Ex parte COMBE - Page 8




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


                 Because the hub is attached to the motor shaft spindle, the                                                                            
                 spindle would also be grounded.                                                                                                        
                          Appellant also directs our attention to Figures 2 and 6.                                                                      
                 Appellant argues that reference numeral 25 points to the end                                                                           
                 of grounded actuator arm 18 which includes heads 20 and 22.                                                                            
                 In addition, Appellant argues that the originally filed Figure                                                                         
                 6 has reference numeral 25 pointing to a box around MR read                                                                            
                 head 20.  Appellant concludes that the skilled artisan would                                                                           
                 read from these figures "that something enveloping or                                                                                  
                 surrounding the MR read head was grounded."  Finally,                                                                                  
                 Appellant notes that the originally filed specification limits                                                                         
                 the voltage difference between MR head 20 and hard disk 14 "to                                                                         
                 not exceed 2-3 volts."6                                                                                                                
                          We agree and find that while the specification did not                                                                        
                 identically describe the claimed limitations at issue here,                                                                            
                 persons of ordinary skill in the art would have recognized                                                                             
                 from the passage found on page 6 as well as from Figures 2 and                                                                         
                 6, that Appellant had possession of "grounding means for                                                                               
                 connecting said rotating magnetic rigid disk to a disk drive                                                                           
                 ground and the actuator to provide electrostatic discharge                                                                             

                          6See page 12 of the specification.                                                                                            
                                                                         -8-                                                                            




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