter,”
the “venous outflow catheter has a second diameter
different from said first diameter,” and the shunt includes
a “cylindrical cuff” that “provide[s] a secure fit for said
arterial graft first diameter and said venous outflow
catheter second diameter.” The Khans argued Squitieri
does not disclose this “cylindrical cuff” limitation. The
examiner then rejected claims 1 and 17 as unpatentable
over Squitieri in view of U.S. Patent No. 5,399,173
(“Parks”) and, later, in view of U.S. Patent No. 5,509,897
(“Twardowski”). The Khans again argued that none of the
references disclose the “cylindrical cuff” limitation. The
examiner maintained the rejections. The Khans appealed
to the Board of Patent Appeals and Interferences, which
reversed, allowing claims 1 and 17. See Ex parte Khan,
IN RE: KHAN 3
No. 2012-6569,
2012 WL 3067934, at *3 (B.P.A.I. July 27,
2012).
The Khans sought reissue of the ’591 patent to include
claims to “[a] method of preparing a patient for hemodial-
ysis” (claim 21), “[a]n arteriovenous shunt” (claim 29), “[a]
hemodialysis system” (claim 38), and “[a] method of
performing hemodialysis on a patient” (claim 39). None of
the reissue claims expressly recites the “cylindrical cuff”
limitation.
The examiner rejected reissue claims 21–41 under
§ 251 as recapturing subject matter surrendered during
prosecution of the ’591 patent. The examiner concluded
reissue claims 21 and 39 recapture subject matter sur-
rendered from patented claim 17, and reissue claims 29
and 38 recapture subject matter surrendered from pa-
tented claim 1. The examiner also rejected claims 21, 22,
and 25–39 for obviousness over Squitieri in view of U.S.
Patent No. 5,509,897. The Board affirmed all of the
rejections. It declined to separately consider the patenta-
bility of dependent claims 22, 24, 30, 40, and 41 under
§ 251, determining the Khans had waived this argument.
The Khans timely appealed. We have jurisdiction un-
der 28 U.S.C. § 1295(a)(4)(A).
DISCUSSION
I
Section 251 permits a patentee to seek a broadening
reissue of a patent where, “through error and without any
deceptive intent,” the patentee originally claimed “less
than he had a right to claim.” In re Youman,
679 F.3d
1335, 1342 (Fed. Cir. 2012). The “recapture rule,” howev-
er, “bars a patentee from recapturing subject matter,
through reissue, that the patentee intentionally surren-
dered during the original prosecution in order to overcome
the prior art.”
Id. at 1343. Whether claims of a reissue
application implicate the recapture rule is a question of
4 IN RE: KHAN
law we review de novo, while the underlying factual
findings are reviewed for substantial evidence.
Id.
To determine whether recapture has occurred, we ap-
ply a three-step analysis. Greenliant Sys., Inc. v. Xicor
LLC,
692 F.3d 1261, 1267 (Fed. Cir. 2012). At step one,
we “determine whether and in what ‘aspect’ the reissue
claims are broader than the original patent claims.”
Id.
If so, we determine at step two “whether the broader
aspects of the reissue claims relate to surrendered subject
matter.”
Id. At step three we “determine whether the
reissue claims were materially narrowed in other re-
spects, so that the claims may not have been enlarged,
and hence avoid the recapture rule.”
Id.
Under step one, reissue claims 21 and 39 are broader
than patented claim 17, and reissue claims 29 and 38 are
broader than patented claim 1, because none of the reis-
sue claims require the “cylindrical cuff” recited in the
patented claims. The Khans’ argument that the “cylindri-
cal cuff” limitation is retained in dependent claims cannot
save reissue claims 21, 29, 38, and 39, since “[t]he pres-
ence of a dependent claim that adds a particular limita-
tion raises a presumption that the limitation in question
is not found in the independent claim,” not that the limi-
tation is found in the independent claim. Liebel-
Flarsheim Co. v. Medrad, Inc.,
358 F.3d 898, 910 (Fed.
Cir. 2004) (emphasis added).
Turning to step two, the “cylindrical cuff” omitted
from the reissue claims relates to surrendered subject
matter. When the examiner rejected claims 1 and 17 as
anticipated by Squitieri, the Khans amended these claims
to require the “cylindrical cuff” and then relied on this
limitation to distinguish over Squitieri. This constitutes
surrender.
Greenliant, 692 F.3d at 1269–71 (finding
surrender where “[d]uring prosecution . . . , [the appli-
cant] both amended claim 13 to add the . . . limit and
relied on the . . . limit . . . to overcome prior art”); see also
IN RE: KHAN 5
In re Mostafazadeh,
643 F.3d 1353, 1359 (Fed. Cir. 2011)
(“[A] limitation that is added during prosecution to over-
come prior art cannot be entirely eliminated on reis-
sue . . . .”). We need not address step three, as the Khans
have not argued that any of reissue claims 21, 29, 38, and
39 are materially narrowed in other respects.
On this analysis, we conclude that the reissue claims
impermissibly recapture subject matter surrendered
during prosecution of the ’591 patent. Accordingly, we
affirm the Board’s rejections of reissue claims 21–41
under § 251.
II
On an appeal to the Board, an appellant’s failure “to
separately argue claims” within a group subject to a
common ground of rejection “constitute[s] a waiver of any
argument that the Board must consider the patentability
of any grouped claim separately.” 37 C.F.R.
§ 41.37(c)(1)(iv).
Dependent claims 22, 24, 30, 40, and 41 are subject to
a common rejection under § 251 of claims 21–41. Yet in
their appeal to the Board, the Khans did not separately
argue these dependent claims. The Khans cannot rely on
passing references to these dependent claims made in
their reply brief to the Board, as “[a] statement which
merely points out what a claim recites will not be consid-
ered an argument for separate patentability of the claim.”
37 C.F.R. § 41.37(c)(1)(iv). In such cases, we have found
these arguments are waived.
Accordingly, we find that the Board properly deter-
mined arguments regarding separate patentability of
dependent claims 22, 24, 30, 40, and 41 have been waived.
We have considered the Khans’ other arguments and find
them without merit.
6 IN RE: KHAN
CONCLUSION
Because we decide that reissue claims 21–41 imper-
missibly recapture subject matter surrendered during
prosecution of the ’591 patent, we need not reach the
obviousness rejections. The judgment of the Board is
affirmed.
AFFIRMED
COSTS
No costs.
