Appeal No. 1998-0819
Application 08/541,656
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., 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.” Para-
Ordnance Mfg. v. SGS Importers Int’l, 73 F.3d at 1087, 37
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