Appeal No. 1999-1134
Serial No. 08/334,465
217 USPQ 1, 6 (Fed. Cir. 1983). The Federal Circuit states
that “[t]he mere fact that the prior art may be modified in
the manner suggested by 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). The Federal Circuit reasoned
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 Inc., 73 F.3d 1085, 1087-
89, 37 USPQ2d 1237, 1239-40 (Fed. Cir. 1995), citing W. L.
Gore & Assocs., Inc. v. Garlock, Inc. 721 F.2d at 1551, 1553,
220 USPQ at 311, 312-13.
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