Appeal No. 1996-3262
Application No. 08/141,632
It is established that regarding reasons to combine prior
art teachings, "[a] suggestion may come from the nature 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, 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. 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.”
Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing
W. L. Gore & Assocs., Inc., 721 F.2d at 1553, 220 USPQ at 312-13.
Therefore we find that one having ordinary skill in this art
would have been led to the invention recited in claim 1 by the
express teachings or suggestions found in this prior art, or by
implications contained in such teachings or suggestions.
Claim 2 differs materially from claim 1 only in its final
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