Ex parte YOKOUCHI et al. - Page 10




              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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