Ex Parte RICHARDS - Page 9




          Appeal No. 2000-1508                                       Page 9           
          Application No. 08/810,442                                                  


               “Analysis begins with a key legal question -- what is the              
          invention claimed?”  Panduit Corp. v. Dennison Mfg. Co., 810 F.2d           
          1561, 1567, 1 USPQ2d 1593, 1597 (Fed. Cir. 1987).  Here, claim 10           
          recites in pertinent part the following limitations: “key (SK)              
          must be entered onto said bus in encrypted form to be accepted by           
          a computation means.”  Accordingly, the limitations require                 
          checking a key on a bus to determine whether the key is encrypted           
          before the key can be accepted.                                             


               The next question is whether the claimed invention is                  
          enabled.  Figure 8, cited by the appellant, “illustrates the                
          decryption process occurring at the customer’s site.”  (Spec.               
          at 20.)  In describing the decryption process, the appellant’s              
          specification merely mentions that “[k]ey SK is encrypted using             
          PK as a key, as indicated by phrase [sic] 56, and is decrypted in           
          block 23, using actual PK, on bus 63, to produce actual SK, on              
          bus 64.”  (Spec. at 21.)  The specification fails to mention, let           
          alone describe, checking a key on a bus to determine whether the            
          key is encrypted before the key can be accepted.  Therefore, we             
          affirm the rejection of claim 10 as non-enabled.                            










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