Appeal No. 1998-1317
Application No. 08/522,112
(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), 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 the Appellant. However, “[o]bviousness may not
be established using hindsight or in view of the teachings or
suggestions of the [invention].” Para-Ordnance Mfg., Inc. v.
SGS Importers Int’l, Inc., 73 F.3d at 1087, 37 USPQ2d at 1239,
citing W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 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, 1617-18 (Fed. Cir. 1999).
Motivation to make use of elements found in Huttenlocher
in the Guberman system is articulated on page 5 of the answer.
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