Appeal No. 1997-2030
Application 08/400,287
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 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).
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