Appeal No. 1998-2500
Application No. 08/276,154
from the track changer and without subsequent instructions from the controller.
(Emphasis added for the added material.)
Claim 17, as originally filed, contained the limitation that “a servo positioner for positioning
the head based on a destination signal indicating the destination of a current track.”
Appellants argue that original claims 18-20 and the supporting disclosure at pages 10-15 of
the specification support the language of amended claim 17. (See brief at page 16 and
discussion of the supporting disclosure at pages 16-18 of the brief.) We agree with
appellants that the originally filed claims 18-20 contain more specific limitations than the
language of amended claim 17 and the supporting material at pages 10-15 supports the
language of amended claim 17. Therefore, there was support in the original specification
and the originally filed claims 18-20 for claim 17 as amended. Since the examiner has only
questioned the inclusion of new matter in the amendment to claim 17, and we find that the
material claimed was supported in the original disclosure and claims, there cannot be a
question of written description. Here, we agree with appellants that the specification, as
originally filed, would have conveyed to persons of ordinary skill in the art, to which the
invention was directed, that appellants invented processes including those limitations recited
in claim 17, as amended. Therefore, we cannot sustain the examiner’s rejection based upon
a lack of written description.
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