NOTE: This disposition is nonprecedential.
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: DAVID TROPP,
`Appellant
`______________________
`
`2017-2503
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. 13/412,233.
`______________________
`
`Decided: December 12, 2018
`______________________
`
`PAUL WHITFIELD HUGHES, Mayer Brown LLP, Wash-
`ington, DC, argued for appellant. Also represented by
`JONATHAN WEINBERG.
`
` MEREDITH HOPE SCHOENFELD, Office of the Solicitor,
`United States Patent and Trademark Office, Alexandria,
`VA, argued for appellee Andrei Iancu. Also represented
`by THOMAS W. KRAUSE, MAI-TRANG DUC DANG, COKE
`MORGAN STEWART.
` ______________________
`
`Before PROST, Chief Judge, CLEVENGER and MOORE,
`Circuit Judges.
`MOORE, Circuit Judge.
`
`
`
`United States Court of Appeals
`for the Federal Circuit
`______________________
`
`IN RE: DAVID TROPP,
`Appellant
`______________________
`
`2017-2503
`______________________
`
`Appeal from the United States Patent and Trademark
`Office, Patent Trial and Appeal Board in No. 13/412,233.
`______________________
`
`Decided: December 12, 2018
`______________________
`
`PAUL WHITFIELD HUGHES, Mayer Brown LLP, Wash-
`ington, DC, argued for appellant. Also represented by
`JONATHAN WEINBERG.
`
` MEREDITH HOPE SCHOENFELD, Office of the Solicitor,
`United States Patent and Trademark Office, Alexandria,
`VA, argued for appellee Andrei Iancu. Also represented
`by THOMAS W. KRAUSE, MAI-TRANG DUC DANG, COKE
`MORGAN STEWART.
` ______________________
`
`Before PROST, Chief Judge, CLEVENGER and MOORE,
`Circuit Judges.
`MOORE, Circuit Judge.
`
`
`
`2
`
`IN RE: TROPP
`
`David Tropp appeals a Patent Trial and Appeal Board
`decision affirming the examiner’s rejection of claims 29–
`53 of U.S. Patent App. No. 13/412,233 for lack of sufficient
`written description support under 35 U.S.C. § 112. Be-
`cause the Board erred in its analysis, we vacate and
`remand.
`
`BACKGROUND
`The claims, which are not originally filed claims, cover
`a set of locks for securing travelers’ luggage and methods
`of using that set of locks. Claim 29 has been treated as
`representative. It 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 sec-
`ond 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, where-
`in the same master key unlocks the master key
`portion of each lock in the first and second sub-
`sets, and different locks of the first and second
`subsets have combination lock portions with dif-
`ferent 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;
`
`
`
`IN RE: TROPP
`
`
`3
`
`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 indi-
`cia 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 lug-
`gage-screening by said entity.
`J.A. 29–30. The locks have two components: a combina-
`tion 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.
`The Board found that the specification failed to pro-
`vide sufficient written description support for the claims
`because it did not describe a “set of locks” with various
`“subsets,” but instead described a single special lock with
`different embodiments. Mr. Tropp timely appealed. We
`have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
`DISCUSSION
`Sufficiency of written description is a question of fact,
`which we review for substantial evidence. Gen. Hosp.
`
`
`
`4
`
`IN RE: TROPP
`
`Corp. v. Sienna Biopharmaceuticals, Inc., 888 F.3d 1368,
`1371 (Fed. Cir. 2018). However, failure to consider the
`totality of the record in assessing written description
`constitutes legal error. In re Alton, 76 F.3d 1168, 1176
`(Fed. Cir. 1996).
`The ’233 application was filed as a continuation of
`U.S. Patent App. No. 10/756,531, which is a continuation-
`in-part of App. U.S. Patent No. 10/706,500. The ’531
`application issued as U.S. Patent No. 8,145,576, and the
`’500 application issued as U.S. Patent No. 7,021,537. The
`’537 patent claims methods of “improving airline luggage
`inspection” using “a special lock.”
`The ’233 and ’500 specifications both refer to a “spe-
`cial 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.”
`See J.A. 22, 57. The ’233 specification further states
`“[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.” J.A. 22. This language is not in the grand-
`parent ’500 specification. Mr. Tropp’s primary argument
`before the Board relied heavily on this language. See
`J.A. 77–78.
`The Board’s only direct discussion of the additional
`language in the ’233 specification is in a footnote in its
`discussion of written description. The footnote states in
`its entirety:
`10/756,531, now US
`Priority Application
`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
`
`
`
`IN RE: TROPP
`
`
`5
`
`[continuation-in-part] of US’537. We find this de-
`scription constitutes at least part of the added
`new matter of the continuation-in-part applica-
`tion.
`J.A. 7 n.2. Mr. Tropp argues this footnote shows the
`Board disregarded the language that only appears in the
`’233 specification by mistakenly concluding it was not
`relevant because it was new matter. This footnote is at
`best confusing. Indeed, we believe Mr. Tropp’s interpreta-
`tion is the most plausible one. Even if it is new matter,
`the language in the ’233 application as filed is relevant to
`assessing compliance with the written description re-
`quirement. 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.”). The Board’s failure to
`consider this language was erroneous.
`CONCLUSION
`The Board’s footnote indicates it did not consider the
`entire ’233 specification in assessing whether there was
`sufficient written description support. Therefore, we
`vacate the Board’s decision and remand for consideration
`of written description in light of the entire ’233 specifica-
`tion.
`
`VACATED AND REMANDED
`COSTS
`
`No costs.
`
`
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