Appeal No. 1999-2849
Application No. 08/690,966
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.
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 944, 1000-01, 50 USPQ2d
1614, 1617-19 (Fed. Cir. 1999). Our reviewing court states
further that the "factual question of motivation is material
to patentability, and could not be resolved on subjective
belief and unknown authority." In re Lee, 277 F.3d 1338,
1343, 61 USPQ2d 1430, 1433-34 (Fed. Cir. 2002). It is
improper, in determining whether a person of ordinary skill
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