Appeal No. 1999-1930
Application 08/907,859
system disclosed by Dormer. They assert that absent hindsight, there exists no motivation
to combine teachings of the applied references.3
The Federal Circuit states 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., 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, “[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 &
3
See page 5 of the brief.
4
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007