Docket No. 2017-2503
PROST, CLEVENGER, MOORE
December 12, 2018
Brief summary: Board decision affirming the examiner’s rejection of claims for lacking a sufficient written description under § 112 vacated and remanded because the Board did discuss in its opinion additional language appearing in the application in question that was not present in a parent application.
Summary: Mr. Tropp appealed Board decision affirming the examiner’s rejection of his claims relating to “[a] set of locks for securing travelers’ luggage while facilitating an entity’s authorized screening of luggage” for lacking a sufficient written description under § 112. The Board found that the specification did not sufficiently “describe a ‘set of locks’ with various ‘subsets,’ but instead described a single special lock with different embodiments.” The FC panel reviewed the PTAB’s decision for substantial evidence (“written description is a question of fact”) (Gen. Hosp., FC 2018), explaining that the “failure to consider the totality of the record in assessing written description constitutes legal error” (In re Alton, FC 1996). The application in question (13/412,233 (the ‘233 application)) was filed as a continuation (CON) of Ser. No. 10/756,531 (now US Pat. No. 8,145,576), which is a continuation-in-part (CIP) of Ser. No. 10/706,500 (now US Pat. No. 7,021,537). The FC panel opinion explains that “[t]he ‘537 patent” (the ‘500 application) “claims methods of ‘improving airline luggage inspection’ using ‘a special lock.’” The ‘233 specification, a CON of a CIP of the ‘537 patent, also “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.’” Mr. Tropp argued that the Board did not refer to this additional language and “mistakenly conclude[ed] it was not relevant because it was new matter.” The FC panel explained that “[t]he Board’s only direct discussion of the additional language in the ‘233 specification is a footnote in its discussion of written description” which “is at best confusing”, finding “Mr. Tropp’s interpretation” to be “the most plausible one.” Further, the FC panel stated, “[e]ven 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, FC 1994). It therefore found “[t]he Board’s failure to consider this language” to be erroneous and vacated and remanded the decision.