Appeal No. 2001-1760
Application No. 09/259,890
Claim 1 is representative of the subject matter on appeal and reads as follows:
1. A method for manufacturing an integrated lead suspension for a hard disk drive, comprising:
(a) providing a metal support layer, a pair of dielectric layers, and a pair of conductor
layers;
(b) forming a void in at least one of the dielectric layers; then
(c) laminating each of the layers together to form a laminate such that the support layer
and the conductor layers are separated from one another by at least one of the
dielectric layers;
(d) etching at least one of the conductor layers of the laminate of step (c) to form traces;
and then
(e) deforming at least one of the traces through said void toward and into contact with
one of the support layer and the other of the conductor layers to form a shunt
therebetween.
Claims 1 through 13 stand rejected under 35 U.S.C. § 112, first paragraph, as lacking an
enabling disclosure for the subject matter presently claimed.
We reverse.
Under 35 U.S.C. § 112, first paragraph, the examiner has the initial “burden of giving
reasons, supported by the record as a whole, why the specification is not enabling... Showing that
the disclosure entails undue experimentation is part of the PTO’s initial burden...” In re Angstadt,
537 F.2d 498, 504, 190 USPQ 214, 219 (CCPA 1976). In determining whether any given disclosure
would require undue experimentation, the examiner must consider not just the breadth of the claims,
but also the quantity of experimentation necessary, the amount of direction or guidance presented,
the presence or absence of working examples, the nature of the invention, the state of the prior art,
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