Appeal No. 1999-1344
Application 08/364,718
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), cert. denied, 519 U.S. 822 (1996) 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 Appellant. However, "[o]bviousness may
not be established using hindsight or in view of the teachings
or suggestions of the invention."
Para-Ordnance, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.L.
Gore & Assocs., Inc. v. Garlock Inc., 721 F.2d 1540, 1548,
220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984). In addition, our reviewing court requires the Patent
and Trademark Office to make specific findings on a suggestion
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