Appeal No. 1997-3688
Application 08/113,887
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., 85
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.” Para-Ordnance Mfg. Inc. v. SGS
Importers Int'l Inc., 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 311-13. 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 fail to find that the references suggest the sidewall stack as set forth in Appellant's
claim 27. Upon our review of Saito, we find that Figures 1a, 1b, 1c, 1d, and 1e show formation of
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