Ex parte SPRUNK - Page 7




          Appeal No. 2000-1330                                                        
          Application No. 08/972,835                                                  


          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 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              
          be established using hindsight or in view of the teachings or               
          suggestions of the invention."  Para-Ordinance 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).                                   
               In view of the foregoing, we have not sustained the                    
          rejection of claim 1 through 6, 8 through 20 and 23 through 31              



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