Ex parte KIM et al.

Board of Patent Appeals and Interferences

Sep 11, 1998

08133416 (B.P.A.I. Sep. 11, 1998)

Application for patent filed October 8, 1993.1
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1)
was not written for publication in a law journal and (2) is not
binding precedent of the Board.
Paper No. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte HYUNG-KUN P. KIM,
ROBERT A. CORDERY and
LEON A. PINTSOV
_____________
Appeal No. 95-4884
Application 08/133,4161
______________
ON BRIEF
_______________
Before URYNOWICZ, THOMAS and HAIRSTON, Administrative Patent
Judges.
THOMAS, Administrative Patent Judge.
DECISION ON APPEAL
Appeal No. 95-4884
Application 08/133,416
2
Appellant’s have appealed to the Board from the examiner’s
final rejection of claims 1 to 4. Claims 5 to 7 have been
allowed by the examiner.
Representative claim 1 is reproduced below:
1. A method for key management for controlling the keys
used in encoding information to be printed on a mailpiece for
validating the mailpiece comprising the steps of generating a
predetermined number of keys, assigning one of said keys to a
particular postage meter by means of a determined relationship
associated with the postage meter, said relationship being
derived as a predetermined function corresponding to the
particular postage meter, and installing the assigned key in the
particular postage meter.
The following references are relied on by the examiner:
Edelmann et al. (Edelmann) 4,757,537 Jul. 12, 1988
Iijima 5,202,922 Apr. 13, 1993
Claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Edelmann. Claims 2 and 4 stand rejected
under 35 U.S.C. § 103. As evidence of obviousness, the examiner
relies upon Edelmann in view of Iijima.
Rather than repeat the positions of the appellants and the
examiner, reference is made to the brief and the answer for the
respective details thereof.
OPINION
We reverse the rejection of claims 1 and 3 under 35 U.S.C.
Appeal No. 95-4884
Application 08/133,416
3
§ 102. There appears to be no dispute between the appellants and
the examiner regarding the teachings of Edelmann. The sole
dispute appears to resolve around interpreting the language
common among independent claims 1 and 3 on appeal.
We quote the following from page 4 of the brief:
In the Final Office Action the Examiner
has agreed with Applicants interpretation of
Edelmann et al. but has disagreed with the
scope of the following words that are part of
both claims 1 and 3:
generating a predetermined number of
keys,assigning one of said keys to a
particular postage meter...
The Examiner has found that such words
include generating a single key and assigning
the single key to a meter. Applicant has
asserted that the such words clearly do not
support the Examiner’s interpretation.
Although the words "generating a
predetermined number of keys" may be
interpreted as including the generation of a
single key, when combined with the words
"assigning one of said keys to a particular
postage meter" such interpretation is clearly
incorrect. The predetermined number of keys
generated in claims 1 and 3 must be more than
one key.
....Clearly, when the step of "generating
a predetermined number of keys" is combined
with the step of "assigning one of said keys"
only one interpretation is possible, i.e.,
Appeal No. 95-4884
Application 08/133,416
4
that more than one key is being generated in
the methods of claims 1 and 3. No other
interpretation is possible.
We fully agree with appellants’ positions set forth in the
above quoted material. We interpret the common language among
independent claim 1 in the same manner generally asserted by
appellants. Edelmann from our study clearly generates only one
set of keys. Even though the language of generating a
predetermined number of keys may be construed to generate only a
single key, as asserted by appellants, when this language is
taken in the context of the next succeeding clause of independent
claims 1 and 3 of assigning one of said generated "keys" to a
particular postage meter, claims 1 and 3 indicate to the reader
that a plurality of keys must necessarily have been generated in
the generation of a predetermined number of keys clause of each
claim on appeal. Inasmuch as the examiner has set forth no
additional arguments in the answer and both parties are in
agreement with our view that Edelmann teaches only the generation
of a single set of keys at a time, the rejection of claims 1 and
3 must be reversed. As such, the rejection of their respective
dependent claims 2 and 4 under 35 U.S.C. § 103 must also be
reversed.
Appeal No. 95-4884
Application 08/133,416
5
In view of the foregoing, the decision of the examiner
rejecting claims 1 to 4 is reversed.
REVERSED
)
STANLEY M. URYNOWICZ, JR. )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES D. THOMAS )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
KENNETH W. HAIRSTON )
Appeal No. 95-4884
Application 08/133,416
6
Administrative Patent Judge )

sd
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