Appeal No. 1999-2107 Page 9
Application No. 08/926,299
Turning first to independent claim 27, this claim recites, inter alia, an inflatable pad
attached to the shoe, a built-in pump attached to the shoe, “a passage within the shoe” and
establishing fluid communication between the pump and the pad, and “a one-way valve
attached to the pump.” The appellant argues that claim 27 is more detailed than Cohen’s
claim 6 in that the patent claim does not require that there be a passage “within the shoe”
or a “one-way valve” that is “attached to the pump.” In this regard, the appellant further
points out that in the Cohen specification the location of the passage 55 between the pump
and the pad is not described, and it is shown in Figure 3 as being on the outside of the
shoe. From our perspective, a comparison of the language of the two claims clearly
indicates that they do not recite the same subject matter, for the application claim contains
elements not found in the patent claim. Nor, in our view, is the subject matter substantially
the same, inasmuch as patent claim 6 is broad enough to include means other than a
passage “within” the shoe to provide the required communication between the bladder and
the pump, means other than a one-way valve for causing the air to be maintained in the
inflatable bladder and/or pump, and to allow this means to be located at a point other than
“attached” to the pump. We therefore agree with the appellant that these differences
cause claim 27 not to be directed to the same or substantially the same subject matter as
patent claim 6 and we will not sustain the rejection under Section 135(b).
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