Appeal No. 1999-2107 Page 13
Application No. 08/926,299
3
is “a thin mat or cushion: as . . . a guard worn to shield body parts against impact.” Thus,
“inflatable pad means” is, in and of itself, a specific structural element which is being used
in accordance with its definition, that is, for providing cushioning protection against impact
and shock, and therefore it does not fall within the scope of the sixth paragraph of Section
112 as would “means for providing cushioning protection against impact and shock,” for
example.
In view of the foregoing, it is our opinion that the subject matter recited in application
claim 34 is the same or substantially the same as that of patent claim 6. In this regard, the
“inflatable pad means . . . attached to said tennis type shoe” of claim 34 corresponds to the
“inflatable bladder disposed within said upper” of patent claim 6. With regard to function or
use, application claim 34 requires that the pad means provide cushioning protection
against impact and shock, but does not specify where on the shoe it need be located, and
the bladder of patent claim 6 inherently would provide such protection in its location on the
shoe upper, along with its disclosed function of tightening the shoe on the user’s foot.
Application claim 37, which depends from claim 34, states that the pad means is located
in the shoe upper, which is exactly where the bladder is located in patent claim 6. We
therefore will sustain the Section 135(b) rejection of claims 34 and 37.
3See, for example, Merriam Webster’s Collegiate Dictionary, Tenth Edition, 1996,
page 834.
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