Ex parte KODAIRA et al. - Page 7




          Appeal No. 1999-2000                                                        
          Application 08/859,494                                                      


          prior art may be modified in the manner suggested by the                    
          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, 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 determination                
          of obviousness).  The Federal Circuit reasons in Para-Ordnance              
          Mfg., 73 F.3d at 1088-89, 37 USPQ2d at 1239-40, 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              

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