Appeal No. 1999-2259
Application 08/711,614
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
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). “The combination of elements from non-analogous
sources, in a manner that reconstructs the applicant’s
invention only with the benefit of hindsight, is insufficient
to present a prima facie case of obviousness.” Oetiker, 977
F.2d at 1447, 24 USPQ2d at 1446.
Based on the evidence and arguments presented, and the
pertinent law in this matter, we find that the Examiner has
failed to establish a prima facie case of unpatentability with
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