Appeal No. 1997-3415
Application No. 08/037,849
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).
We note that Nozue does teach in column 1, lines 7-29,
that Brown's polymers are inferior in heat resistant adhesion
to a substrate. However, we will not go as far as Appellant's
arguments that this in itself is enough to say that Nozue
teaches away from using these polymers. However, the Examiner
has the burden to show that one of ordinary skill in the art
would have reasons to use Brown's round polymers instead of
the polymers taught by Nozue as being the preferred polymers.
The Examiner has not provided any evidence that one of
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