Today, December 12, 2018, in In re Tropp, the Federal Circuit vacated and remanded a decision by the U.S. Patent and Trademark Office's Patent Trial and Appeal Board affirming the Examiner's rejection of claims 29-53 of U.S. Application No. 13/412,233 for lack of sufficient written description under 35 U.S.C. § 112.  In vacating the Board's determination, the Court found that the Board had erred in its analysis.

The claims of the '233 application are directed to a set of locks for securing luggage and methods of using that set of locks, wherein the locks have two components:  a combination lock portion for use by travelers, and a master key portion for use by a luggage-screening entity, and wherein the set of locks has at least two subsets with a different number of dials on the combination lock portion.

Representative claim 29 recites:

29.  A set of locks for securing travelers' luggage while facilitating an entity’s authorized luggage-screening of luggage that the travelers have locked with said locks, without breaking the locks or the luggage, wherein the set comprises at least a first subset and a second subset each comprising plural locks, each lock in each of the first and second subsets having a combination lock portion for use by the travelers to lock and unlock the lock and in addition having a master key portion for use by the luggage-screening entity to unlock and re-lock the lock while the combination lock portion of the same lock remains in a locked state, wherein the same master key unlocks the master key portion of each lock in the first and second subsets, and different locks of the first and second subsets have combination lock portions with different plural numbers of dials, wherein:

the master portion of each lock in the first and second subsets of locks is configured for the same master key to unlock and re-lock the lock for the authorized luggage-screening independently of a locked state of the combination lock portion of the same lock;

the combination lock portion of each lock in the first and second subsets of locks is configured to unlock and re-lock the lock independently of a locked state of the master key portion of the same lock, using respective different combination dial settings of the plural number of dials as selected by of for the travelers;

each lock of a first subset of plural locks and a second subset of plural locks of the locks in the set has two or more combination lock dials; the number of dials in each lock of the first subset differs from the number of dials in each lock of the second subset; and

each lock in the set has the same prominent indicia configured to uniquely differentiate the locks of the set from locks that are not configured for the luggage-screening entity to unlock and re-lock with the same master key for said authorized luggage-screening by said entity.

The '223 application is a continuation of U.S. Application No. 10/756,531, which is a continuation-in-part of U.S. Application No. 10/706,500.  Both the '223 and '500 applications describe:

[A] special lock having a combination lock portion and having a master key lock, the master key lock portion for receiving a master key that can open the master key lock portion of any special lock of this type, the special lock designed to be applied to an individual piece of airline luggage.

However, the '223 application (but not the '500 application) also discloses that "[t]he phrase 'any special lock of this type' is intended to include special locks having a multiplicity of sub-types, such as different sizes, different manufacturing designs or styles, etc."

Before the Board, the Appellant relied on the language only found in the '233 application.  The Board, however, determined that the specification failed to provide sufficient written description support for the claims because it did not describe a "set of locks" with various "subsets," and only described a single special lock with different embodiments.

In vacating the Board's decision, the Federal Circuit noted that the Board's entire discussion of the additional language found only in the '233 application was contained in a footnote in the Board's decision that reads as follows:

Priority Application 10/756,531, now US 8,145,576, does describe "'any special lock of this type' is intended to include special locks having a multiplicity of sub-types, such as different sizes, different manufacturing designs or styles, etc."  (Col. 4, ll. 21-24), but Application 10/756,531 is a [continuation-in-part] of US'537.  We find this description constitutes at least part of the added new matter of the continuation-in-part application.

The Appellant argued that the footnote demonstrated that the Board had disregarded the additional language because it mistakenly concluded that the additional language constituted new matter.  Although the Court found the footnote to be confusing "at best," it determined that the Appellant's "interpretation is the most plausible one" for the Board's decision, and the Court pointed out that "[e]ven if [the additional language] is new matter, the language in the '233 application as filed is relevant to assessing compliance with the written description requirement."  The Court concluded that the Board failed to consider the additional language in its written description analysis, and therefore erred in its analysis.  The Court therefore vacated the Board's decision and remanded for consideration of written description in light of the entire '233 specification.

In re Tropp (Fed. Cir. 2018)
Nonprecedential disposition
Panel: Chief Judge Prost and Circuit Judges Clevenger and Moore
Opinion by Circuit Judge Moore