Docket No. 2013-1372
MOORE, SCHALL, REYNA (per curiam)
January 27, 2014
Brief Summary: PTAB findings of obviousness affirmed (analogous art, no teaching away, no hindsight (common sense)) with warning that reasons to combine must be clearly articulated.
Summary: Naren Chaganti appealed from PTAB decision affirming the obviousness of all claims of US 09/634,725 relating to a method and system for providing limited access to copyrightes content through the internet pursuant to a license. The Examiner rejected the claims as obvious over two U.S. patents (Manolis (system enabling users to purchase prints of their digital photos online) and Glassman (e-commerce system that enforces a license agreement by restricting the number of consumers that can concurrently access the content)). The opinion began by reviewing the Graham factors and noting that “[w]hether there is a reason to combine prior art references is a question of fact” (citing Rambus, FC 2013). It then reviewed the tests for analogous art (raised with respect to Manolis reference): 1) whether the art is from the same endeavor, regardless of the problem addressed and, 2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved (citing In re Bigio, FC 2004). The FC panel agreed with the Board that Manolis is analogous art because both that reference “and the claimed invention are directed to the controlled distribution of content via the Internet”. The FC panel also agreed with the Board that Glassman does not teach away from the claimed invention. This is so even though “Glassman describes the then-existing lock servers as ‘undesirable’” because the reference “also lists various features that a lock server should incorporate to avoid these deficiencies” and “affirmatively states that the ‘method and system for electronic commerce’ disclosed meets those needs” (citing In re Gurley, FC 1994) (A reference may be said to teach away when a person of ordinary skill, upon reading the reference, would be discouraged from following the path set out in the reference, or would be led in a direction divergent from the path that was taken by the applicant.)) The FC panel also agreed with the Board that a person of skill in the art would have had reason to combine Manolis with Glassman, and that the Board did not rely on hindsight (“common sense would have provided a reason to combine these references”). However, the panel also explained that the “argument regarding the lack of a stated reason to combine is not unreasonable” and cautioned “the Board and the PTO that such reasons must be clearly articulated” (“It 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.”) It was determined here, though, that “the prior art itself reflects an appropriate level [of factual findings] and a need for testimony is not shown” (citing Okajima, FC 2001). It was also pointed out that Mr. Chaganti did not show that the level of skill in the art would have impacted the findings.