CAFC Sinks Floating Grill Reissue Claims
“The court said the specification need not contain ‘an express statement of criticality of an element’ to be determined ‘essential to the invention claimed in the original patent.’”
Source: CAFC opinion
The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential opinion holding that the reissue claims relating to a patent for a floating grill owned by Float‘N’Grill LLC (FNG) were not directed to the original invention and therefore were properly rejected by the U.S. Patent and Trademark Office (USPTO).
U.S. Patent No. 9,771,132 is titled “Floating Apparatus for Supporting a Grill” and as issued in September, 2017. After issuance, FNG filed a reissue application for additional claims that were rejected by first the examiner and then the Patent Trial and Appeal Board (PTAB). The original claims required a “plurality of magnets” to which “a flattened bottom side of a portable outdoor grill is removably securable,” while the reissue claims “more generically call for the removable securing of a grill to the float apparatus,” according to the CAFC’s opinion.
The examiner and later the PTAB rejected the claims as failing to satisfy the “original patent requirement” of 35 U.S.C. § 251 because the original patent did not indicate the plurality of magnets as an optional feature of the invention.
On appeal, the CAFC explained that U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals, Corp. articulates the standard for satisfying this requirement. In that case, the U.S. Supreme Court determined that the addition of water to improve the efficiency of a certain reaction was not optional in the original specification and said that “[i]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” The CAFC then detailed its own precedent upholding this analysis.
Under that standard, the court said the reissue claims here do not meet the original patent requirement. The court explained:
“As the Board found, the plurality of magnets component of the support structure here is an essential part of the invention as it is the only disclosed structure for performing the necessary task of removably and safely securing the grill to the float apparatus. This conclusion is bolstered by the immutable fact that magnets are unique in facilitating the attachment of members merely by contact, as contrasted to nuts and bolts and other conventional fasteners that typically require multiple parts and more than one hand to assemble. Not only does the specification lack any disclosure or suggestion of an alternative fastener, but the one fastener disclosed is unlike any alternative that might even be considered.”
While FNG argued the plurality of magnets was a “non-essential embodiment of the original patent,” the court said the specification need not contain “an express statement of criticality of an element” to be determined “essential to the invention claimed in the original patent.” Further, “whether ordinary artisans could replace the disclosed magnet mechanism with some other undisclosed mechanism to achieve a similar removably securable functionality, is inapposite,” said the court. The CAFC also distinguished the present case from Revolution Eyewear v. Aspex Eyewear, Inc. and In re Rasmussen, which FNG argued held “that if the original specification would have supported the reissue claim omitting the limitation, then the original patent requirement is satisfied.” The court said those cases were analyzed in the context of written description and not the original patent requirement. The court thus affirmed the PTAB’s holding.
Eileen McDermott
Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at […see more]
