Appeal No. 1998-0296
Application 08/431,312
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 1551, 1553,
220 USPQ 311, 312-13. In addition, our reviewing court
requires the PTO to make specific findings on a suggestion to
combine prior art references. In re Dembiczak, 175 F.3d 994,
1000-01, 50 USPQ2d 1614, 1617-19 (Fed. Cir. 1999).
On pages 7-14 of the brief, Appellants generally argue
that Kitamura does not teach or suggest each feature recited
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