Appeal No. 1999-0016
Application 08/638,071
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 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).
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