Appeal No. 2004-0039
Application No. 09/740,324
requires only a reasonable, rather than absolute, expectation of
success. In re O’Farrell, 853 F.2d at 904, 7 USPQ2d at 1681.
Here, Ricco’s aforementioned teaching in column 13 would
have led an artisan to reasonably expect success in using the
diffraction grating of Ricco in the multiplexer of Mears.
Moreover, because Mears refers to his dynamic holographic
diffraction element as merely preferable (rather than critical),
the artisan would not have thought that replacing this holographic
diffraction element with Ricco’s diffraction grating “would render
the apparatus of Mears ... unsatisfactory for its intended purpose”
(brief, pages 6-7) as argued by the Appellants. Finally,
notwithstanding a full consideration of the Appellants’ opposing
viewpoint, we are convinced that the benefits taught by Ricco
in columns 3 and 14 would have motivated the proposed replacement
under consideration. Concerning this matter, it is important to
recognize that motivation is based upon a reasonable expectation
of success and not an absolute guarantee of improvement as the
Appellants seem to believe.
For the reasons set forth above and in the answer, it is our
ultimate determination that the reference evidence adduced by the
Examiner establishes a prima facie case of obviousness which the
Appellants have failed to successfully rebut with argument or
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