Appeal No. 1997-2646
Application 08/103,089
the solution that is claimed by Appellants. However,
“[o]bviousness may not be established using hindsight or in
view of the teachings or suggestions of the invention.” Para-
Ordnance 73 F.3d at 1087, 37 USPQ2d at 1239; citing W. L. Gore
& Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551, 1553,
220 USPQ 303, 311, 312-13, cert. denied, 469 U.S. 851 (1984).
In addition, our reviewing court requires the PTO to make
specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ2d
1614, 1617-19 (Fed. Cir. 1999)
In the rejections under 35 U.S.C. § 103, the Examiner
relies on the same arguments presented for claim 17 as a basis
for asserting that Bille must inherently include this
feature. However, as discussed above with respect to the7
rejection of claim 17, the Examiner fails to establish that
Bille explicitly or implicitly discloses use of the specific
amount of tissue recited in the claimed invention. No
arguments are presented as motivation for one of ordinary
skill in the art to modify Bille to include this feature.
7 See pages 25-27.
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