NOTE: This disposition is nonprecedential.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, Washington, 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. Because 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 luggagescreening 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;
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 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.

J.A. 29–30. 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. 

The Board found 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,” 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 continuationin-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 “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.” 

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 grandparent ’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:

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 
IN RE: TROPP 5

[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.

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 interpretation 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 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.”). 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 specification.

VACATED AND REMANDED

COSTS

No costs.