Appeal No. 1998-0828
Application 08/438,091
element of a claimed invention as well as disclosing structure
which is capable of performing the recited functional
limitations. RCA Corp. v. Applied Digital Data Systems, Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir.); cert.
dismissed, 468 U.S. 1228 (1984); W.L. Gore and Associates, Inc.
v. Garlock, Inc., 721 F.2d 1540, 1554, 220 USPQ 303, 313 (Fed.
Cir. 1983), cert. denied, 469 U.S. 851 (1984).
With respect to representative, independent claim 19, the
examiner indicates how he reads the claimed invention on the
disclosure of Mori [answer, pages 4-5]. Appellants argue that
Mori does not disclose a controllable microactuator being located
closer to the air bearing than the actuator arm [brief,
pages 7-9]. The examiner responds that Mori performs in the same
manner as the claimed invention. The examiner notes that the
microactuator of Mori is closer to the head than the voice coil
actuator [answer, page 10].
The examiner has not properly considered the claimed
invention. Claim 19 does not recite that the microactuator is
located closer to the air bearing than the voice coil actuator.
Instead, claim 19 recites that the microactuator is located
closer proximate the air bearing than the actuator arm. The
microactuator 9a of Mori is not closer to the air bearing than
-7-
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