In Re FLOAT"N"GRILL LLC

Case: 22-1438 Document: 41 Page: 1 Filed: 07/12/2023
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: FLOAT'N'GRILL LLC,
Appellant
______________________
2022-1438
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 16/110,448.
______________________
Decided: July 12, 2023
______________________
DEAN W. AMBURN, Amburn Law PLLC, Detroit, MI, ar-
gued for appellant.
PETER JOHN SAWERT, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Katherine K. Vidal. Also represented by
DANIEL KAZHDAN, THOMAS W. KRAUSE, AMY J. NELSON,
FARHEENA YASMEEN RASHEED.
______________________
Before PROST, LINN, and CUNNINGHAM, Circuit Judges.
LINN, Circuit Judge.
Appellant, Float‘N’Grill LLC (“FNG”), appeals from the
decision of the Patent Trial and Appeal Board (“Board”) af-
firming the Examiner’s rejections 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. 9,771,132Case: 22-1438 Document: 41 Page: 2 Filed: 07/12/2023
2 IN RE: FLOAT'N'GRILL LLC
(“’132 patent”). Because the reissue claims in question do
not cover “the invention disclosed in the original patent” as
required by 35 U.S.C. § 251, we affirm that rejection and
need not address the indefiniteness of those claims under
35 U.S.C. § 112(b).
I. BACKGROUND
The ’132 patent is directed to a float designed to sup-
port a grill to facilitate a user grilling food while remaining
in a body of water. The specification of the ’132 patent de-
scribes a single embodiment, illustrated in Figures 1 and
2, below.
The floating apparatus 10, illustrated in Figures 1 and
2, includes a float, 20, and a pair of grill supports, 46 and
48, each of which has a base rod, 50, and an “inverted sub-
stantially U-shaped upper support 52 medially attached to
a top surface 54 of the base rod.” ’132 patent, 2:60–3:17.
Each of the grill supports “includes a plurality of magnets
60 disposed within the middle segment 58 of the upper sup-
port 52 of each” grill support. Id. at 3:18–21. The specifi-
cation specifically states: “A flattened bottom side 74 of a
portable outdoor grill 76 is removably securable to the plu-
rality of magnets 60 and removably disposed immediately
atop the upper support 52 of each” of the grill supports. Id.at 3:35–39. No other structure besides the plurality of
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IN RE: FLOAT'N'GRILL LLC 3
magnets is disclosed, suggested, or implied for removably
securing the grill to the supports.
The centrality of the “plurality of magnets” to the in-
vention disclosed in the original patent is at the core of this
case.
Claim 1 of the original patent is narrowly tailored to
the single embodiment disclosed in the written description
(i.e., essentially a “picture claim”). As originally issued, the
language of claim 1 included a recitation of the plurality of
magnets that exactly mirrored its description in the speci-
fication. Claim 1 was never rejected during prosecution
and was allowed in the first office action as originally pre-
sented. The claim reads, in relevant part, as follows:
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 secura-
ble to the plurality of magnets and remov-
ably disposed immediately atop the upper
support of each of the right grill support
and the left grill support.
After the ’132 patent was 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 4, 8, 10–14, and 17–22. None of these claims contain
the narrow “plurality of magnets” limitation. Instead, the
claims more generically call for the removable securing of
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4 IN RE: FLOAT'N'GRILL LLC
a grill to the float apparatus. Representative claim 4 of the
reissue application reads as follows:
4. A floating grill support apparatus adapted
to support a grill on water, the apparatus compris-
ing:
a float having an outer rim wherein the
float is buoyant and adapted to float in wa-
ter and support a grill above the water; and
at least one base rod disposed within
the outer rim wherein the base rod com-
prises a grill support member;
wherein the grill support member has
an upper support portion;
wherein a bottom side of the grill is re-
movably securable and removably disposed
immediately atop the upper support por-
tion of the grill support member.
The Examiner rejected claims 4, 8, 10–13 and 19–22 as
indefinite and claims 4, 8, 10–14, and 17–22 for failure to
satisfy the reissue standard of 35 U.S.C. § 251. Concerning
§ 251, the Examiner found 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.” J.A. 145–46. The Examiner also found that “it
is prima facie apparent that the magnets are a critical ele-
ment of the invention, as the magnets alone are responsible
for effecting a safe and stable attachment between the
floating apparatus and the grill.” J.A. 146.
Referring specifically to the presented claims, the Ex-
aminer noted that: (1) claims 4, 19, and 21 do not require
any magnets; (2) claims 8, 20, and 22 require only a single
magnet; and (3) claim 14 does not positively recite any
magnets, but refers only in the preamble to a “float adapted
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IN RE: FLOAT'N'GRILL LLC 5
to magnetically attach to a grill,” which the Examiner con-
sidered to encompass an embodiment with magnets only on
the grill not on the float. J.A. 145, 133–34. Because the
claims in question do not require that the grill supports
contain the “plurality of magnets” limitation considered es-
sential to the invention as disclosed, the Examiner con-
cluded they do not satisfy the original patent requirement
of § 251.
The Board sustained all the Examiner’s rejections, ex-
cept for indefiniteness of claims 19 and 20 (though these
claims remained rejected under 251). FNG appeals. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
II. DISCUSSION
A. Standard of Review
The Board’s assessment of whether new claims pre-
sented in a reissue application comply with 35 U.S.C. § 251is a question of law that we review de novo, based on un-
derlying findings of fact reviewed for substantial evidence.
Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346, 1350–
51 (Fed. Cir. 2019).
B. Analysis
1. The “Original Patent” Requirement
An applicant is free to seek an expanded scope of cov-
erage 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 Pharma,
Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358 (Fed. Cir.
2014). Once a patent is granted, however, a patentee seek-
ing to change the scope of the claims through reissue is sub-
ject to the additional statutory limitations in 35 U.S.C.
§ 251, including, as particularly relevant here, that the re-
issue claims must be directed to “the invention disclosed in
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6 IN RE: FLOAT'N'GRILL LLC
the original patent.” Id. at 1358 (also noting the prohibi-
tion against recapture of disclaimed subject matter); 35
U.S.C. § 251. This has come to be known as the “original
patent” requirement of § 251. Id.
The blackletter standard for satisfaction of the original
patent requirement is found in U.S. Industrial Chemicals,
Inc. v. Carbide & Carbon Chemicals, Corp., 315 U.S. 668(1942). There, the original specification explained that the
addition of water improved the efficiency of a certain reac-
tion by limiting inefficient side reactions. Id. at 671–73.
Nothing in the original specification indicated that water
was optional. Id. at 673. After the patent was issued, the
patentee discovered that water was not required for the
most efficient reaction and obtained a reissue patent with
a substitute specification and new claims, indicating that
the reaction could take place with or without added water.
Id. at 673–74.
In its validity analysis, the Supreme Court compared
the specifications of the original and reissue patents and
characterized the question before it as “whether, in the
light of the disclosures contained in the two patents, they
are for the same invention.” Id. at 675. 1 The Court then
went on to conclude that “they are if the reissue fully de-
scribes and claims the very invention intended to be se-
cured by the original patent.” Id. at 675–76. The Court
also noted that “[i]t must appear from the face of the in-
strument that what is covered by the reissue was intended
to have been covered and secured by the original.” 2 Id. at
1 The “same invention” standard is a substantively
identical predecessor to the current “original patent” re-
quirement under § 251. Antares, 771 F.3d at 1359–61.
2 We have rejected the gloss on this standard that
depends upon the “intent” of the patentee. Antares, 771
F.3d at 1361–62 (describing prior Federal Circuit deci-
sions).
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IN RE: FLOAT'N'GRILL LLC 7
676. Because the original specification and claims treated
the voluntary introduction of water as “a necessary step” in
the process, and because on the face of the two patents the
introduction of water was “a step not designated as op-
tional or desirable but described and claimed as an integral
part of the whole operation,” the Supreme Court concluded
that the omitted step of introducing water was “essential
in the original patent,” and its absence in the reissue
claims rendered those claims invalid as directed to a differ-
ent invention than originally disclosed. Id. at 676–77. The
Court further explained that a reissue claim does not meet
the requirements of § 251 merely because the newly
claimed invention “might have been claimed in the original
patent because it was suggested or indicated in the specifi-
cation.” Id. at 676. The Court also noted that it was of no
moment that “the result attained [in the reissue patent] is
the same as that brought about by following the process
claimed in the original patent.” Id. at 678.
We have applied these general principles in a number
of cases in which protection was sought by way of reissue
for different aspects of inventions not claimed in original
patents. In Antares, the original patent described jet injec-
tor devices for self-delivery of pharmaceuticals and speci-
fied the depth to which the needle plunges, the force at
which the medicant is expelled, and the gauge of the nee-
dle. 771 F.3d at 1356. All of the original claims were lim-
ited to the disclosed jet injector device. Id. at 1362–63. On
reissue, the patentee sought coverage for various safety
features of injection devices, such as a push button with a
lock. Id. We held that “[a]lthough safety features were
mentioned in the specification, they were never described
separately from the jet injector, nor were the particular
combinations of safety features claimed on reissue ever dis-
closed in the specification.” Id. at 1363. We further held
that the cursory “suggestion” that a push button safety fea-
ture could be used in the original specification was not suf-
ficient to satisfy § 251, because the specification did not
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8 IN RE: FLOAT'N'GRILL LLC
“disclose, in an explicit and unequivocal manner, the par-
ticular combinations of safety features claimed on reissue,
separate from the jet injection invention.” Id. (citing U.S.
Indus. Chem., 315 U.S. at 676).
In Peters, the invention claimed in the original patent
was a display device having front and back walls separated
by support elements, each having a metal tip along its
length with a tapered cross-section. 723 F.2d 891, 92 (Fed.
Cir. 1983). The specification described the function of the
metal tips as securing the support elements in place and
preventing lateral movement of the channels defined by
the support elements. See generally U.S. Pat. No.
4,145,633. Peters’ reissue patent claims omitted the ta-
pered shape of the metal tip limitation. Peters, 723 F.2d at
892–93. The Board rejected the reissue claims under § 251
concluding that “the claims are unsupported by Peters’
original disclosure.” Id. at 893. This court reversed. We
explained that nothing in the original specification sug-
gested that the tapered shape of the tips was “essential or
critical to either the operation or patentability of the inven-
tion.” Id. at 893–94. We reached that conclusion because:
(1) the tapering limitation was not used to overcome any
prior art; and (2) “[m]ost importantly, one skilled in the art
would readily understand that in practicing the invention
it is unimportant whether the tips are tapered.” Id. at 893.
We cautioned that the Board should not improperly confine
the invention to the specific embodiments disclosed in the
original patent or to require the original specification to
disclose each of the differing tip shapes in order to allow
the broadening reissue claims, where “the overall disclo-
sure reasonably conveys to one skilled in the art that the
inventor had possession of the broad invention at the time
the original application was filed.” Id. at 894.
In Forum, original claims were directed to a “workpiece
machining implement” that required a “plurality of arbors
supported by the body member” so as to allow the member
to rotate along different axes. 926 F.3d at 1349. The
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IN RE: FLOAT'N'GRILL LLC 9
specification of the original patent contained a number of
embodiments, each having multiple arbors. The disclosure
explained the advantage of multiple arbors as allowing for
rapid and accurate machining by changing from one arbor
to another. Id. On reissue, the patentee sought to broaden
the claims to remove the “plurality of arbors” limitation in
favor of a “support that is selectively positionable.” Id. at
1350. We held that the reissue claims were invalid for fail-
ure to satisfy the original patent requirement, explaining
that “nowhere do the written description or drawings dis-
close that arbors are an optional feature of the invention.”
Id. at 1352.
In each of these cases, the focus of the § 251 analysis
was on the invention disclosed in the original patent and
whether that disclosure, on its face, explicitly and unequiv-
ocally described the invention as recited in the reissue
claims. As relevant to this appeal, we hold that reissue
claims broadening a limitation to cover undisclosed alter-
natives to a particular feature appearing from the face of
the original specification to be a necessary, critical, or es-
sential part of the invention, do not meet the original pa-
tent requirement of § 251.
2. The Reissue Claims in Question
We agree with the Board that the reissue claims in this
case are not directed to the invention disclosed in the orig-
inal patent and, therefore, do not meet the original patent
requirement of § 251. Here, the original specification de-
scribes a single embodiment of the invention characterized
as a float apparatus having a grill support including a plu-
rality 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 re-
movably securing the grill to the support. It is not de-
scribed in the original patent disclosure as optional,
representative of removable fasteners generally, or
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10 IN RE: FLOAT'N'GRILL LLC
exemplary of a broader invention. Nor does the original
disclosure include examples of alternative components or
arrangements that might perform the functions of or oper-
ate in a similar manner to the disclosed plurality of mag-
nets.
As the Board found, the plurality of magnets compo-
nent of the support structure here is an essential part of
the invention as it is the only disclosed structure for per-
forming the necessary task of removably and safely secur-
ing 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 con-
tact, 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. Here, the specification contains
nothing to suggest to one of ordinary skill in the art that
alternative mechanisms may be used in place of the plural-
ity of magnets or that the plurality of magnets structure is
a stand-in for a broader category of removable fasteners.
To the contrary, the plurality of magnets is the only mech-
anism disclosed to fulfill the necessary functions of remov-
ably and safely securing the grill to the float.
This omission of the plurality of magnets here is simi-
lar to the omission of water in U.S. Industrial Chemicals
and the omission of the plurality of arbors in Forum. In
both cases, nothing in the original specifications clearly
and unequivocally disclosed any alternative to perform the
functions of the omitted element. Rather, just as the added
water in U.S. Industrial Chemicals was “not designated as
optional or desirable but described and claimed as an inte-
gral part of the whole operation,” 315 U.S. at 677, and the
specification in Forum “[did] not disclose an arbor-less em-
bodiment of the invention,” 926 F.3d at 1352, the plurality
of magnets in FNG’s specification was described in
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IN RE: FLOAT'N'GRILL LLC 11
definitional and necessary terms, ’132 Patent at 3:18–21
(“The floating apparatus for supporting a grill 10 further
includes a plurality of magnets 60 disposed within the mid-
dle segment 58 of the upper support[s]”); id. at 2:15–18
(similar); id. at 2:31–34 (“A flattened bottom side of a port-
able outdoor grill is removably securable to the plurality of
magnets”); id. at 1:22–38 (“[W]hat has been needed is a plu-
rality of magnets disposed within a middle segment of the
upper support[s] . . . . A portable outdoor grill is removably
securable to the plurality of magnets”).
FNG argues that the plurality of magnets is simply a
non-essential embodiment of the original patent, like the
tapering of the metal tips in Peters. FNG argues that the
disclosure in the original patent of removably securing the
grill to the grill supports with a plurality of magnets is
enough to support broadened reissue claims that recite re-
movably securing the grill to the grill supports more gen-
erally, because one of ordinary skill in the art “would
understand that it is unimportant how the floating appa-
ratus supports the grill.” Appellant’s Opening Br. at 22–
23 (noting disclosure in the prior art showing other means
of securing a grill to a float).
We disagree. First, an express statement of criticality
of an element in the original specification is not a prereq-
uisite for a determination that that element is essential to
the invention claimed in the original patent. There was no
such statement of criticality of the arbors in Forum or the
added water in U.S. Industrial Chemicals. Our court and
the Supreme Court in those cases held that the limitations
were critical because the inventions were described exclu-
sively with the limitations later omitted, and an analysis
of the relationship of those limitations to the functionality
and disclosure of the original invention revealed their es-
sential and critical nature. The same analysis reveals the
essential and critical nature of the plurality of magnets
here.
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12 IN RE: FLOAT'N'GRILL LLC
Second, whether ordinary artisans could replace the
disclosed magnet mechanism with some other undisclosed
mechanism to achieve a similar removably securable func-
tionality, is inapposite. The result of the procedure claimed
in U.S. Industrial Chemicals was the same whether water
was added or not, 315 U.S. at 677. There, the Supreme
Court explained that “even though the result attained is
the same as that brought about by following the process
claimed in the original patent,” the omission “renders the
reissue void,” id. at 678. See also Forum, 926 F.3d at 1352(“Even if a person of ordinary skill in the art would under-
stand that the newly claimed, arbor-less invention would
be possible, that is insufficient to comply with the standard
set forth in Industrial Chemicals and Antares.”).
Third, the plurality of magnets component here is not
like the tapered tips in Peters. The omitted tapering limi-
tation in Peters had no described functional role and its
configuration was superficial at best. The original specifi-
cation in Peters comprehensively described the metal tips
many times by characteristics and functions independent
of their tapering. U.S. Pat. No. 4,145,633 at 1:50–65 (tips
should be as thin as possible so as not to obscure too much
of the screen that they support); id. at 2:13–21 (tips must
be prevented from transverse movement to maintain their
orientation to the support wall); id. at 3:17–31 (tips have a
“plurality of feet” for support and “thin, flexible web por-
tions” to allow longitudinal movement); id. at 3:32–4:1 (tips
include a retainer to permit longitudinal movement and a
spring member to prevent lateral movement); id. at 4:1–3
(tips are compressed between two walls by atmospheric
pressure). The tapering characteristic, however, was never
given functional importance. See Peters, 723 F.2d at 894(“The teaching of the patent . . . is not affected by whether
the metal tips are tapered.”). This was the context for our
statement in Peters that “nothing in the original disclo-
sures indicates or suggests that the tapered shape of the
tips was essential or critical to either the operation or
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IN RE: FLOAT'N'GRILL LLC 13
patentability of the invention.” 723 F.2d at 893–94. The
plurality of magnets limitation here, on the other hand, is
in no way superficial, but is the one disclosed embodiment
that fulfils the claimed removably securing function.
FNG repeatedly argues that because the reissue claims
are broad enough to generically cover a float apparatus
having a plurality of magnets, the original patent require-
ment of § 251 is met. What FNG fails to appreciate is that
it is precisely because the reissue claims go beyond and are
not limited to the plurality of magnets essential to the in-
vention disclosed in the original patent that they fail to
meet the requirement of § 251.
Finally, FNG argues that Revolution Eyewear v. Aspex
Eyewear, Inc., 563 F.3d 1358, 1366 (Fed. Cir. 2009) and In
re Rasmussen, 650 F.2d 1212, 1215–16 (CCPA 1981) hold
that if the original specification would have supported the
reissue claim omitting the limitation, then the original pa-
tent requirement is satisfied. FNG is incorrect. In Revolu-
tion Eyewear, the court found that the original patent was
satisfied “[b]ecause [it had just] held that the written de-
scription requirement [was] satisfied.” Id. at 1367. In An-
tares, 771 F.3d at 1362 & n. 8, we explained that this
analysis in Revolution Eyewear was a product of the par-
ties’ arguments and not a holding that satisfaction of writ-
ten description therefore satisfies the original patent
requirement. FNG’s reliance on In re Rasmussen fares no
better; that case too was analyzed in the context of written
description and new matter, not the original patent re-
quirement of § 251 as an independent basis for unpatenta-
bility of the reissue claims. In re Rasmussen, 650 F.3d at
1215–16.
III. CONCLUSION
For the foregoing reasons, the Board did not err in af-
firming the rejection of reissue claims 4, 8, 10–14, and 17–
22 for failure to satisfy the original patent requirement of
§ 251. Because this resolves the question of validity of all
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14 IN RE: FLOAT'N'GRILL LLC
the claims at issue on appeal, we need not and do not reach
the issue of indefiniteness.
AFFIRMED