Appeal No. 1997-0795
Application 08/087,362
The Federal Circuit states that "[t]he mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the modification obvious unless the
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 "[s]uch 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-0rdnance Mfg. Inc. v. SGS Importers Int'l Inc., 73 F.3d
1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir. 1995), cert. denied, 519 U.S. 822
(1996), 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 suggestions of the invention." Para- Ordnance
Mfg. v. SGS Importers Int'l, 73 F.3d
6
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007