Appeal No. 1998-3385
Application No. 08/601,551
The Federal Circuit states that "[t]he mere fact that the
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 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, 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 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,
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