Appeal No. 1997-2118
Application No. 08/119,163
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), 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." Id., 73 F.2d at 1087, 37 USPQ2d at 1239,
citing W. L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540,
1552-53, 220 USPQ 303, 311-13 (Fed. Cir. 1983), cert. denied,
469 U.S. 851 (1984). In addition, our reviewing Court
requires the Patent and Trademark Office (PTO) to make
specific findings on a suggestion to combine prior art
references. In re Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ2d
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007