Appeal No. 1997-1766
Application No. 08/245,033
prior art suggested the 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). It is further
established that "[s]uch 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, 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
Appellant. However, "[o]bviousness may not be established
using hindsight or in view of the teachings or suggestions of
-8-
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