Appeal No. 2004-0551 Page 6
Application No. 09/393,256
sentence, together with the drawings and the specification taken as a whole,
unequivocally indicate to us that, at the time the application was filed, the appellant had
possession of an ultrasonic probe comprising a shaft and a probe head having an
absence of electrical circuit elements.
For the reasons set forth above, the decision of the examiner to reject claims 1
to 10 and 21 under 35 U.S.C. § 112, first paragraph, is reversed.
The anticipation rejection based on Weiland
We will not sustain the rejection of claims 1 to 7, 10 and 21 to 28 under
35 U.S.C. § 102(b) as being anticipated by Weiland.
A claim is anticipated only if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art reference.
Verdegaal Bros. Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053 (Fed.
Cir.), cert. denied, 484 U.S. 827 (1987). The inquiry as to whether a reference
anticipates a claim must focus on what subject matter is encompassed by the claim and
what subject matter is described by the reference. As set forth by the court in Kalman
v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ 781, 789 (Fed. Cir. 1983), cert.
denied, 465 U.S. 1026 (1984), it is only necessary for the claims to "'read on' something
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