Even If New Matter, Entire Application Relevant to Assessing Compliance with Written Description Requirement

By Gene Quinn & Steve Brachmann
January 3, 2019

Entire Application Relevant When Assessing Written DescriptionSeveral weeks ago, in a non-precedential opinion, the Court of Appeals for the Federal Circuit issued a decision in In re: David Tropp, which vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB). The PTAB decision had affirmed an examiner’s rejection of a patent application covering a luggage inspection technology. The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Raymond Clevenger and Kimberly Moore determined the PTAB erred in its written description analysis by failing to consider all of the language of the specification as filed when determining whether there was sufficient support for the claimed invention.

The patent application at issue is U.S. Patent Application No. 13/412,233, titled Method of Improving Airline Luggage Inspection, was filed in March 2012. The application covers a method of improving airline luggage inspection by making the inspection secure yet non-intrusive. The innovation described uses a special lock having a combination, but which is also unlockable by a master key that can be provided to luggage screening authorities. According to the patent application, the invention addresses a “compelling and immediate need” for luggage inspection methods that don’t damage the owner’s combination lock while increasing the ease of inspecting luggage during airport luggage screening.

In February 2015, the patent examiner issued a final rejection of all pending claims for failing to comply with the written description requirement of 35 U.S.C. § 112(a). The examiner had determined that the four independent claims of the patent and all of their dependent claims lacked support and the written disclosure of the invention in the specification did not demonstrate that the applicant had possession of the claimed subject matter at the time of filing. Specifically, the examiner found that the disclosure simply states special lock types having a multiplicity of subtypes such as size, designs and style, and that this would not lead one skilled in the art to understand the specific meaning of the different combinations contemplated by the inventor.

After being rejected, Tropp appealed the patent examiner’s findings to the PTAB, which issued a decision on appeal affirming the patent examiner’s rejection under Section 112. In affirming the rejection, the PTAB rejected Tropp’s arguments that the specification makes clear that the phrase “any special lock of this type” was intended to include special locks having a multiplicity of sub-types. In reviewing the present specification as well as the patent application to which the ‘233 patent application claims priority, the PTAB found no description of a set of locks where the set comprised first and second subsets, each comprising plural locks and each lock having a combination lock portion for use by travelers and a master key portion for use by the luggage-screening entity. The PTAB found that, at best, the specification only describes “special lock” in terms of its components and that nowhere in its the specification are the words “subset” or “set of locks” used. While the PTAB sustained the examiner’s rejections under Section 112, the Board determined that the examiner did err in rejecting various claims under Section 101 and Section 103.

On appeal to the Federal Circuit, the panel in an opinion authored by Judge Moore, found that both the ‘233 patent application and the priority patent application referred to a special lock having combination lock and master key lock portions. The Court further found the ‘233 application’s specification further stated that the phrase “any special lock of this type” included a multiplicity of sub-types, agreeing with Tropp’s argument before the PTAB. The PTAB’s only mention of this language was in a footnote, concluding that the new language wasn’t relevant as it was new matter not appearing in the grandparent application. The Federal Circuit, however, agreed with Tropp that the footnote evidenced that the PTAB erroneously ignored this language and found that such language was not relevant to assessing compliance with the written description requirement.

“Even if it is new matter, the language in the ’233 application as filed is relevant to assessing compliance with the written description requirement,” Judge Moore wrote. “The Board’s failure to consider this language was erroneous.”

On remand, the Federal Circuit ordered the PTAB to consider the written description based upon the entire specification.

The Author

Gene Quinn

Gene Quinn is a Patent Attorney and Editor and President & CEO ofIPWatchdog, Inc.. Gene founded IPWatchdog.com in 1999. Gene is also a principal lecturer in the PLI Patent Bar Review Course and Of Counsel to the law firm of Berenato & White, LLC. Gene’s specialty is in the area of strategic patent consulting, patent application drafting and patent prosecution. He consults with attorneys facing peculiar procedural issues at the Patent Office, advises investors and executives on patent law changes and pending litigation matters, and works with start-up businesses throughout the United States and around the world, primarily dealing with software and computer related innovations. is admitted to practice law in New Hampshire, is a Registered Patent Attorney and is also admitted to practice before the United States Court of Appeals for the Federal Circuit. CLICK HERE to send Gene a message.

Gene Quinn

Steve Brachmann is a freelance journalist located in Buffalo, New York. He has worked professionally as a freelancer for more than a decade. He writes about technology and innovation. His work has been published by The Buffalo News, The Hamburg Sun, USAToday.com, Chron.com, Motley Fool and OpenLettersMonthly.com. Steve also provides website copy and documents for various business clients and is available for research projects and freelance work.

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There are currently 1 Comment comments.

  1. Dave Savage January 4, 2019 10:04 am

    Gene, I encourage you to create versions or additional statements at the beginning of an article that makes it more relevant to independent inventors.

    I have saved this article, with your credit, and added the following sentences:

    Can you, or your investors, afford the many expenses in potential appeal(s) of a rejection of your patent application?
    Even if investors can afford it, are they willing to invest in these costs with the level of litigation risk?
    Example below.