Ex parte COMBE - Page 5




                 Appeal No. 1998-0820                                                                                                                   
                 Application No. 08/274,771                                                                                                             


                 "the ability of a component to conduct electricity."   We find                               5                                         
                 in view of the ordinary meaning of the term "conductive,"                                                                              
                 Appellant's claim 2 meets the requirements of 35 U.S.C.§ 112,                                                                          
                 second paragraph.                                                                                                                      
                          We turn next to the issue of the rejection of claims 1-4                                                                      
                 and 7-8 for lack of written description.  There are two issues                                                                         
                 presented to us: (1) whether the claims are supported by                                                                               
                 written description in the original filed specification and                                                                            
                 (2) whether amendments to the specification constitute new                                                                             
                 matter under                                                                                                                           
                 35 U.S.C. § 132.                                                                                                                       
                          With respect to the written description of claims in the                                                                      
                 originally filed application, the Examiner argues on page 6 of                                                                         
                 the answer that "grounding means for connecting said rotating                                                                          
                 magnetic rigid disk to a disk drive ground and the actuator to                                                                         
                 provide electrostatic discharge (ESD) protection to said MR                                                                            
                 head,  wherein the voltage potential between said MR head and                                                                          
                 said rotating magnetic rigid disk is limited to two or three                                                                           
                 volts" was not properly described under 35 U.S.C.§ 112, first                                                                          
                 paragraph.                                                                                                                             

                          5See Webster's New World Dictionary 290 (3d ed. 1986).                                                                        
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