CAFC in Chaganti: We read this as a statement that common sense would have provided a reason to combine these references.

IN RE NAREN CHAGANTI


The Board found that a person of ordi- nary skill would have had a reason to use “the online print service of Manolis to provide licensed access to copyrighted images in order to provide account users with the ability [to] control access to their copyrighted images” while “at the same time providing concurrent access to the images as suggested by Glassman.” S.A. 11 (citing S.A. 115-116). 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. See 17 U.S.C. § 102 (“Copyright protection subsists . . . in original works of authorship fixed in any tangible medium of expression . . . .”). 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. Substantial evidence supports the Board’s finding.


BUT


Nonetheless, Mr. Chaganti’s argument regarding the lack of a stated reason to combine is not unreasonable. We caution 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 ordi- nary skill.” S.A. 115. Such circular reasoning is not sufficient—more is needed to sustain an obviousness rejection.