The Software IP Report

Federal Circuit Vacates PTAB Opinion in Google Application

Google recently convinced a Federal Circuit panel to vacate a decision by the Patent Trial and Appeal Board that had found Google’s application obvious. The court decided that the Boardfailed to support the decision with sufficient reasoning.

The claims in Google’s application pertained to delivering search results customized to an expected age of the searcher. The system calculates a “content rating score” based on the search results that a search query would return, and if the content rating score is below a “predetermined threshold,” the system returns a different mix of search results. The limitationof claim 1 at issue here is that “the predetermined threshold value is determined based on a number of words included in the search query.” A larger query length suggests an older searcher, and the predetermined threshold is adjusted accordingly.

Google had added the query-length limitation to overcome an anticipation rejection during prosecution. In a nonfinal office action, the examiner had rejected claim 1 as anticipated by a reference named Parthasarathy. Parthasarathy disclosescomparing a “search-query-intent score” to a safety threshold. Google responded with an amendment adding the query-length limitation. In the final office action, the examiner added Rose, a new secondary reference, to Parthasarathy. Rose discloses adjusting the relevance scores of search results using, among other things, the number of words in a search query. The examiner asserted that Rose covered a threshold based on the number of words, and it was obvious to combine Parthasarathy and Rose because “using the query length as a threshold is well known in the art.” Google appealed to the PTAB, but the PTAB affirmed the rejection. The PTAB purported to “agree with the Examiner” that modifying threshold in Parthasarathy “to take into account query length” from Rose is obvious.

In defending the PTAB’s decision, the Patent Office—perhaps cognizant that Rose didn’t actually teach applying query length to a threshold—used a different justification for why claim 1 was supposedly obvious. The Patent Office reasoned that there are only two ways to modify Parthasarathy to incorporate query length from Rose—changing the score or changing the threshold—so it would have been obvious to try both. But the Federal Circuit noted that an agency is required to defend the reasoning it actually used, not merely the action it took, so the panel declined to consider this justification.

The Federal Circuit panel instead evaluated the examiner’s and Board’s actual reasoning, and found it insufficient. “Indeed, although the Board concluded that modifying Parthasarathy’s threshold to take into account query length would have been obvious, … entirely absent from its decision is any discussion of how such a modification would be accomplished.” The examiner’s reasoning, which the Board had purported to adopt,had not actually suggested modifying Parthasarathy’s threshold with query length from Rose; instead, Rose’s query-length-dependent score was substituted for Parthasarathy’s threshold. But such a substitution doesn’t make sense because Rose’s scoreis dependent on the specific search result, and the threshold is not tied to any search result. Finally, the examiner’s invocation of common knowledge for query length, reiterated by the PTAB, was a bare assertion with no support: “An examiner’s assertion that a particular fact or principle is well-known is not evidentiary support.”

Accordingly, the Federal Circuit vacated the PTAB’s decision. The panel declined Google’s invitation to rule on the arguments that Patent Office used in front of the panel, and the case was remanded back to the Patent Office to address the “factual predicates” of those arguments. Although Google won the battle, it may still lose the war.

Lessons for Practice

This case was about process. As a federal agency, the Patent Office has certain processes that it must follow: defending the reasoning it uses, fully explaining its decisions, providing support for factual statements. Applicants are within their rights to demand that it do so.