“In the absence of specific findings by the Board on these issues, the PTO’s factual arguments cannot be adopted at first instance on appeal.” – CAFC
The United States Court of Appeals for the Federal Circuit (CAFC) today found certain claims in Google, LLC’s U.S. Patent Application No. 14/628,093 to be obvious, vacating the Patent Trial Board (PTAB) precedent decision. bottom. The CAFC’s opinion prepared by Chief Justice Moore stated that the United States Patent and Trademark Office’s (USPTO) allegations on appeal “do not reflect the reasons or findings actually invoked by the Commission, and therefore the following Commissions: I cannot support the decision of
Google’s patent application relates to a method of filtering Internet search query results so that only age-appropriate results are displayed for users. At issue were two prior art references. Parthasarathy “discloses a method for filtering search results by comparing the ‘search query intent score’ against a predetermined safe threshold,” Rose says, “Systems and methods for improving rankings.” is titled. Information retrieval results for short queries. ”
examiner’s refusal
Google’s application originally received a non-final obviousness rejection under Parthasarathy. Google responded by amending Claim 1 to add a restriction stating that the predetermined threshold is “determined based on the number of words in the search query.” However, the examiner again rejected the application. This time it was based on a combination of Rose and Parthasarathy. The examiner determined that Rose had disclosed a threshold based on word count and that “it would have been obvious that Rose and her Parthasarathy combined to achieve the requested threshold.” . is very well known in the art, and in doing so it is even possible to assign weight to long or short queries for retrieving documents. However, the examiner disagreed and Google appealed to her PTAB.
What the Board Said (or Didn’t)
However, the Board upheld the examiner’s decision and adopted the examiner’s findings. Google appealed her PTAB’s decision, and the USPTO, on appeal, argued that he should uphold the PTAB’s decision, noting how Google’s application represented changes to the two references. I provided an example. However, the Federal Circuit dismissed these allegations on the grounds that the USPTO presented reasons and findings beyond what the Board actually stated. The court explained:
“Whether or not it is worthwhile, the PTO’s allegations do not reflect the reasons or findings actually cited by the Commission, and therefore the following Commission decisions cannot be upheld…. Contrary to the PTO’s characterization of the Board’s decision, it was not based on the finding that there are only two ways to modify Parthasarathy using Rose. concluded that it would be obvious to modify Parthasarathy’s threshold to take into account Admittedly, the Commission did not discuss or suggest any specific amendments that the PTO would proceed with on appeal, and in the absence of specific findings by the Commission on these issues, You cannot adopt the PTO’s factual allegations in
The CAFC added that “no matter how hard it looked,” the court could not find the allegations put forward by the USPTO in the record. Both the Board and his USPTO said on appeal that using query length as a threshold was “very well known in the art,” but the CAFC dismissed that statement. I couldn’t find any supporting evidence. The USPTO suggested that “simple logic or common sense could fill these evidence gaps,” but the CAFC noted that even common sense must be “supported by evidence and reasoned explanation.” said. The court held that “the examiner’s assertion that a particular fact or principle is well known does not support evidence.”
back to board
The court also disagreed that the material evidence supported the Board’s interpretation of Rose, ultimately concluding that the PTAB’s reasoning could not sustain its dismissal of the claims. Google asked the court to dismiss her USPTO argument on appeal, but the court denied it at first instance because it was not addressed by the examiner or her PTAB. Accordingly, the Court reversed the Commission’s decision and remanded it for further proceedings in unanimity.
