Appeal No. 1997-3690
Application 08/427,163
prior art may be modified in the manner suggested by the
Examiner
does not make the modification obvious unless the 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, 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 at 1088-89, 37 USPQ2d at 1239-
40, 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
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