Appeal No. 2000-2263
Application No. 08/925,387
determination of obviousness, the court must answer whether
one of ordinary skill in the art who sets out to solve the
problem and who had before him in his workshop the prior art,
would have been reasonably expected to use the solution that
is claimed by the Appellants. However, "[o]bviousness may not
be established using hindsight or in view of the teachings or
suggestions of the invention." Para-Ordnance Mfg., 73 F.3d at
1087, 37 USPQ2d at 1239, citing W. L. Gore, 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13. In addition, our reviewing
court requires the Patent and Trademark Office to make
specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ
1614, 1617-19 (Fed. Cir. 1999).
Upon our review of Appellants' specification and
drawings, we find no admission of motivation known to those
skilled in the art at the time of the invention to locate the
ink feeding needle slightly behind the guiding determining
shafts. The statements found on page 2 of Appellants'
specification is their discovery of the problem which led to
their invention and was not available to those skilled in the
art.
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