Case: 21-1697 Document: 52 Page: 1 Filed: 08/10/2022 United States Court of Appeals for the Federal Circuit ______________________ IN RE: JOHN BRADLEY MCDONALD, Appellant ______________________ 2021-1697 ______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 14/658,050. ______________________ Decided: August 10, 2022 ______________________ ALAN BURNETT, Law Office of R. Alan Burnett, Bellevue, WA, argued for appellant John Bradley McDon- ald. ROBERT MCBRIDE, Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, ar- gued for appellee Katherine K. Vidal. Also represented by BENJAMIN T. HICKMAN, THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA YASMEEN RASHEED. ______________________ Before NEWMAN, STOLL, and CUNNINGHAM, Circuit Judges. CUNNINGHAM, Circuit Judge. This appeal arises from the decision of the Patent Trial and Appeal Board rejecting claims 1–7, 10, 12–16, and 18–38 (“the reissue claims”) of the application for reissue of Case: 21-1697 Document: 52 Page: 2 Filed: 08/10/2022 2 IN RE: MCDONALD U.S. Patent No. 8,572,111 (“the ’111 patent”). The Board rejected the reissue claims as based on a defective reissue declaration and further rejected claims 1–7, 10, 12–14, and 29–38 as impermissibly attempting to recapture subject matter that the patentee intentionally surrendered during prosecution. Ex parte McDonald, No. 2019-002063, 2020 WL 2990970 (P.T.A.B. May 29, 2020). The Board subse- quently denied a request for rehearing of its May 29, 2020, decision. J.A. 23–37. Mr. McDonald’s appeal to this court followed. For the reasons below, we affirm. I. BACKGROUND In 2008, a patent application was filed for methods and systems related to the display of primary and secondary search results in response to search queries. J.A. 1113, 1148–53. Mr. John Bradley McDonald was named as the inventor and Masterfile Corporation was named as the as- signee. 1 J.A. 1113. The application’s original claims 1–9 and 19–21 did not recite a “processor” for conducting the claimed searches. J.A. 1148–53. The examiner rejected those claims as being directed to patent-ineligible subject matter under 35 U.S.C. § 101. J.A. 1208. In response, Mr. McDonald amended those claims, add- ing a “processor” to certain claim limitations, J.A. 1345–51, and arguing that the new “processor” limitations overcame the § 101 rejection by tying “the methods recited in claims 1 and 19 to a particular machine (i.e.[,] the processor),” which “impose[d] meaningful limits in the scope of claims 1 and 19,” J.A. 1353. The examiner agreed and withdrew the § 101 rejection. J.A. 1366–68. The 2008 patent 1 Throughout the prosecution history, sometimes the patent owner rather than Mr. McDonald is listed as the ac- tor. For ease of reference, we will refer to Mr. McDonald throughout the opinion. Case: 21-1697 Document: 52 Page: 3 Filed: 08/10/2022 IN RE: MCDONALD 3 application ultimately issued as U.S. Patent No. 8,280,901 (“the ’901 patent”). J.A. 1601. While the application leading to the ’901 patent was pending, Mr. McDonald filed a continuation application, which ultimately issued as the ’111 patent. J.A. 44–72. The claims in the continuation application included “pro- cessor” limitations like those added to …

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