Appeal No. 2001,0712
Application 08/148,887
desirability of the modification.”
In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-
84 n. 14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). The Federal
Circuit reasons in Para-Ordnance Mfg. v. SGS Importers Int’l
Inc.,
73 F.3d 1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir.
1995), 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 reasonably expected to use
the solution that is claimed by 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 1540,
1551, 1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984). In addition, our reviewing court
requires the PTO to make specific findings on a suggestion to
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