Appeal No. 2004-0039
Application No. 09/740,324
it is unclear whether Ricco’s grating would have higher speed and
precision than the holographic diffraction element of Mears. It is
the Appellants’ contention that, under these circumstances, there
would have been no expectation of success vis-à-vis the proposed
replacement in question. As a consequence, it is the Appellants’
ultimate position that the Examiner’s rejection is based upon
impermissible hindsight. We cannot agree.
Contrary to the Appellants’ apparent belief, obviousness does
not require the existence of an express, written motivation to
combine prior art references. Ruiz v. A.B. Chance Co., 357
F.3d 1270, 1276, 69 USPQ2d 1686, 1690 (Fed. Cir. 2004). Also
contrary to the Appellants’ apparent belief is the fact that the
dynamic holographic diffraction element of Mears is not disclosed
as being critical to patentee’s invention but instead is disclosed
as being merely preferable (e.g., see the sentence bridging columns
1 and 2). In this regard, it is appropriate to emphasize that an
applied reference may be relied upon for all that it would have
reasonably suggested to an artisan including not only preferred
embodiments but also less preferred or even nonpreferred
embodiments. Merck & Co. Inc. v. Biocraft Labs., 874 F.2d 804,
807, 10 USPQ2d 1843, 1846 (Fed. Cir), cert. denied, 493 U.S. 975
(1989). Finally, it is essential to appreciate that obviousness
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