Do not omit an “essential element” of the original invention in the reissue claims
| August 29, 2023
In Re: FloatʻN’Grill LLC
Decided: July 12, 2023
Before Linn (author), Prost, and Cunningham
Summary:
When FloatʻN’Grill LLC filed a reissue application, they deleted an essential part of the original disclosure from reissue claims. The PTAB rejected those claims for failure to satisfy the original patent requirement of § 251. The CAFC affirmed the PTAB’s decision.
Details:
FloatʻN’Grill LLC (“FNG”) appeals from the decision of the PTAB affirming the Examiner’s rejection under 35 U.S.C. §§112(b) and 251 of claims 4, 8, 10-14, and 17-22 of FNG’s application for reissue of its U.S. Patent No. 9,771,132 (“’132 patent”).
The ’132 patent
The ’132 patent is directed to a float designed to support a grill (76) so that a user can grill food in a body of water.
A floating apparatus (10) includes a float (20), a pair of grill supports (46 and 48), and an upper support (52). Each of the grill supports includes a plurality of magnets (60) disposed within a middle segment (58) of the upper support (52) of each grill support (46 and 48).
In particular, the specification states: “A flattened bottom side 74 of a portable outdoor grill 76 is removably securable to the plurality of magnets 60 and removably disposed immediately atop the upper support 52 of each” of the grill supports.” The specification does not disclose, suggest, or imply any other structures besides the plurality of magnets for removably securing the grill to the supports.
Independent claim 1 is a representative claim:
1. A floating apparatus for supporting a grill comprising. . .
. . .
a plurality of magnets disposed within the middle segment of the upper support of each of the right grill support and the left grill support . . .
. . .
wherein a flattened bottom side of a portable outdoor grill is removably securable to the plurality of magnets and removably disposed immediately atop the upper support of each of the right grill support and the left grill support.
Reissue Application
After the ’132 patent was issued, FNG filed a reissue application. However, none of the claims in the reissue application recites “the plurality of magnets” limitations. Rather, the claims recite the feature regarding the removable securing of a grill to the floating apparatus.
Independent claim 4 is a representative claim in the reissue application:
4. A floating grill support apparatus adapted to support a grill on water, the apparatus comprising:
a float having an outer rim wherein the float is buoyant and adapted to float in water and support a grill above the water; and
at least one base rod disposed within the outer rim wherein the base rod comprises a grill support member;
wherein the grill support member has an upper support portion;
wherein a bottom side of the grill is removably securable and removably disposed immediately atop the upper support portion of the grill support member.
The Examiner rejected the claims for failure to satisfy the reissue standard of 35 U.S.C. §251.
The Examiner indicated that the ’132 patent disclosed “a single embodiment of a floating apparatus for supporting a grill” using a “plurality of magnets” and did not disclose the plurality of magnets as being “an optional feature of the invention.” In addition, the Examiner indicated that the magnets are a critical element of the invention because the magnets alone are responsible for a safe and stable attachment between the floating apparatus and the grill.
The Examiner noted that since some claims in the reissue application do not require any magnets, require only a single magnet, and do not positively recite any magnets, they do not satisfy the original patent requirement of §251.
The PTAB
The PTAB maintained all the Examiner’s rejection.
The CAFC
The CAFC reviewed de novo.
The CAFC emphasized that for a reissue application, there is an additional statutory limitation in 35 U.S.C. §251 for a patentee seeking to change the scope of the claims through reissue – the “original patent” requirement of §251 (the reissue claims must be directed to “the invention disclosed in the original patent”).
The CAFC noted that the focus of the §251 analysis is on the invention disclosed in the original patent and whether that disclosure, on its face, explicitly and unequivocally described the invention as recited in the reissue claims.
The CAFC agreed with the PTAB that the reissue claims in this case are not directed to the invention disclosed in the original patent and, therefore, do not meet the original patent requirement of § 251.
The CAFC noted that the original specification describes a single embodiment of the invention characterized as a floating apparatus having a grill support including a plurality of magnets for safely and removably securing the grill to the float.
The CAFC held that the plurality of magnets component of the grill support structure are removed from the reissue claims, and that the original patent disclosure does not disclose these structures as optional. Also, the CAFC noted that the original patent disclosure does not provide any examples of alternative components or arrangements that might perform the functions of the plurality of magnets.
Therefore, the CAFC found that the plurality of magnets are essential parts of the invention because they are only disclosed structures for performing the task of removably and safely securing the grill to the float apparatus.
Accordingly, the CAFC held that the PTAB did not err in affirming the rejection of reissue claims for failure to satisfy the original patent requirement of § 251.
Takeaway:
- If Applicant would like to broaden the scope of the original invention, file a continuation or divisional application during the pendency of a parent application.
- Make sure that do not omit an “essential element” of the original invention in the reissue claims.
- Add more boilerplate statements and additional embodiments in the original application so that the broader reissue claims could be saved.
