Appeal No. 1999-0157
Application No. 08/113,310
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 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,
would have been reasonably expected to use the solution that
is 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., 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,
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