Appeal No. 1999-1565
Application No. 08/494,227
that "[t]he mere fact that the prior art may be modified in
the manner suggested by Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n. 14 (Fed. Cir.
1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). It is further established that "[s]uch
a suggestion may come from the nature 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, 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. 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 reasonably expected to use
the solution that is claimed by Appellants. However,
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007