Similarity of purpose not enough to establish motivation to combine

In William Wesley Carnes, Sr., Inc. v. Seaboard Int’l Inc., No. IPR2019-00133, Petitioner filed a Petition for inter partes review of US Pat. No. 8784542, in which each independent claim was directed to a shale-gas separator and each prior art reference was directed to an apparatus for treating drilling mud. In their obviousness analysis, PTAB rejected the argument that since “mud-gas separators and shale-gas separators accomplish the same objective using the same purpose” a POSITA would have been motivated to use the prior art apparatus for shale gas separation. Similarly rejecting the argument that motivation could be implied from the fact that the references addressed common problems in oil and gas drilling, the Board held “That statement of similarity, however, does not constitute an articulated reasoning with rationale underpinnning as to why a POSITA would combine elements of one reference with another…”

The decision provides a useful blueprint for responding to rejections based upon an “intended use” construction, and would seem to provide support for the argument that if similarity does not provide motivation, dissimilar references necessarily cannot. PTAB-IPR2019-00133-10 William Wesley v. Seaboard