Appeal No. 1998-1677
Application No. 08/273,251
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 USPQ2d at 1239 (citing W. L. Gore & Assoc.,
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
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