The Federal Circuit has issued a precedential opinion holding that reissue claims relating to a floating grill patent were not directed to the original invention and thus were properly rejected by the US Patent and Trademark Office (USPTO).
The case is In re: Float’N’Grill LLC.
Float‘N’Grill (FNG) appealed from the decision of the Patent Trial and Appeal Board (PTAB or Board) affirming the patent examiner’s rejections under 35 USC §§ 112(b) and 251 of claims 4, 8, 10–14, and 17–22 of FNG’s application for reissue of its US Patent No. 9,771,132.
As the court explained, the patent “is directed to a float designed to support a grill to facilitate a user grilling food while remaining in a body of water,” as illustrated above.
Each of the grill supports “includes a plurality of magnets disposed within the middle segment of the upper support of each” grill support. The court noted that “The centrality of the “plurality of magnets” to the invention disclosed in the original patent is at the core of this case.”
After the patent was first issued, FNG, believing that it claimed less than it was entitled to claim in the original patent, filed a reissue application, seeking now-rejected claims.
As the court noted,
None of these claims contain the narrow “plurality of magnets” limitation. Instead, the claims more generically call for the removable securing of a grill to the float apparatus.
The patent examiner found that the 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.”
Also, the examiner found
it is prima facie apparent that the magnets are a critical element of the invention, as the magnets alone are responsible for effecting a safe and stable attachment between the floating apparatus and the grill.
As the court explained,
Because the claims in question do not require that the grill supports contain the “plurality of magnets” limitation considered essential to the invention as disclosed, the Examiner concluded they do not satisfy the original patent requirement of § 251.
Under 35 U.S. Code § 251 – Reissue of defective patents,
Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
The court agreed with the PTAB:
Here, the original specification describes a single embodiment of the invention characterized as a float apparatus having a grill support including a plurality of magnets for safely and removably securing the grill to the float. The plurality of magnets component of the grill support structure, which has been eliminated in the reissue claims, is the only disclosed component for removably securing the grill to the support. It is not described in the original patent disclosure as optional, representative of removable fasteners generally, or exemplary of a broader invention. Nor does the original disclosure include examples of alternative components or arrangements that might perform the functions of or operate in a similar manner to the disclosed plurality of magnets.
We note that years of expensive patent litigation might have been avoided, and a broader scope of patent rights secured, if the original patent application had been more thoroughly thought-out.
Just like the haiku above, we like to keep our posts short and sweet. Hopefully, you found this bite-sized information helpful. If you would like more information, please do not hesitate to contact us here.
