Ex parte CHIABRERA et al. - Page 10




          Appeal No. 1999-2337                                                        
          Application 08/655,257                                                      


          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. Inc., 73 F.3d at 1087, 37                
          USPQ2d at 1239, citing W.L. Gore & Assocs., Inc. v. Garlock,                
          Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303, 311, 312-13.                 
          In addition, our reviewing court requires the Patent and                    

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