Appeal No. 2001-2407
Application No. 09/154,703
these claimed features together and appellants have only pointed
to Figure 10A for a disclosure of a positioning member, but not
together with a step, we agree with the examiner that the artisan
would not have been enabled, from the instant disclosure, to make
and use the claimed subject matter.1
Accordingly, we will sustain the rejection of claim 10 under
35 U.S.C. 112, first paragraph. We will also sustain the
rejection of claim 11/10, as it depends from claim 10, claim
13/10, as it depends from claim 10, or of claim 18, which depends
from claim 10, for the reasons set forth supra, with regard to
claim 10.
We will not, however, sustain the rejection of claims 11/9,
or of claims 12 and 13/9 under 35 U.S.C. 112, first paragraph.
With regard to claim 11, not only does page 8, lines 15-18,
of the instant specification, disclose the use of a conductive
adhesive between the actuator and the slider, but, clearly, the
artisan would have been enabled by the claim language itself, to
place a conductive adhesive between these two elements.
With regard to claim 12, although the examiner contends that
1There is also a question of whether there is support for an
embodiment having both a step and a positioning member, within
the written description requirement of 35 U.S.C. 112, but that
issue is not before us.
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