IEEE Spectrum October, 2007 - 49

RESOURCES
although the presence of such a "teaching"
would indeed make the combination obvious,
the lack of it does not necessarily make a
combination unobvious.
Immediately following the Supreme
Court's KSr ruling, the Federal Circuit then
added another category of obvious, and thus
not patentable, ideas: electronic versions of
previously known mechanical devices.
leapfrog, a retailer of children's learning
toys in Emeryville, Calif., held a patent for
an electronic interactive learning device that
sounds out the letters in a word as a child
selects them. leapfrog sued Fisher-price of
East Aurora, N.Y., alleging that the latter's
similar powertouch product infringed on
the leapfrog patent. the Federal Circuit disagreed, arguing that leapfrog's patent was
obvious, based on a 1973 patent describing
an electromechanical device with a phonograph record actuated by puzzle pieces.
pressing on a puzzle piece imprinted with
a letter caused the record to play the sound
of that letter in a word. "Applying modern
electronics to older mechanical devices has
been commonplace in recent years," the
court held.
does that mean the first Mp3 player is
obvious in light of a 1950s-era wurlitzer
jukebox? Not so fast, says the Supreme
Court. recognizing that "inventions in most,
if not all, instances rely on building blocks
long since uncovered" and that "discoveries
almost of necessity will be combinations of
what, in some sense, is already known," the
Supreme Court said engineering would count
as unobvious if it went against the conventional thinking in the field. Also unobvious is
any combination of old elements that work
together in an unexpected manner.
prove that a product is commercially successful, that it addresses a long-felt need,
that it has been copied by or is licensed to

others, and you'll have an easier time convincing the patent office that you deserve a
patent or, if you already have one, that it's
valid. the more unexpected the success of
an innovation, the stronger will be the claim
of being unobvious.
Most patents will survive the court's latest ruling, because it leaves several other
doctrines regarding unobviousness intact.
One such doctrine deals with a solution that
appears obvious only after the problem it
addresses has been identified. In one old
case involving a mixing vial with two compartments separated by a seal, everyone
believed that leakage from one compartment into the other occurred around the
seal. One inventor discovered that leakage occurred through the seal and won a
patent, even though his solution to this
problem-using a different material for the
seal-was fairly obvious.
Another way to prove unobviousness is
by showing that something that seems obvious after a problem has been simplified may
well not have been so beforehand. this is
best explained through the example of an
engineer who found a way to keep all parts of
a mold at a set temperature by using a single
temperature sensor to control several valves
that allowed a cooling or heating medium to
enter-a job that prior machines had done by
assigning each valve a sensor of its own. the
courts ruled that the new simplified system
was unobvious.
Still another doctrine holds that something pieced together from prior art is not
obvious if the construction of the pieces
had to be changed to make them fit. In one
old case, a patent for a blood filter put the
inlet and outlet on the top, whereas an
earlier patent for a fuel filter had them on
the bottom. but the court decided that this
apparent resemblance didn't stop the blood-

Blast From tHe Past

hewlett-Packard is offering a calculator that looks like
the first one it ever sold. Big deal By KenneTh r. FosTer
Tools & Toys

In 1971, Bill Hewlett, cofounder of
Hewlett-Packard, took a good long
look at the HP 9100A, a 40-pound
electronic calculator that his company had introduced just three years
before. Then he asked his engineers
a question: Why can't we make it fit
in my shirt pocket?
The marketing people said that it
wouldn't sell, because slide rules-which

could also calculate logarithms and other
math functions-were much cheaper than
this gadget would ever be. Hewlett ignored
them, and a year later the HP 35 appeared
at an initial cost of US $395, or nearly $2000
in today's dollars. Engineers and scientists
lined up for it, and some 100 000 units were
sold in its first year, making it one of the
company's most successful products ever.
The slide rule soon became landfill.

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Table of Contents for the Digital Edition of IEEE Spectrum October, 2007
