Language From CIP Survives “New Matter” Challenge

Finding that the Patent Trial and Appeal Board failed to consider the entire record, the Court of Appeals of the Federal Circuit vacated and remanded for further analysis the Board’s decision affirming a rejection of claims for lack of sufficient written description support under 35 U.S.C. § 112. In re: David Tropp, 2017-2503, (Fed. Cir, Dec. 12, 2018.)

The PTAB affirmed an Examiner’s rejection of claims 29-53 of U.S. Patent Application 13/412,233 for lack of sufficient written description support under 35 U.S.C. § 112. David Tropp, the inventor, appealed.

Claim 29 was treated as representative and recites in part:

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 . . .

The Board found that the specification failed to provide sufficient written description support because it did not describe a “set of locks” with various “subsets,” but instead described a single special lock with embodiments.

The ‘233 patent application has the following lineage.

Relation

Application Number

Patent Number

Continuation Type

Grandparent

10/706,500

7,021,537

 

Parent

10/756,531

8,145,576

Continuation-in-part from ‘537 patent

‘233 patent application (in dispute)

13/412,233

 

Continuation from ‘576 patent

Each of the ‘233 and ‘500 applications refer to a “special lock having a combination lock portion and a master key lock . . .” The ‘233 application further includes the language “[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.,” which does not appear in the grandparent ‘500 application. Appellant Tropp’s argument relied on this language in the ‘233 specification to support the disputed claim language.

The Board, in its decision affirming the 35 U.S.C. § 112 rejection, included the following footnote:

Patent Application 10/756,531 . . . 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.” . . . 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.

Based on this footnote, Tropp argued that the Board had determined the supporting language in the ‘233 application to be new matter and disregarded it.

The Court found Tropp’s argument plausible and noted that even if the supporting language was new matter, it was still relevant to assessing compliance with the written description requirement. The new matter status would only be relevant in determining a priority date for the claim. The Board’s failure to consider this language was erroneous.

Lessons for Practice

Using the continuation-in-part can still be an effective tool to introduce new matter. Here, the Court did not reach to determining the whether the supporting language was new. Because it was first introduced in a CIP, it was coming in either way.

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