Appeal No. 1999-2107 Page 8
Application No. 08/926,299
According to the examiner, all of the claims on appeal are rejected under 35 U.S.C.
§ 135(b), presumably because the appellant is claiming “the same or substantially the
same subject matter” as that claimed in the Cohen patent and did so more than one year
after the Cohen patent was granted, although the precise language used in Section 135(b)
is not stated or applied by the examiner. Moreover, the examiner has not informed us as
to which of the patent claims are in issue and has not provided an explanation as to why
each of the application claims sets forth "the same or substantially the same subject
matter" as a patent claim. Thus, we are left essentially to our own devices to evaluate each
claim.
At the outset, we find ourselves in agreement with the appellant that the only claim
that could be involved in this rejection is Cohen's claim 6, for the others contain limitations
that are far removed from the subject matter in the appellant’s claims. Claim 6 is a
Jepsen-type claim in which the components of an athletic shoe of the same general
construction as that of the appellant’s invention are recited in the preamble, and the
appellant has advanced no arguments directed to this portion of the claim. The
“improvement” provided in claim 6 comprises “an inflatable bladder disposed within said
upper and a pump substantially permanently affixed to said upper for inflating said bladder
with air.” The issue with regard to each of the appellant’s claims thus is whether it contains
“the same or substantially the same subject matter” as claim 6 of the patent.
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