Ex parte AMELL et al. - Page 15




          Appeal No. 1999-2637                                                        
          Application 08/813,864                                                      


          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 “such 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, Inc., 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. Inc. v. SGS Importers Int’l Inc., 73 F.3d 1085, 1088-89,               
          37 USPQ2d 1237, 1239-40 (Fed. Cir. 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 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               

                                          15                                          





Page:  Previous  3  4  5  6  7  8  9  10  11  12  13  14  15  16  17  Next 

Last modified: November 3, 2007