Appeal No. 1998-0659
Application No. 08/264,527
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). "Obviousness may not be
established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance, 73 F.3d at 1087,
37 USPQ2d at 1239, citing W. L. Gore & Assocs., 721 F.2d at
1551, 1553, 220 USPQ at 311, 312-13. In addition, our
reviewing court requires the Patent and Trademark Office 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). As pointed out by our
reviewing court, we must first determine the scope of the
claim. "[T]he name of the game is the claim.” In re Hiniker
Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir.
1998).
Claim 12, lines 7 and 8, provides "transducer means for
converting sounds in an auditory frequency range into audio
frequency electrical signals." This limitation is not
disclosed by Matsushima and the Examiner points to Shannon for
its teaching of such a transducer. However, Shannon is not
concerned with the treatment of tinnitus symptoms. This
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