Appeal No. 1999-2307
Application No. 08/711,074
of obviousness). The Federal Circuit reasons in Para-Ordnance Mfg. Inc. v. SGS
Importers Int’l Inc., 73 F.3d 1085, 1088-89, 37 USPQ2d 1237, 1239-40 (Fed. Cir.
1995), that for a 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 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 Patent and Trademark Office 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).
On page 9 of the Examiner’s answer, the Examiner states that Kazami teaches
recording first and second signals. The Examiner further contends that Yoshida teaches
recording of an alternating current signal as alternative specific information represents the
existence of exposed frame. The Examiner argues that Kazami may be modified by
Yoshida by not modifying the first signal of Kazami. The Examiner further
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