Appeal No. 2001-2628 Page 3
Application No. 09/259,888
state that support for this amendment can be found in the
original claims.
In response, on pages 7 through 8 of the answer, the
examiner argues that although claims 1, 8, and 12 are part
of the original application, appellants have failed to
support these claims in the specification. The examiner
states that appellants have failed to amend the
specification so as to make the original claims 1, 8, and 12
commensurate with the specification. The examiner states
that appellants argue that the amendment added after the
last sentence on page 6, line 17 of the specification cites
examples of possible materials for possible use in an
integrated lead suspension, but the examiner states that
appellants’ amendment does not change the scope of the
disclosure which cites specific embodiments with specific
materials that are to be used as the support, dielectric,
and conductor layer, namely stainless steel, polyimide, and
copper.
We disagree with the examiner’s comments regarding the
amendment made to the specification as described at the
bottom of page 7 of appellants’ brief. As agreed by
appellants and the examiner, the subject matter finds
support in original claims 1, 8, and 12. Hence, the
specification does support the claims.
Furthermore, the first paragraph of 35 U.S.C.
§ 112, with regard to enablement, requires that the
specification enable a person having ordinary skill in the
art to make and use the claimed invention. Also, enablement
requires that the specification teach those having ordinary
skill in the art to make and use the invention without
“undue experimentation.” In re Vaeck, 947 F.2d 488, 495-96,
20 USPQ2d 1438, 1444-45 (Fed. Cir. 1991).
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