Appeal No. 1998-0998
Application 08/426,069
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. Inc. v. SGS Importers Int'l Inc., 73 F.3d at 1087, 37 USPQ2d
1239, citing W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551-1553, 220
USPQ at 311-313. 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 USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
We fail to find that Koyama suggests the Examiner's modification. Koyama's
recess is in the shutter and extending the recess across the entire thickness of the case
would only destroy Koyama's slider with regard to its intended purpose. We fail to find
that there was any suggestion of modifying Koyama's shutter consisting of elements 4 and
3 such that the recess 18 would somehow be extended across the entire thickness of the
case or that the entire invention would be modified to cause an access in the case
adjacent and external to the shutter.
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