Appeal No. 1998-3364
Application No. 08/347,990
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 1408, 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., 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 the prior art,
would have been reasonably expected to use the solution that
is claimed by the Appellants. However, "[o]bviousness may not
be established using hindsight or in view of the teachings or
suggestions of the invention." Para-Ordnance Mfg., 73 F.3d at
1087, 37 USPQ2d at 1239, citing W. L. Gore & Assocs., 721 F.2d
5
Page: Previous 1 2 3 4 5 6 7 8 9 Next
Last modified: November 3, 2007