Appeal 2007-0726
Application 10/264,561
and creative steps that a person of ordinary skill in the art would employ.”
KSR, 127 S. Ct. at 1741, 82 USPQ2d at 1396.
The Supreme Court also stated that the principles underlying
the Court’s opinion in United States v. Adams, 383 U.S. 39, 40,
148 USPQ 479, 480 (1966) are instructive. KSR, 127 S. Ct. at 1740,
82 USPQ2d at 1395-96. Aside from articulating the principle that when
substituting one known element for another known element “the
combination must do more than yield a predictable result,” Adams,
383 U.S. at 50-51, 148 USPQ at 483, the Adams Court relied upon the
“the corollary principle that when the prior art teaches away from
combining certain known elements, discovery of a successful means of
combining them is more likely to be nonobvious.” Adams, 383 U.S. at
51-52, 148 USPQ at 483. According to the Adams court, “[w]hen
Adams designed his battery, the prior art warned that risks were
involved in using the types of electrodes he employed. The fact that the
elements worked together in an unexpected and fruitful manner
supported the conclusion that Adams’s design was not obvious to those
skilled in the art.” KSR, 127 S. Ct. at 1740, 82 USPQ2d at 1395
(emphasis added). This corollary principle provides a way for an
applicant to overcome an obviousness rejection.
The Federal Circuit concluded that it would have been obvious to
combine (1) a mechanical device for actuating a phonograph to play back
sounds associated with a letter in a word on a puzzle piece with (2) an
electronic, processor-driven device capable of playing the sound associated
with a first letter of a word in a book. Leapfrog Enters., Inc. v. Fishier-
Price, Inc., 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1691 (Fed. Cir. 2007)
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