'; Federal Circuit Rejects Arguments Not Raised by the Examiner or PTAB

Federal Circuit Rejects Arguments Not Raised by the Examiner or PTAB

February 8, 2023

By Eric Magleby

The Federal Circuit recently reinforced its precedent that only arguments invoked in administrative decisions can be upheld on appeal. The Federal Circuit’s decision also highlights the USPTO’s burden of maintaining consistency with respect to cited grounds for rejection and supporting conclusions as to what is obvious as common knowledge with substantial evidence.

In 2015, Google filed a patent application related to algorithms for filtering search results. Specifically, Google’s application relates to an algorithm in which individual results to a search query are assigned a “content rating class” indicating the suitability of result content for a particular audience. A “content rating score” is subsequently determined based on the collection of discrete content rating classes for individual results. This content rating score is then compared to a predetermined threshold to determine how the results should be presented (e.g. whether the results should be completely blocked or partially filtered). Google’s application describes how the predetermined threshold may be based on the search query itself, which may be used to determine the age of the searcher and thus the degree to which results should be filtered. The claims at issue thus recite “wherein the predetermined threshold value is determined based on a number of words included in [a] search query.”

The USPTO rejected Google’s claims based on a first reference disclosing assigning individual search results of a query an “adult-content score” and comparing the individual scores to a threshold, and a second reference describing adjusting individual search result relevance scores based on the length of a query. In rejecting the claims, the examiner argued that “analyzing a query for determining the query length and using the query length as a threshold is very well known in the art and doing so would further provide for assigning weight to a long or a short query for retrieving documents.” On appeal, the PTAB affirmed the examiner’s rejection.

In In Re Google, 2022-1012, the Federal Circuit found that neither the examiner nor the PTAB provided evidence to support the assertion that using query length as a threshold was well known in the art. The Court also held that the examiner’s reasoning amounted to an argument that the features of one reference could be substituted for features of the other, despite a lack of explicit language identifying the grounds for rejection as a “simple substitution.” Under this framework, the Federal Circuit held that even assuming such a substitution were to take place, the resulting features would still not result in all claimed elements, as the query-dependent relevance scores do not apply to a collection of results like the claimed predetermined threshold.

Finally, the Federal Circuit rejected the USPTO’s arguments on appeal that the teachings of one obviousness reference could be modified based on the teachings of the other, because such a modification argument was never invoked by the examiner or the PTAB. In doing so, the Federal Circuit followed well-established precedent that only arguments invoked by an administrative agency in its underlying decisions can be upheld on appeal. Thus, the Federal Circuit refused to opine on the merits of the USPTO’s modification arguments newly raised on appeal, and these arguments may be raised by the USPTO on remand.

Eric Magleby