{"id":2081,"date":"2018-06-07T21:02:24","date_gmt":"2018-06-08T01:02:24","guid":{"rendered":"https:\/\/patents.harnessip.com\/?p=2081"},"modified":"2018-07-01T22:14:47","modified_gmt":"2018-07-02T02:14:47","slug":"one-of-ordinary-skill-would-not-blindly-incorporate-one-references-exact-methodology-into-the-other","status":"publish","type":"post","link":"https:\/\/patents.harnessip.com\/?p=2081","title":{"rendered":"One of Ordinary Skill Would not Blindly Incorporate One Reference’s Exact Methodology into the Other"},"content":{"rendered":"

In PGS Geophysical AS v. Iancu<\/a>, [2016-2470, 2016-2472, 2016-2474] (June 7, 2018), the Federal Circuit affirmed the Board’s decisions finding certain claims of\u00a0U.S. Patent No. 6,906,981 invalid.\u00a0 After the Board issued its final written decisions, PGS settled with the Petitioner, leaving the Director to defend the final Written decision on appeal.<\/p>\n

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.<\/p>\n

As to obviousness, the Federal Circuit noted that\u00a0the obviousness inquiry entails
\nconsideration of whether a person of ordinary skill in the\u00a0art would have been motivated to combine the teachings\u00a0of the prior art references to achieve the claimed invention,
\nand would have had a reasonable expectation of\u00a0success in doing so.\u00a0\u00a0Such a motivation and reasonable\u00a0expectation may be present where the claimed invention
\nis the combination of familiar elements according to\u00a0known methods that does no more than yield predictable\u00a0results.<\/p>\n

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.\u00a0 The Federal Circuit noted that w it may not supply a\u00a0reasoned basis for the agency\u2019s action that the agency\u00a0itself has not given, it will uphold a decision of less than\u00a0ideal clarity if the agency\u2019s path may reasonably be discerned.<\/p>\n

PGS argued,with the support of expert testimony, that the combination of the references would result in an eight-fold loss of spatial resolution.\u00a0 However the Federal Circuit noted that this\u00a0argument relies on the\u00a0presumption that one of ordinary skill would blindly\u00a0incorporate one reference’s exact methodology into the other.\u00a0 The Federal Circuit found that the\u00a0Board properly did not view the proposed\u00a0combination to be so limited.<\/p>\n

 <\/p>\n

 <\/p>\n","protected":false},"excerpt":{"rendered":"

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\u00a0U.S. Patent No. 6,906,981 invalid.\u00a0 After the Board issued its final written decisions, PGS settled with the Petitioner, … Continue reading →<\/span><\/a><\/p>\n","protected":false},"author":2,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[12],"tags":[],"class_list":["post-2081","post","type-post","status-publish","format-standard","hentry","category-obviousness"],"post_mailing_queue_ids":[],"_links":{"self":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2081","targetHints":{"allow":["GET"]}}],"collection":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/users\/2"}],"replies":[{"embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2081"}],"version-history":[{"count":1,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2081\/revisions"}],"predecessor-version":[{"id":2082,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=\/wp\/v2\/posts\/2081\/revisions\/2082"}],"wp:attachment":[{"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2081"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2081"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/patents.harnessip.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2081"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}