Appeal No. 2002-1761
Application No. 09/169,757
examiner’s exact reasoning for concluding that the reference
discloses each and every claimed element and/or step.
Moreover, appellant reasonably questioned the claimed step
of “determining at the adjunct processor the at least one
designated destination server for the subscriber,” arguing that
Pepe makes no such determination because one must always use the
PCI server in Pepe. Yet, the examiner makes no response,
preferring to remain silent in the response section of the
answer. Since the examiner never particularly pointed out, in
Pepe, what the examiner considers to be the claimed “designated
destination server” and the claimed “adjunct processor,” and now
remains silent in the face of appellant’s argument that the
claimed “determining” step is not disclosed by Pepe, we are at a
loss as to adopting any reasoning which would sustain the
examiner’s position.
Accordingly, we will not sustain the rejection of claims 8-
14 and 16-26 under 35 U.S.C. § 102(b) because to do so, we would
need to speculate as to the whether Pepe does, in fact, provide
for each and every claimed step, and we would need to speculate
as to the examiner’s rationale with regard to how Pepe allegedly
meets these claim limitations. A proper rejection under
35 U.S.C. § 102(b) may not be based on such speculation.
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