In Re Float‘N’Grill LLC
Docket No. 2022-1438 (https://cafc.uscourts.gov/opinions-orders/22-1438.OPINION.7-12-2023_2156183.pdf)
PROST, LINN, CUNNINGHAM
July 12, 2023
Brief Summary: Rejection of reissue claims for not covering “‘the invention disclosed in the original patent’ as required by 35 U.S.C. § 251” affirmed.
Summary: Float‘N’Grill (FNG) appealed the Board’s affirmance of the Examiner’s rejection under 35 U.S.C. §§ 112(b) and 251 of certain claims of its application for reissue of US 9,771,132 “directed to a float designed to support a grill to facilitate a user grilling food while remaining in a body of water.” As described in the application, the grill support of the float “includes a plurality of magnets” and originally issued “claim 1 included a recitation of the plurality of magnets that exactly mirrored its description in the specification” (i.e., “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”). Claim 1 “was never rejected during prosecution and was allowed in the first office action as originally presented.” FNG requested reissue of claims 4, 19 and 21 that do not require a magnet; claims 8, 20 and 22 require only one magnet; and, claim 14 does not require magnets (“refers only in the preamble to a ‘float adapted to magnetically attach to a grill’”). The Examiner rejected as the ‘132 patent “did not disclose the plurality of magnets as being ‘an optional feature of the invention’” and “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.” The FC panel explained that “whether new claims presented in a reissue application comply with 35 U.S.C. § 251 is a question of law that we review de novo, based on underlying findings of fact reviewed for substantial evidence” (Forum, FC 2019). It also explained that “[a]n applicant is free to seek an expanded scope of coverage beyond that originally sought by filing a continuation or divisional application during the pendency of a parent application and may therein include claims extending to the full scope of the subject matter described in the original specification under 35 U.S.C. § 112(a)” (Antares, FC 2014; the “original patent” requirement of section 251; U.S. Industrial Chem., US 1942 (“[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”); Peters, FC 1983 (reissue denied because “the claims are unsupported by Peters’ original disclosure” but reversed as the “Board…improperly confine[d] the invention to the specific embodiments disclosed”); Forum (claims failed original patent requirement, “arbors” not describe as optional features)). The FC panel held “that reissue claims broadening a limitation to cover undisclosed alternatives to a particular feature appearing from the face of the original specification to be a necessary, critical, or essential part of the invention, do not meet the original patent requirement of § 251.” And, here, it agreed with the Board, explaining that “an express statement of criticality of an element in the original specification is not a prerequisite for a determination that that element is essential” (e.g., in Forum and U.S. Industrial in which “inventions were described exclusively with the [“essential and critical”] limitations later omitted”). It also explained that Revolution Eyewear (FC 2009) and In re Rasmussen (CCPA 1981) were inapplicable as those decisions relate to written description and new matter. The Board decision was therefore affirmed.