Appeal No. 1997-2646
Application 08/103,089
prior art may be modified in the manner suggested by Examiner
does not make the modification obvious unless the prior art
suggested the desirability of the modification.” In re
Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.
14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further
established that “[s]uch a suggestion may come from the nature
of the problem to be solved, leading inventors to look to
references relating to possible solutions to that problem.”
Pro-Mold & Tool Co. v. Great Lakes Plastics, 75 F.3d 1568,
1573, 37 USPQ2d 1626, 1630 (Fed. Cir. 1996), citing In re
Rinehart, 531 F.2d 1048, 1054, 189 USPQ 143, 149 (CCPA 1976)
(considering the problem to be solved in a determination of
obviousness). The Federal Circuit reasons in Para-Ordnance
Mfg. v. SGS Importers Int’l Inc., 73 F.3d 1085, 1088-89, 37
USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert. denied, 519 U.S.
822 (1996), that for the 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 reasonably expected to use
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