Appeal No. 1998-3359
Application 08/572,347
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 & Assocs.,
Inc. v. Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at
311, 312-13. In addition, our reviewing court requires the
Patent and Trademark Office to make specific findings on a
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