Appeal No. 2004-0039
Application No. 09/740,324
mechanically moveable (e.g., see the paragraph bridging columns 4
and 5 of Ricco).
As more fully explained in the answer, this replacement would
have been motivated by a desire to obtain the benefits attributed
by Ricco to his electrically-programmable diffraction grating
including very high speed and precision (e.g., see lines 22-24
in column 3) as well as the capability of using programming and
circuitry voltages which are compatible to thereby greatly reduce
the number and complexity of external connections to the grating
(e.g., see lines 11-17 in column 14). Furthermore, because Ricco
expressly teaches that his diffraction grating may be programmed
for use as a multiplexer (e.g., see lines 5-9 in column 13) and
because the method (and apparatus) of Mears also relates to a
multiplexer (e.g., see the paragraph bridging columns 6 and 7),
the artisan would have had a reasonable expectation that the
aforementioned replacement would be successful. See In re
O’Farrell, 853 F.2d 894, 903-04, 7 USPQ2d 1673, 1680-81 (Fed. Cir.
1988).
The Appellants argue that no motivation exists for the above
discussed replacement because the dynamic diffraction grating of
Mears is fully adequate for patentee’s purpose such that there
would be no need for higher speed and precision and in any event
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