Appeal No. 1998-1328
Application No. 08/341,500
1995), 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
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 Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37
USPQ2d at 1239, citing W. L. Gore & Assocs., Inc. v. Garlock,
Inc. 721 F.2d at 1551, 1553,
220 USPQ at 311, 312-13. 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).
We agree with Appellant that a person of ordinary skill
in the art would not have been motivated to increase the
longitudinal strength in Sacherman, particularly as the
reference is concerned with decreasing the pressure exerted on
8
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