Appeal No. 1999-0259
Application 08/596,857
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]bvious- ness 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., Inc.
v. Garlock, Inc., 721 F.2d 1540, 1551, 1553, 220 USPQ 303,
311, 312-13 (Fed. Cir. 1983). 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).
Based on the evidence and arguments presented, and
the pertinent law in this matter, we find that the Examiner
has failed to establish a prima facie case of unpatentability
with
14
Page: Previous 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 Next
Last modified: November 3, 2007