On December 12, 2018, the United States Court of Appeals for the Federal Circuit (“Federal Circuit” or “CAFC”), with Prost as Chief Judge, made a nonprecedential decision in In Re: David Tropp (appeal number 2017-2503), vacating and remanding the decision of the originating venue of the case, the Patent and Trial Appeal Board (“Board” or “PTAB”). The Board had affirmed the Examiner’s decision rejecting claims 29-53 in U.S. patent application number 13/412,233 (“the ’233 application”) under 35 U.S.C. 112 for lack of sufficient written description support. The Federal Circuit determined in their decision that the Board had erred in its analysis.

The claims in question are directed towards a set of locks for securing travelers’ luggage, and methods of using the set of locks. Claim 29, the representative claim, is reproduced below:

“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.”

Further, 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, like the Transportation Security Administration. The set of locks has at least two subsets with a different number of dials on the combination lock portion” (appeal number 2017-2503).

In the Board’s decision, it was found that the specification of the ‘233 application did not provide sufficient written description support by not describing “’a set of locks’ with various ‘subsets,’ but instead described a single special lock with different embodiments” (appeal number 2017-2503).

Of note is that the ’233 application is a continuation of U.S. patent application number 10/756,531 (“the ‘531 application,” now U.S. patent number 8,145,576), which is a continuation-in-part of U.S. patent application number 10/706,500 (“the ‘500 application,” now U.S. patent number 7,021,537). In each of these applications, the following description was included, directed to 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.”

Furthermore, the ‘233 application includes the following language not included in the ‘500 application, the grandparent application: “[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.” The Board addressed this only in a footnote, stating: “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, Mr. Tropp, presented the argument that the Board disregarded this, and mistakenly concluded this language as not relevant, being new matter. The Federal Circuit deemed this footnote to be “confusing” and believed the appellant’s interpretation to be “the most plausible one.”

The Federal Circuit continued, “Even if it is new matter, the language in the ’233 application as filed is relevant to assessing compliance with the written description requirement. Cf. Waldemar Link v. Osteonics Corp., 32 F.3d 556, 558 (Fed. Cir. 1994) (“Claims containing any matter introduced in the CIP are accorded the filing date of the CIP application. However, matter disclosed in the parent application is entitled to the benefit of the filing date of the parent application.”).”

Thus, the Board’s decision was vacated and remanded.

Full In re: David Tropp decision can be read here: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/17-2503.Opinion.12-12-2018.pdf

Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.