Appeal 2007-1229
Application 10/325,333
1 illustrative of the “functional approach” to be taken in cases where the
2 claimed invention is a prior art structure altered by substituting one element
3 in the structure for another known element. KSR, 127 S.Ct. at 1734, 82
4 USPQ2d at 1391. “The Court [in Adams] recognized that when a patent
5 claims a structure already known in the prior art that is altered by the mere
6 substitution of one element for another known in the field, the combination
7 must do more than yield a predictable result. 383 U.S., at 50-51.” KSR, 127
8 S.Ct. at 1740, 82 USPQ2d at 1395. Ultimately the Adams Court found the
9 combination at issue not obvious to those skilled in the art because, although
10 the elements were known in the prior art, they worked together in an
11 unexpected manner.
12 The [Adams] Court relied upon the corollary principle that when the
13 prior art teaches away from combining certain known elements,
14 discovery of a successful means of combining them is more likely to
15 be nonobvious. Id., at 51-52, 86 S.Ct. 708. When Adams designed
16 his battery, the prior art warned that risks were involved in using the
17 types of electrodes he employed. The fact that the elements worked
18 together in an unexpected and fruitful manner supported the
19 conclusion that Adams’s design was not obvious to those skilled in the
20 art.
21 KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (emphasis added).
22 The Federal Circuit recently concluded that it would have been
23 obvious to combine (1) a mechanical device for actuating a phonograph to
24 play back sounds associated with a letter in a word on a puzzle piece with
25 (2) an electronic, processor-driven device capable of playing the sound
26 associated with a first letter of a word in a book. Leapfrog Ent., Inc. v.
27 Fisher-Price, Inc., 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1690-91 (Fed.
28 Cir. 2007) (“[a]ccommodating a prior art mechanical device that
13
Page: Previous 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 Next
Last modified: September 9, 2013