Appeal No. 97-3173
Application No. 08/462,310
Thus, even if Austin were modified in view of Bernier and
Strickland, as set forth in the rejection, all the limitations
of claim 43 would not have been suggested by the applied prior
art.5
Even if we agreed with the examiner that Austin would
have suggested locating spikes in the shank section, we still
could not sustain the stated rejection. In this regard, claim
43 requires "a single frame embedded in the sole and extending
across all sections . . . wherein the frame further includes
rod shaped ribs that interconnect each of the spike sockets to
at least two other spike sockets." The examiner acknowledges
that Austin does not show a frame including rod shaped ribs
that interconnect each of the spike sockets to at least two
other spike sockets (answer, page 4). To solve this
deficiency in Austin, the examiner relies on Strickland which
is described as teaching
5The examiner also refers to U.S. Patent No. 2,416,526 (Koenig) as
showing spike sockets extending in the shank section (answer, page 6).
However, the examiner has not included this reference in the statement of the
rejection. Where a reference is relied on to support a rejection, whether or
not in a minor capacity, there is no excuse for not positively including the
reference in the statement of the rejection. In re Hoch, 428 F.2d 1341, 1342
n.3, 166 USPQ 406, 407 n.3 (CCPA 1970). See also Ex parte Raske, 28 USPQ2d
1304, 1305 (Bd. Pat. App. & Int. 1993). Accordingly, we have not considered
the teachings of Koenig in reviewing the merits of the appealed rejection.
6
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