Appeal 2007-0820
Application 09/734,808
1 The [Adams] Court relied upon the corollary principle that when the
2 prior art teaches away from combining certain known elements,
3 discovery of a successful means of combining them is more likely to
4 be nonobvious. Id., at 51-52, 86 S.Ct. 708. When Adams designed
5 his battery, the prior art warned that risks were involved in using the
6 types of electrodes he employed. The fact that the elements worked
7 together in an unexpected and fruitful manner supported the
8 conclusion that Adams’s design was not obvious to those skilled in the
9 art.
10 KSR, 127 S.Ct. at 1740, 82 USPQ2d at 1395 (emphasis added).
11 The Federal Circuit recently concluded that it would have been
12 obvious to combine (1) a mechanical device for actuating a phonograph to
13 play back sounds associated with a letter in a word on a puzzle piece with
14 (2) an electronic, processor-driven device capable of playing the sound
15 associated with a first letter of a word in a book. Leapfrog Ent., Inc. v.
16 Fisher-Price, Inc., 485 F.3d 1157, 1161, 82 USPQ2d 1687, 1690-91 (Fed.
17 Cir. 2007) (“[a]ccommodating a prior art mechanical device that
18 accomplishes [a desired] goal to modern electronics would have been
19 reasonably obvious to one of ordinary skill in designing children’s learning
20 devices”). In reaching that conclusion, the Federal Circuit recognized that
21 “[a]n obviousness determine is not the result of a rigid formula disassociated
22 from the consideration of the facts of a case. Indeed, the common sense of
23 those skilled in the art demonstrates why some combinations would have
24 been obvious where others would not.” Id. at 1161, 82 USPQ2d at 1687
25 (citing KSR, 127 S.Ct. 1727, 1739, 82 USPQ2d 1385, 1395 (2007) (“The
26 combination of familiar elements according to known methods is likely to be
27 obvious when it does no more than yield predictable results.”). The Federal
28 Circuit relied in part on the fact that Leapfrog had presented no evidence that
29 the inclusion of a reader in the combined device was “uniquely challenging
12
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