When a limitation is added to an application, what is a key factor in determining impermissible recapture?

The key factor in determining impermissible recapture when a limitation is added to a patent application is whether that limitation has been disclosed or argued before. This principle derives from the doctrine of claim interpretation and the prohibition against recapturing subject matter that was previously surrendered during prosecution of the application.

When a patent application undergoes prosecution, an applicant may voluntarily narrow the scope of the claims in response to rejections or objections raised by the patent examiner. If a patent owner subsequently attempts to reclaim that surrendered subject matter by reintroducing it through added limitations, it can be seen as an attempt to recapture and would typically be impermissible. Hence, evaluating whether the limitation is something that has been previously discussed or argued sheds light on whether it is a valid addition or a recapture of previously surrendered claims.

Contextually, the other options do not directly refer to the concept of impermissible recapture as they stray from evaluating the communication history of the claims. For instance, whether the limitation was made in previous rejections or if it caused problems during initial examinations relates to procedural history rather than the substantive content of the limitations. Similarly, while the underlying principle behind the claim being disclosed initially is important for overall claim clarity, it does not directly address