As summer is approaching, grilling is top of mind for many. And for a couple of Shark Tank participants, not just any grilling will do… you need to be grilling on the water with Float’n’Grill.

Their patent (US 9,771,132) was apparently prosecuted to cover less than than they thought they invented, and a re-issue application was then filed. Re-issue applications not only have to make it through another round of examination, but the doctrine of re-capture looms large whenever the claims are broadened from what was issued.

Here, claim 4 was at issue:

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

The applicant was trying to remove limitations related to magnets. The examiner rejected the claim as an improper broadening under the theory 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. According to the examiner, the specification gave no indication that the magnets were optional. The Applicant responded that the specification never explicitly stated that the magnets were critical, and that the magnets were not needed to distinguish over prior art during prosecution.

The PTAB did not agree with the applicant, and began with a summary of the applicable rule (citations omitted):

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.” 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 sought to be covered.” 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. These combined holdings of Corbin Cabinet, Industrial Chemicals, Antares, and Forum US informs 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. While Figures 1–5 of the ’132 Patent are described as “an example of the instant floating apparatus for supporting a grill”, 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.” The subsequent 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.” 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.

Appeal 2021-004183, Application 16/110,448

So, while the applicants were able to secure help form the Sharks, they were unable to come back to the USPTO and later broaden their claims - not because they were blocked by prior art, but because they realized what they wanted to cover too late.

Sometime getting a patent through the Office quickly might seem like a success. Keeping the application alive through a continuation is cheap insurance to enable adding or modifying claims down the road with much more ease as compared to a re-issue.

Lookout for our next post on the benefits of a continuing application.