Appeal No. 1998-0976
Application 08/379,722
problem to be solved in a determination of obviousness)). The
Federal Circuit reasons in Para-Ordnance Mfg. 73 F.3d at 1088-
89, 37 USPQ2d at 1239-40, 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]bvious- ness may not be established
using hindsight or in view of the teachings or suggestions of
the inventor." Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d
at 1239 (citing W. L. Gore, 721 F.2d at 1551, 1553, 220 USPQ
at 311, 312-313). In addition, our reviewing court requires
the Patent and Trademark Office 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 Appellants' independent claim 1 recites
"providing a base covering of electrically semi-conductive
material having a frictional coefficient which is less than
the frictional coefficient of the substrate support surface;
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 Next
Last modified: November 3, 2007