Although probably dicta, it is encouraging that the court “caution[ed] the Board and the PTO that [obviousness] reasons must be clearly articulated” and that “[i]t is not enough to say that there would have been a reason to combine two references because to do so would ‘have been obvious to one of ordinary skill.’” “Such circular reasoning is not sufficient – more is needed to sustain an obviousness rejection.” Nevertheless, the court ultimately sanctioned what it saw as a “common sense” rationale, even one that was implicit.
Background / Facts: The application on appeal here from the PTO is directed to a system for providing limited access to articles, books, music, movies, and other copyrighted content through the Internet pursuant to a license. The system examines copyright license information to ensure that persons requesting access to the content have such access only for a particular amount of time or during particular time periods. The prior art includes “Manolis,” which discloses a system that enables users to purchase prints of their digital photographs online and share photographs online, and “Glassman,” which discloses “restricting the number of consumers that can concurrently access the content.”
Issue(s): Whether it is a legally cognizable rationale to assert that combining these references would have been obvious because both are directed to the distribution of copyrighted works (explicitly or implicitly) and provide functionality that may be independently useful.
Holding(s): Yes. “We read this as a statement that common sense would have provided a reason to combine these references. We find this persuasive given that, while Manolis does not specify that the images distributed by the system are copyrighted, they almost certainly are. … Common sense would have provided a person of ordinary skill with reason to use the teachings of Glassman to distribute these copyrighted images under the appropriate licenses.”