          NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                   ______________________

                IN RE NAREN CHAGANTI
                  ______________________

                         2013-1372
                   ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in Serial No.
09/634,725.
                 ______________________

                 Decided: January 27, 2014
                  ______________________

      NAREN CHAGANTI, of Town & Country, Missouri, pro
se.

   NATHAN K. KELLEY, Deputy Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia.
With him on the brief were JOSEPH MATAL and ROBERT J.
MCMANUS, Associate Solicitors.
                ______________________

      Before MOORE, SCHALL, and REYNA, Circuit Judges.
PER CURIAM.
    Naren Chaganti appeals from the decision of the Pa-
tent Trial and Appeal Board (Board) affirming the obvi-
ousness rejections of all the claims of U.S. Patent
Application No. 09/634,725 (’725 application). Because
2                                           IN RE CHAGANTI




the factual findings underlying the Board’s conclusion are
supported by substantial evidence, and because the Board
did not commit legal error, we affirm.
                      BACKGROUND
     The invention claimed in Mr. Chaganti’s ’725 applica-
tion is a method and system for providing limited access
to articles, books, music, movies, and other copyrighted
content through the Internet pursuant to a license.
Separate Appendix (“SA”) 53-54. 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. S.A. 54-55. The invention also allows for a
limited number of requestors to simultaneously access
information. Id. Finally, the invention uses a formatting
program that enables content to be viewed on the reques-
tor’s device. S.A. 55-56. Claims 45 through 61 are at
issue in this appeal. Claim 45 is representative:
    A server-computer implemented method of
    providing online repository services to a plurality
    of users . . . comprising . . . :
    establishing on the server computer connected to
    the Internet an account for each of a plurality of
    users;
    storing on the server computer a copyright-
    protected information object; and
    controlling access to the copyright-protected
    information object by one or more of the plurality
    of users in accord with one or more restrictions.
S.A. 317 (emphases added). Illustrative claims that
depend from claim 45 add the further limitations of:
“examining license information for the copyright-
protected information object to determine a number N
(where N ≥ 1) of simultaneous users who could access the
IN RE CHAGANTI                                            3



copyright protected information object” (claim 48); allow-
ing access to the copyrighted information “for a predeter-
mined time” and during a particular “time period” (claim
49 and 50); and “formatting” the copyrighted information
so that it is “suitable to the requirements of a user’s
device” (claim 51). S.A. 317-318. The examiner rejected
the pending claims as unpatentable over U.S. Patent No.
7,243,079 (Manolis) in view of U.S. Patent No. 6,453,305
(Glassman). S.A. 73-75.
     Manolis discloses a system that enables users to pur-
chase prints of their digital photographs online and share
photographs online. Manolis col. 2 ll. 63–65. Manolis
discloses that a “user optionally can share his/her online
photos (i.e., those images that the user has uploaded to
the host computer system) with other users . . . .” Id. col.
9 ll. 37–39. Sharing photos online “causes the host sys-
tem to set access permissions as appropriate to allow the
intended share recipient to access the online images
specified by the user.” Id. col. 9 ll. 60–63. Manolis also
discloses creating and displaying an image thumbnail for
each of the uploaded photographs. Id. col. 6 ll. 14–57.
     Glassman discloses an “electronic commerce system
and method [that] enforces a license agreement for con-
tent on an open network by restricting the number of
consumers that can concurrently access the content.”
Glassman, at [57]. It discloses tracking “the users of [a]
web site and block[ing] users who are not licensed or who
have exceeded the scope of the applicable license.” Id. col.
5 ll. 52–54. Glassman also describes an embodiment in
which a vendor of copyrighted content has a license that
permits a fixed number of users to access content at any
given time. This embodiment further allows the vendor to
“check[] to determine whether there is an available li-
cense (i.e., whether an additional consumer is allowed to
view the content under the license).” Id. col. 6 ll. 1–3.
Glassman also discloses that the length of time and the
time period during which customers are given access to
4                                           IN RE CHAGANTI




copyrighted content may be controlled. Id. col. 2 ll. 42–
45, 63–65.
    The examiner rejected pending claims 45 through 61
as obvious in view of Manolis and Glassman. S.A. 73-75.
Additionally, he rejected claims 48, 49, 50, 54, 55, and 56
as obvious in view of other references in combination.
S.A. 75-78. Finally, he rejected claim 46 under 35 U.S.C.
§ 112(a) as lacking adequate written description. S.A. 72.
The Board upheld each of the examiner’s rejections. S.A.
7-16.
    Mr. Chaganti appeals the Board’s obviousness rejec-
tions. 1   We have jurisdiction under 28 U.S.C. §
1295(a)(4)(A).
                       DISCUSSION
                    I. Applicable Law
    We review the Board’s factual findings for substantial
evidence and its legal conclusions de novo. In re Kotzab,
217 F.3d 1365, 1369 (Fed. Cir. 2000). Whether a claim
would have been obvious under 35 U.S.C. § 103(a) is a
legal conclusion based on underlying factual determina-
tions. Id. The factual determinations include (1) the
scope and content of the prior art; (2) the differences
between the claims and the prior art; (3) the level of
ordinary skill in the art; and (4) objective evidence of
nonobviousness. Graham v. John Deere Co. of Kansas
City, 383 U.S. 1, 17–18 (1966). “[W]hether there is a
reason to combine prior art references is a question of
fact.” Rambus Inc. v. Rea, 731 F.3d 1248, 1252 (Fed. Cir.
2013) (citations omitted).



    1   Because Mr. Chaganti did not also appeal the re-
jection of claim 46 as lacking adequate written descrip-
tion, the unpatentability of that claim has been finally
decided and is not on appeal.
IN RE CHAGANTI                                             5



                      II. Obviousness
                    A. ANALOGOUS ART
    The parties dispute whether Manolis is analogous art.
“Two separate tests define the scope of analogous prior
art: (1) whether the art is from the same endeavor, re-
gardless 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.” In re Bigio,
381 F.3d 1320, 1325 (Fed. Cir. 2004). The Board found
that Manolis is analogous to the claimed invention under
the first test, concluding that “both the invention and
Manolis’ teachings are directed to systems which allow for
the storage and retrieval of information objects by a
plurality of users.” S.A. 11. Mr. Chaganti argues that
there is no substantial evidence that Manolis is analogous
art. He contends that Manolis is not concerned with
copyright-protected information and “the Board did not
explain why it ignored this key differentiator” in finding
that Manolis was relevant. Chaganti Br. 19.
    We agree with the PTO that Manolis is analogous art.
Because both Manolis and the claimed invention are
directed to the controlled distribution of content via the
Internet, they have essentially the same function and are
in the same field of endeavor. The fact that Manolis does
not specify that the photographs distributed by the sys-
tem are copyrighted does not suggest that a skilled arti-
san would not consult Manolis. Manolis need not disclose
every limitation of the claimed invention to fall within the
same field of endeavor as the claimed invention.
                    B. Teaching Away
   In finding that the claims of the ’725 application
would have been obvious in view of the combination of
Manolis with Glassman, the Board found that Glassman
does not teach away from the claimed invention. S.A. 11.
6                                             IN RE CHAGANTI




Mr. Chaganti argues that the Board’s finding lacks sub-
stantial evidence. He contends that Glassman’s state-
ment that “existing lock servers are undesirable on an
open network” teaches away from using existing lock
server architectures to provide controlled access to copy-
righted material on an open network. See Glassman col. 2
ll. 16–17.
    While Glassman describes the then-existing lock serv-
ers as “undesirable,” we disagree that this constitutes a
teaching away from mechanisms for controlling Internet
access to copyrighted material. “A reference may be said
to teach away when a person of ordinary skill, upon
reading the reference, would be discouraged from follow-
ing the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the
applicant.” In re Gurley, 27 F.3d 551, 553 (Fed. Cir.
1994). Glassman delineates the “undesirable” features of
existing lock servers, but it also lists various features that
a lock server should incorporate to avoid those deficien-
cies. See Glassman col. 2 ll. 18–31. Glassman affirma-
tively states that the “method and system for electronic
commerce” disclosed meets those needs. Id. col. 2 ll. 33–
37. Glassman further teaches the use of a locking mecha-
nism to police content use over the Internet and states
that it is an object of the invention to “allow enforcement
of an N-user license for content located on an open net-
work like the Internet.” Id. col. 2 ll. 29–30. Therefore, we
find that substantial evidence supports the Board’s con-
clusion that Glassman does not teach away from the
claimed invention’s disclosure of limiting Internet access
to copyrighted material.
                   C. Reason to Combine
    The Board found that a person of skill in the art
would have had reason to combine Manolis with Glass-
man to arrive at the claimed invention. S.A. 11 (citing
S.A. 115-116). Mr. Chaganti argues that the Board erred
IN RE CHAGANTI                                            7



by failing to articulate that reason. He contends that the
Board’s reason to combine the references was motivated
by hindsight bias. He further argues that the Board erred
by failing to make factual findings with respect to the
level of ordinary skill in the field of the invention.
    We disagree. 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.
    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.
     We agree with the PTO that the absence of factual
findings with respect to the level of ordinary skill in the
field of the invention does not “give rise to reversible
8                                           IN RE CHAGANTI




error” where, as here, “the prior art itself reflects an
appropriate level and a need for testimony is not shown.”
Okajima v. Bourdeau, 261 F.3d 1350, 1355 (Fed. Cir.
2001) (citations omitted). Moreover, Mr. Chaganti has
not made any showing that a finding regarding the level
of ordinary skill would impact the ultimate conclusion of
obviousness under section 103. See Custom Accessories,
Inc. v. Jeffrey-Allan Indus., Inc., 807 F.2d 955, 963 (Fed.
Cir. 1986).
                  D. Dependent Claims
     The Board found that Glassman teaches examining a
license to determine a number N of authorized concurrent
users (claim 48), as well as restricting the amount of time
or time periods during which the requestor is given access
to the information (claims 49 and 50). S.A. 12. With
respect to claims 51 and 57–60, the Board affirmed the
examiner’s finding that Manolis’ description of creating
thumbnail images of photographs teaches “formatting”
information and using a formatter as required by those
claims. S.A. 12-13.
    Mr. Chaganti disputes the Board’s findings. First, he
argues that Glassman does not examine license infor-
mation to determine N, as required by claim 48, but
instead starts with a known N. Next, he contends that
Glassman does not disclose the step of receiving licensing
information indicating that the license is for access of
information for a predetermined time (Tlicense) as required
by claim 49. Similarly, he contends that Glassman does
not disclose the step of determining a time period (T)
during which the copyright-protected information object
may be accessed as required by dependent claim 50.
    With respect to dependent claims 51, and 57–60, Mr.
Chaganti seems to argue that the Board misconstrued the
terms “formatting,” “formatter,” and “format.” However,
Mr. Chaganti does not offer any construction of these
terms. Instead, he argues only that the creation of
IN RE CHAGANTI                                             9



thumbnail images from a photograph as disclosed in
Manolis does not constitute formatting an image in a
manner suitable to a user’s device. He contends that the
thumbnails Manolis discloses are created at the time of
uploading an image and before a user is allowed access to
online photographs and thus are not formatted to be
“suitable to the requirements of a user’s device.”
    We agree with the PTO that substantial evidence
supports the Board’s findings that the combination of
Manolis and Glassman discloses each limitation of de-
pendent claims 48–50, 51, and 57–60, and renders these
claims obvious. First, with respect to dependent claim 48,
there is substantial evidence that Glassman teaches using
license information to determine the number of users, N,
that are allowed to access content, and does not arbitrari-
ly predetermine this number. For instance, Glassman
describes an embodiment in which “[p]referably, the
vendor . . . maintains a data structure associated with the
licensed content that can be quickly scanned to determine
whether a license is available.” Glassman col. 6 ll. 3–6.
In this embodiment, the vendor “checks to determine
whether there is an available license”—suggesting that
the number of users is determined on the basis of what
the license allows. Id. col. 6 ll. 1–3. Next, with respect to
dependent claims 49 and 50, there is substantial evidence
that Glassman discloses limiting access to copyrighted
information “for a predetermined time” and during a fixed
“time period.” Glassman discloses that “permission to
access specific content . . . may be unlimited or it may be
for only a relatively brief period of time, say a few
minutes to a few hours.” Id. col. 2 ll. 42–45. It further
teaches that “optionally, [the invention] provides the
consumer with an estimate of when a license will be
available.” Id. col. 2 ll. 63–65.
    Finally, we also agree with the PTO that substantial
evidence supports the Board’s finding that Manolis dis-
closes formatting content and using a formatting program
10                                           IN RE CHAGANTI




as required by dependent claims 51 and 57–60. Manolis
describes formatting uploaded photographs to display
them as thumbnail images on a user’s device. Manolis
col. 6 ll. 14–57.
    We have considered Mr. Chaganti’s remaining argu-
ments and find them unpersuasive. Because each of the
pending claims would have been obvious in light of the
combination of Manolis and Glassman, we do not reach
the Board’s additional bases for rejecting the claims.
                        CONCLUSION
     For the foregoing reasons, we affirm.
                       AFFIRMED
