In In re Google, [2022-1012] (January 9, 2023) the Federal Circuit vacated the PTAB’s decision affirming the final rejection of Google’s application methods for filtering the
results of an internet search query such that only results appropriate for the user (e.g., age appropriate) are displayed.
The Board adopted the examiner’s findings, and purported to “agree with the Examiner” that modifying Parthasarathy’s threshold “to take into account query length as taught by Rose” would have been obvious at the time of filing.
On appeal, the PTO argued that the Board’s decision should be affirmed because there are only two ways to predictably modify Parthasarathy’s threshold to incorporate query length as taught by Rose, and both would have been obvious to try. Specifically, it asserts a skilled artisan would have recognized that Rose’s adjusted relevance score could be used to modify either Parthasarathy’s search-query-intent score or its threshold and that either modification would predictably result in a threshold based on the number of words in a query.
Meritorious or not, the PTO’s arguments cannot sustain the Board’s decision below because they do not reflect the reasoning or findings the Board actually invoked. It is a foundational
principle of administrative law that a court may uphold agency action only on the grounds that the agency invoked when it took the action. The Federal Circuit said its review
of a patentability determination is confined to the grounds upon which the Board actually relied. Contrary to the PTO’s characterization of the Board’s decision, it did not rest on a finding that there were only two ways to modify Parthasarathy using Rose or suggest that these modifications would have been obvious to try. 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. Certainly, the Board did not discuss or suggest the specific modifications the PTO advances on appeal. In the absence of any specific findings by the Board on these matters, we may not adopt the PTO’s fact-based arguments in the first instance on appeal.
The Federal Circuit concluded that the Board’s expressed reasoning cannot sustain its rejection of claims 1, 3–10, 12–19, and 21–27 and therefore vacate the Board’s