Appeal No. 1999-1559
Application No. 08/762,687
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 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 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. In addition, our reviewing
court requires the PTO 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).
Upon our review of Tsuboyama, we agree with Appellant
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