July 2, 2018

One of Ordinary Skill Would not Blindly Incorporate One Reference’s Exact Methodology into the Other

By Bryan K. Wheelock, Principal

In PGS Geophysical AS v. Iancu, [2016-2470, 2016-2472, 2016-2474] (June 7, 2018), the Federal Circuit affirmed the Board’s decisions finding certain claims of U.S. Patent No. 6,906,981 invalid. After the Board issued its final written decisions, PGS settled with the Petitioner, leaving the Director to defend the final Written decision on appeal.

The Federal Circuit first considered its jurisdiction, concluding the Board’s decisions were final (and thus appealable) even though the decision not to institute as to some grounds is known after SAS to be erroneous, it was nonetheless final.

As to obviousness, the Federal Circuit noted that the obviousness inquiry entails consideration of whether a person of ordinary skill in the art would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and would have had a reasonable expectation of success in doing so.  Such a motivation and reasonable expectation may be present where the claimed invention is the combination of familiar elements according to known methods that does no more than yield predictable results.

On appeal, PGS could not dispute that the references disclosed all of the elements of the claims, but argued that the Board erred regarding the needed motivation.  The Federal Circuit noted that while it may not supply a reasoned basis for the agency’s action that the agency itself has not given, it will uphold a decision of less than ideal clarity if the agency’s path may reasonably be discerned.

PGS argued, with the support of expert testimony, that the combination of the references would result in an eight-fold loss of spatial resolution.  However, the Federal Circuit noted that this argument relies on the presumption that one of ordinary skill would blindly incorporate one reference’s exact methodology into the other.  The Federal Circuit found that the Board did not view the proposed combination to be so limited.