Federal Circuit disposition — 17-2503

N OTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: DAVID TROPP,
Appellant
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2017-2503
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/412,233.
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Decided: December 12, 2018
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P AUL WHITFIELD HUGHES , Mayer Brown LLP, Wash-
ington, DC, argued for appellant. Also represented by
J ONATHAN W EINBERG.
MEREDITH H OPE SCHOENFELD, Office of the Solicitor,
United States Patent and Trademark Office, Alexandria,
VA, argued for appellee Andrei Iancu. Also represented
by T HOMAS W. K RAUSE, MAI-T RANG D UC D ANG, C OKE
MORGAN STEWART .
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Before P ROST , Chief Judge, CLEVENGER and MOORE,
Circuit Judges.
MOORE, Circuit Judge.

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IN RE: TROPP 2
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. Be-
cause 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 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 sec-
ond 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, where-
in the same master key unlocks the master key
portion of each lock in the first and second sub-
sets, and different locks of the first and second
subsets have combination lock portions with dif-
ferent 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;

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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 indi-
cia 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 lug-
gage-screening by said entity.
J.A. 29–30. The locks have two components: a combina-
tion 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 pro-
vide 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).
D ISCUSSION
Sufficiency of written description is a question of fact,
which we review for substantial evidence. Gen. Hosp.

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IN RE: TROPP 4
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 continuation-
in-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 “spe-
cial 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 grand-
parent ’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

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IN RE: TROPP 5
[continuation-in-part] of US’537. We find this de-
scription constitutes at least part of the added
new matter of the continuation-in-part applica-
tion.
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 interpreta-
tion 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 re-
quirement. 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 specifica-
tion.
VACATED AND REMANDED
COSTS
No costs.

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