Appeal No. 2001-0908
Application No. 08/833,342
for controlling all the drive motors within the doll as well as for supporting the doll’s
audio output . . . . As it is well known, an analog sound signal sequence has a
continuous and alternating voltage level. TONG fails to disclose an animated toy
figure of the type feasible for digital control.
A prior art reference anticipates the subject of a claim when the reference discloses every
feature of the claimed invention, either explicitly or inherently, See Hazani v. Int'l Trade Comm'n,
126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed. Cir. 1997) and RCA Corp. v. Applied Digital
Data Sys., Inc., 730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984).
By applying the above test of anticipation, we are not persuaded by the examiner’s assertion
that the analog signal in Tong can be considered a digital signal because it is a logical signal. As
pointed out by appellant, the motors 27 and 28 in Tong are analog actuators and are capable of being
responsive to only analog signals present at conductors 32 in Figure 6.
The examiner makes a correspondence table at page 9 of the examiner’s answer showing the
correspondence of the claim elements in each of these claims to the disclosure in Tong. However,
we are of the opinion that the examiner has not grappled with the issue of the recited digital signal
operating a two phase actuator in the claimed toy computer. Therefore, we do not sustain the
anticipation rejection of claims 35, 37 and 43 by Tong.
Rejections under 35 U.S.C § 103
As a general proposition, in an appeal involving a rejection under 35 U.S.C. § 103, an
Examiner is under a burden to make out a prima facie case of obviousness. If that burden is met, the
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