Appeal No. 1999-2068
Application 08/650,038
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,
“[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 1551, 1553, 220 USPQ 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).
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