Appeal No. 2004-1331 Page 6
Application No. 09/812,664
For the reasons set forth above, the decision of the examiner to reject claims 57
to 72 under 35 U.S.C. § 112, second paragraph, is reversed.
The anticipation rejection
Claims 53, 54, 57 and 58 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Handbook.
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
disclosed in the reference, i.e., all limitations of the claim are found in the reference, or
'fully met' by it."
Claims 53, 54, 57 and 58 recite in one manner or another a disk comprising,
inter alia, two sides opposite one another, wherein one side has a substantially conical
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