Float'N'Grill LLC

Patent Trials and Appeals Board

Dec 2, 2021

2021004183 (P.T.A.B. Dec. 2, 2021)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 16/110,448 08/23/2018 Michael P Bashawaty 6030.01 2899 150990 7590 12/02/2021 Amburn Law PLLC 4833 Waldon Woods Dr. Commerce Township, MI 48382 EXAMINER REIP, DAVID OWEN ART UNIT PAPER NUMBER 3993 NOTIFICATION DATE DELIVERY MODE 12/02/2021 ELECTRONIC Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): LAsmar@amburnlaw.com USPTO@dockettrak.com dwa@amburnlaw.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ______________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ________________ Ex parte MICHAEL P. BASHAWATY and JEREMY M. QUILLICO ________________ Appeal 2021-004183 Application 16/110,448 Reissue of US Patent 9,771,132 B1 Technology Center 3900 ________________ Before MICHELLE R. OSINSKI, JILL D. HILL and CYNTHIA L. MURPHY, Administrative Patent Judges. HILL, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant appeals from the Examiner’s decision to reject claims 4, 8, 10-14, and 17-22.1 We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies Float’N’Grill LLC as the real party in interest. Appeal Br. 1. Appeal 2021-004183 Application 16/110,448 Reissue of US Patent 9,771,132 B2 2 BACKGROUND US Patent 9,771,132 (“the ’132 Patent”) issued from U.S. Application 15/181,264, filed June 13, 2016 (“the ’264 application). Appellant’s claimed invention is directed to a floating apparatus that supports a grill. ’132 Patent, Title. The ’132 Patent issued with claims 1-3. Original claims 1-3 remain pending and have been indicated as allowable by the Examiner. Claims 4, 8, 10-14, and 17-22 are added in this reissue examination and are rejected. New claims 4, 14, and 19 are independent. Claim 4 is reproduced below as representative of the claims on appeal. 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. REJECTIONS I. Claims 4, 8, 10-13, and 19-22 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. Final Act. 5. II. Claims 4, 8, 10-14, and 17-22 stand rejected under 35 U.S.C. § 251 as an impermissible recapture of broadened subject matter surrendered in the application for patent. Final Act. 5. Appeal 2021-004183 Application 16/110,448 Reissue of US Patent 9,771,132 B2 3 ANALYSIS We review the appealed rejections for error based upon the issues identified by Appellant and in light of the arguments and evidence produced thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an applicant to identify the alleged error in the examiner’s rejections.”)). Indefiniteness - Claims 4, 8, 10-13, and 19-22 Independent claim 4 recites “[a] floating grill support apparatus adapted to support a grill” and then recites “a bottom side of the grill is removably securable and removably disposed immediately atop the upper support portion of the grill support member.” Appeal Br. 27-28 (Claims App.). Independent claim 19 recites “[a] floating apparatus for supporting a grill” and then recites “a grill” and that “a bottom side of the grill is removably securable and removably disposed immediately atop the support segment of the grill support member.” Id. at 29. Independent claim 21 recites “[a] floating apparatus for supporting a grill” and then recites “a bottom side of the grill is removably securable and removably disposed immediately atop the support segment of the grill support member.” Id. at 29-30. The Examiner finds that the claim preambles are directed to the floating apparatus only, and do not positively recite the grill. The Examiner contends that thereafter positively reciting the bottom of the grill renders the claims indefinite because “it is unclear whether [Appellant] intends for the claim to be directed to the . . . floating apparatus only or to the . . . floating apparatus and the grill.” Final Act. 5-6. Appeal 2021-004183 Application 16/110,448 Reissue of US Patent 9,771,132 B2 4 Appellant asserts that claims 4, 8, 10-13, 21, and 22 are intended to cover the floating grill support only (with the bottom grill recited only to establish how the grill is supported), and claim 19 is intended to cover both the floating grill support and the grill. See Appeal Br. 21-22. A decision on whether a claim is indefinite requires a determination of whether a skilled artisan would understand what is claimed when the claim is read in light of the specification. See Power-One, Inc. v. Artesyn Techs., Inc., 599 F.3d 1343, 1350 (Fed. Cir. 2010); Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565 (Fed. Cir. 1986). Independent claims 4 and 21, however, recite a float “adapted to support” or “for supporting” a grill, and then positively recite “a bottom surface of the grill.” This recitation prevents an understanding of, for example, whether infringement would require just a float for supporting a grill, or the combination of float and grill. We determine that a skilled artisan would, likewise, be unable to determine whether the claim scope includes the float only, or the float and a grill. This lack of clarity applies, likewise, to dependent claims 8, 10-13, and 22. The patentee “is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.” Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed. Cir. 2008). For the reasons explained above, we sustain the § 112(b) rejection of claims 4, 8, 10-13, 21, and 22. On the other hand, Appellant argues that “[p]ositively including ‘a grill’ as a claim element leaves no doubt that it is intended to be a claim element.” Appeal Appeal 2021-004183 Application 16/110,448 Reissue of US Patent 9,771,132 B2 5 Br. 22. The inclusion of “ a grill” in the listed components of claim 19 makes clear that infringement would require a combination of float and grill. We determine that a skilled artisan would, likewise, be able to determine that the claim scope includes a float and a grill. For the reasons explained above, we do not sustain the § 112(b) rejection of claim 19 and claim 20 depending therefrom. Section 251 This Application seeks a broadened reissue of the ’132 Patent by adding claims 4, 8, 10-14, and 17-222, drawn to a floating grill support assembly and removing the “plurality of magnets” limitation. The Examiner contends that the broadened claim scope does not meet the original patent requirement of 35 U.S.C. § 251. According to the Examiner, for the original patent requirement to be met, the Specification of the ’132 Patent “‘must clearly and unequivocally disclose the newly-claimed invention as a separate invention,’” and it is not enough that the newly-claimed invention “‘was suggested or indicated in the specification.’” Final Act. 4 (citing Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354 (Fed. Cir. 2014) (quoting US Indus. Chems., Inc. v. Carbide & Carbon Chems. Corp., 315 U.S. 668, 676 (1942)). The Examiner finds that the ’132 Patent discloses and claims “a single embodiment of a floating apparatus for supporting a grill” that includes “‘a plurality of magnets’” and fails to disclose plural magnets being “an optional feature of the invention.” Final Act. 3-4 (stating that the ’132 Patent disclosure “(totaling only approximately 1.5 pages of written description) . . . disclose[s] a 2 Claims 5-7, 9, 15, and 16 were canceled. Appeal Br. 28-29 (Claims App.). Appeal 2021-004183 Application 16/110,448 Reissue of US Patent 9,771,132 B2 6 single invention” having “a plurality of magnets”). The Examiner contends 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.” Id. at 4. The Examiner then finds that Appellant is broadening the claims to include (1) an embodiment in independent claims 4, 19, and 21 that does not require any magnets, (2) an embodiment in claims 8, 20 and 22 having a single (“at least one”) magnet, and (3) an embodiment in claim 14 that does not positively recite any magnets, instead having a preamble reciting the float being “‘adapted to magnetically attach a grill to the grill support member’ . . . which would, for example, encompass [a floating apparatus] embodiment having no magnets, with magnet(s) instead being attached to the bottom of a grill.” Final Act. 4. The Examiner concludes that, because claims 4, 8, 10-14, and 17-22 do not require the critical “plural magnets” limitation of the original claims, they do not satisfy the original patent requirement. Id. at 5. Appellant argues that the Examiner failed to establish that a plurality of magnets is a critical element of the invention, and fails to cite to any evidence to support criticality. Appeal Br. 10, 12; Reply Br. 1. According to Appellant, the ’132 Patent does not say or imply that magnets are a critical element, and a plurality of magnets was not “needed to avoid prior art during prosecution of the original patent application or current reissue.” See Appeal Br. 10, 13-15. Appellant further argues that skilled artisans would recognize that the invention is directed to a floating apparatus for supporting a grill in a variety of ways, and not just with magnets. Id. Appeal 2021-004183 Application 16/110,448 Reissue of US Patent 9,771,132 B2 7 Appellant further argues that claims can be broader than the specific embodiment disclosed in the specification. Appeal Br. 11 (citing In re Peters, 723 F.2d 891, 893 (Fed. Cir. 1983); In re Rasmussen, 650 F.2d 1212, 1215 (CCPA 1981) (“one skilled in the art who read Rasmussen’s specification would understand that it is unimportant how the layers are adhered, so long as they are adhered.”). Appellant argues that, as in Rasmussen, a skilled artisan reading the ’132 Patent “would understand that it is unimportant how the floating apparatus supports the grill, so long as it is supported,” and a skilled artisan would also know that “[t]he grill can be supported by many different means.” Id. at 12. According to Appellant, in determining that plural magnets is a critical element, “[t]he Office is making a judgement call without any supporting evidence about the criticality of one element in a multi-element invention,” improperly shifting the burden of proving non-criticality to Appellant. Appeal Br. 12. Appellant further contends that the Examiner erred in (1) concluding that “magnets alone are responsible for effecting a ‘safe and stable attachment’” of the float to the grill, and (2) assuming that “any form of attachment is needed . . . to support the grill on the floating apparatus.” Id. at 13. Appellant further argues, along this line of reasoning, the ’132 Patent requires only grill support, not attachment, with support being a broader term than attachment. Appeal Br. 16-17. Appellant contends that the ’132 Patent “makes clear that the invention is directed to an apparatus for supporting a grill - not a specific way of attaching the grill to the apparatus with magnets.” Id. at 17. Appellant further contends that, although a single embodiment or example of the invention is disclosed in the ’132 Patent with plural magnets, the term “example” implies that the invention is not meant to be Appeal 2021-004183 Application 16/110,448 Reissue of US Patent 9,771,132 B2 8 limited by that example, and “strongly suggests that the inventor anticipated more than one way of making the invention work.” Id. Appellant distinguishes the facts of this reissue from the facts of Industrial Chemicals because the water removed from the reissue claims in Industrial Chemicals was disclosed in the original patent as a required catalyzer for the claimed chemical process to work. Appeal Br. 19-20. Appellant reasons that the plural magnets removed during this reissue hold less importance than the water catalyzer of Industrial Chemicals. In the Answer, the Examiner cites Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed Cir. 2019) as supporting a position that the broadened reissue claim scope dues not meet the original patent requirement. Ans. 10-11. Appellant argues that Forum is distinguishable because the Forum court determined that the arbors removed from the claim were “central to the fixture design” and allowed for rapid and accurate machining. Reply Br. 3-4 (quoting Forum, 926 F.3d at 1349) (“[a] key difference between Forum and [this] reissue is that unlike Forum where the arbors were excluded from the reissue claims entirely, [Appellant’s] reissue claims [allow the presence of magnets]”). To satisfy the original patent requirement, it is not enough for an original specification to merely suggest or indicate the claimed invention; rather, the specification must “clearly and unequivocally disclose the newly-claimed invention as a separate invention.” Antares, 771 F.3d at 1362; Forum US, 926 F.3d at 1351-52. Similarly, the Supreme Court has opined that, “to warrant new and broader claims in a reissue, such claims must not be merely suggested or indicated in the original specification,” but must instead “appear from the original patent [to] constitute parts or portions of the invention [that] were intended or Appeal 2021-004183 Application 16/110,448 Reissue of US Patent 9,771,132 B2 9 sought to be covered.” Corbin Cabinet Lock Co. v. Eagle Lock Co., 150 U.S. 38, 42-43 (1893). Forum US holds that “‘[i]t must appear from the face of the instrument that what is covered by the reissue was intended to be covered and secured by the original’” patent. Forum US, 926 F.3d at 1351-52 (quoting Indus. Chems., 315 U.S. at 676). These combined holdings of Corbin Cabinet, Industrial Chemicals, Antares, and Forum US inform us that the original patent disclosure must “clearly and unequivocally” disclose the broadened claim subject matter, and the disclosure must be evidenced “from the face of” the original patent. Upon carefully reviewing the disclosure of the ’132 Patent in its entirety, we determine that the “plurality of magnets” is a critical element of the ’132 Patent, and that the ’132 Patent disclosure does not clearly and unequivocally disclose the subject matter of the reissue claims as a separate invention. The evidence supporting our determination is as follows. While the ’132 Patent is entitled “Floating Apparatus for Supporting a Grill,” it indeed discloses a single embodiment that includes plural magnets that would be understood to aid in supporting the grill. See ’132 Patent 3:18-21 (“The floating apparatus for supporting a grill 10 further includes a plurality of magnets 60 disposed within the middle segment 58 of the upper support 52 of each of the right grill support 46 and the left grill support 48.”). While Figures 1-5 of the ’132 Patent are described as “an example of the instant floating apparatus for supporting a grill” (’132 Patent 2:54-56), the magnets shown and discussed are not referred to as exemplary or optional. The ’132 Patent also states that “[v]arious types of grill support apparatuses are known in the prior art” but what has been needed is, inter alia, “a plurality of magnets disposed within a middle segment of the upper support of each of the right grill support and the left grill support.” Id. at 1:22-35. The subsequent Appeal 2021-004183 Application 16/110,448 Reissue of US Patent 9,771,132 B2 10 disclosure of the ’132 Patent implies that, because the grill is “securable to the plurality of magnets,” the float “thus allows a user to grill while conveniently remaining in a body of water” such as “sandbars, lazy rivers, and pools.” See id. at 1:36-41. Thus, the ’132 Patent disclosure may not explicitly set forth criticality of plural magnets, but discloses that the plural magnets are “needed” in supporting a grill in moving bodies of water and implies that its design improves upon known prior art grill support apparatuses. For these reasons, we sustain the rejection under 35 U.S.C. § 251. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 4, 8, 10-13, 19-22 112(b) Indefiniteness 4, 8, 10-13, 21, 22 19, 20 4, 8, 10-14, 17-22 251 Improper Broadening, Reissue 4, 8, 10-14, 17-22 Overall Outcome: 4, 8, 10-14, 17-22 TIME PERIOD FOR RESPONSE No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED