Appeal No. 1999-0419
Application 08/383,483
143, 149 (CCPA 1976)(the problem to be solved may be a consideration 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 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. v. SGS Importers Int'l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing
W.L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551, 1553, 220 USPQ at 311,
312-13.
The claims on appeal recite features such as the first clause in the body of
representative claim 1 on appeal reproduced earlier stating "a first unitary package
designed for normally resting on a surface such as tabletop when photorecording is
being done by said recording/reproducing system." To the extent argued by appellants
in the brief and reply brief, a different intended use of the same structure as in the prior
art does not prohibit a statutory anticipation rejection, for example. Indeed, it has been
stated by our reviewing court that "the absence of a disclosure relating to function does
not defeat the Board’s finding of anticipation. It is well settled that the recitation of a
new intended use for an old product does not make a claim to that old product
patentable (case citations omitted)." In re Schrieber, 128 F.3d 1473, 1477, 44 USPQ2d
1429, 1431 (Fed. Cir. 1997). The court concludes at 128 F.3d 1477, 44 USPQ2d 1431-
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