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.<\/p>\n\n\n\n
The Board adopted the examiner\u2019s findings, and purported to \u201cagree with the Examiner\u201d that modifying Parthasarathy\u2019s threshold \u201cto take into account query length as taught by Rose\u201d would have been obvious at the time of filing.<\/p>\n\n\n\n
On appeal, the PTO argued that the Board\u2019s decision should be affirmed because there are only two ways to predictably modify Parthasarathy\u2019s 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\u2019s adjusted relevance score could be used to modify either Parthasarathy\u2019s 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.<\/p>\n\n\n\n
Meritorious or not, the PTO\u2019s arguments cannot sustain the Board\u2019s 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\u2019s characterization of the Board\u2019s 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\u2019s 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\u2019s fact-based arguments in the first instance on appeal.<\/p>\n\n\n\n
The Federal Circuit concluded that the Board\u2019s expressed reasoning cannot sustain its rejection of claims 1, 3\u201310, 12\u201319, and 21\u201327 and therefore vacate the Board\u2019s
decision.<\/p>\n","protected":false},"excerpt":{"rendered":"
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 theresults of an internet search query such that only results appropriate for the user (e.g., … Continue reading