Ex parte COMBE - Page 9




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


          (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" as recited in                  
          claim 1 and thereby properly described under 35 U.S.C.§ 112,                
          first paragraph.                                                            
               On page 5 of the answer, Examiner asserts that ESD                     
          protection recited in claim 1 was "newly described."  However,              
          page 6, lines 24-28, of the specification as originally filed               
          describes grounding of both disk 14 and MR head 20 to drive 10              
          as a way of preventing damage by ESD to the read head.  Thus,               
          recitation of ESD protection recited in claim 1 was described               
          in the specification as originally filed.                                   
               The Examiner argues on page 4 of the answer that "spindle              
          rotation means connected to said cartridge receiving means for              
          rotating said removable cartridge at a first speed while                    
          reading a track of data previously recorded by an inductive                 
          head at a second speed with said removable cartridge" does not              
          have proper written description under 35 U.S.C.§ 112, first                 
          paragraph.  The Examiner asserts there "is no indication of                 
          any single                                                                  



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