Locking Down Written Description and Continuations-in-Part

by Dennis Crouch

In re Tropp (Fed. Cir. 2018)

Despite the text of the 4th Amendment of the U.S. Constitution, our government has determined that US Citizens who want the privilege of travel-by-flight implicitly give up their rights of privacy.  I used to travel with a lock on my luggage.  Of course these days, that lock will likely be broken by Transportation Safety (TSA) officials in the search for bombs (and incidentally uncovering other contraband).

Tropp’s patent application is focused on a special set of luggage locks that help the TSA by providing a master key.  The application here is part of a portfolio that claims priority back to 2003-2004.  The 2003 application was followed by a continuation-in-part in 2004 that was then followed in 2012 by the present continuation-application.

During prosecution, Tropp rewrote his patent claims in this case to focus on “a set of locks” that each have dials for a traveler to use and a master key portion for TSA.  The claims require some differences among the set — splitting them into two subsets with different number of dials for locks in each subset.

During prosecution, the USPTO rejected the claims — finding that they lacked written description support.  Although the specification does describe embodiments with different numbers of dials, the PTAB held that the specification does not describe a “set of locks” that include both sets of embodiments.  This case fits within the line of written description cases where all of the elements of a claimed invention are described, but where the specification does not describe how to fit those various elements together.

On appeal, the Federal Circuit vacated-and-remanded — holding that the PTAB had failed to fully consider the additional specification provided by the continuation-in-part. Here, the CIP did add some info, but only obliquely — indicating that a single master-key could “include special locks having a multiplicity of sub-types, such as different sizes, different manufacturing designs or styles, etc.”

In its decision, the PTAB had seemly incorrectly refused to consider the added disclosure from the CIP — calling it “new matter.”   Of course, the whole point of filing a Continuation-in-Part application is to add new matter — totally permissible.   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.”).

Written description is a question of fact an so PTAB determination is ordinarily given deference on appeal. Here, however, the appellate panel identified the error as “failure to consider the totality of the record in assessing written description” — which is an error of law reviewed de novo on appeal.

On remand, the Board will reconsider the issue of written description — looking particularly to whether the new disclosure found in the CIP is sufficient to prove possession of the claimed “set of locks” invention.

= = = = =

I wonder whether Tropp will have a trademark problem. His patents are assigned to his small Brooklyn company “Iowa Hawkeyes LLC.”

11 thoughts on “Locking Down Written Description and Continuations-in-Part

  1. 2

    This may be academic, since a claim limited to a set of different locks would seem to easily avoid infringement by only marketing identical locks with the same combination dials [alternatively openable with a master key]?

  2. 1

    Congratulations to a diligent examiner here who read the spec and applied 112.
    If the applicant is now only relying on the filing date of the CIP for possible 112 written description of the invention, then additional prior art between the original an CIP date may be applicable. [Examiners are supposed to search for prior art up to the CIP date.] Even public disclosures of the invention by the inventor more than a year before the CIP filing date.

    1. 1.1

      Priority (earlier support) was not an issue in this appeal because the Board reversed the rejection over prior art. Actually, the Examiner found that the present specification (including the new matter) does not provide adequate written description. The Board adopted that finding. It’s likely the decision would have been affirmed (or not appealed) if the Board had left out one head-scratcher of a footnote.

    2. 1.2

      Paul, from the Patent Docs blog I copy below a paragraph which includes the text of a “Footnote” to Judge Moore’s decision. Note in particular the word “entire”.

      I do not understand the Footnote. Perhaps if I read the full Decision, the Footnote will make more sense.

      I’m thinking that this was a pre-AIA case. I’m thinking that the tension between WD and the precise filing date to which the claim in view is entitled will, in time, rise substantially for AIA cases, perhaps even to EPO-level strictness. Do you agree? From Patent Docs:

      “In vacating the Board’s decision, the Federal Circuit noted that the Board’s entire discussion of the additional language found only in the ‘233 application was contained in a footnote in the Board’s decision that reads as follows:

      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 [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.”

      That’s it.

      1. 1.2.1

        Max, I am not aware offhand of any statutory difference between pre and post AIA applications re the 112 “written description” requirement, or related CIP problems? Perhaps someone else does?
        The recent PTO emphasis on examiners applying both key aspects of 35 USC 112 in application examinations should logically increase rejections like this one for both such applications.

        1. 1.2.1.1

          Not a statutory text difference, Paul. I’m relying on my experience in a First to File environment, where priority contests between rival applicants are ever more frequent and ever higher in value, and so, with the march of time, are resolved by ever more painstaking textual analysis of the disclosure content of the patent application on its filing date. No other way is possible. There is no doubt that WD issues will therefore become ever more sensitive. Just wait and see.

          1. 1.2.1.1.1

            Max, in the U.S. not only did the AIA change to first inventor to file, it also ended PTO priority contests [interferences] for post-AIA applications or patents. Leaving only extremely rare “derivation” proceedings. Are you sure you are not referring to prior art arguments?

            1. 1.2.1.1.1.1

              Paul, I comment here as a way to improve my communication with US attorneys. I learn from replies like yours. Thanks.

              I am sure I am referring to prior art arguments.

              In First to File country, it is usual to find interlaced priority and filing dates between rival corporate applicants for the “same” invention. Each considers it filed first and that its filings are “prior art” to those of its rival.

              They can’t both be right. It takes opposition activity at the EPO to resolve the disagreement. That opposition activity focusses on minute textual (WD) analysis of the rival filings. Thus it is, that under FtF, “WD” law gets ever more refined.

              1. 1.2.1.1.1.1.1

                Paul’s post indicates that you are confusing prior art legal effects and written description legal effects.

                Your reply confirms that you are doing so.

                This casts shadows on your views of both prior art and of written description.

                Yes, one’s written description sets what may be considered prior art. But the legal effects (i.e., 112 versus 102/103) are distinct one from the other.

                1. Paul, anon, underlying my comments is the thought that what any given document “discloses” is relevant to the validity of any given patent claim. For novelty, the issue is whether the prior art reference enables the subject matter in it that is relied upon for the novelty attack. For priority, as of a date anterior to the filing date of the patent application that contains the claim, the issue is what the priority document “discloses” in support of the claim. For WD, the issue is what disclosure in the application as filed supports the claim.

                  The EPO has a consistent view of “disclosure” for all three legal questions, namely its “Gold Standard” under which the “disclosure” of a document is that which is “directly and unambiguously derivable” from it by the POSA. That EPO standard has now been adopted by the 38 Member States of the EPC, as well as widely in Asia. It’s a brutally demanding standard.

                  Now that the USA is FItF, I confidently expect that the trend in the courts of the USA on the notion of “disclosure” will be towards something like the EPO’s Gold Standard, because any other approach leads to inconsistencies and unequal treatment between rival applicants. We shall see.

                2. which is “directly and unambiguously derivable” from it by the POSA

                  Funny that, as we have gone round and round and round how your Sovereign has made their choice to not have a consistent POSA….

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