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Raise It or Lose It! The Federal Circuit Will Not Address Obviousness Arguments First Raised by the PTO on Appeal

| Jeremiah S. Helm, Ph.D.Rhett D. Ramsey

In Re Google LLC

Before: Moore, Lourie, and Prost. Appeal from the Patent Trial and Appeal Board.

Summary: The PTO’s arguments on appeal did not reflect the record below.

Google filed an application claiming 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 claimed method uses a predetermined threshold based on the number of words in the search query to identify whether the search should return relatively more or less content suitable for children.  The Examiner rejected the claims as obvious over two prior art references: Parthasarathy and Rose. The rationale for the Examiner’s rejection was that Rose’s query-length-dependent value could be substituted for Parthasarathy’s user-selected threshold.  The PTAB affirmed the Examiner’s rejection. Google appealed.

On appeal, the PTO argued that the PTAB’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. However, the Federal Circuit found that, meritorious or not, the PTO’s arguments did not reflect the PTAB’s articulated substitution theory of obviousness.  The Federal Circuit explained that its review of a patentability determination is confined to the grounds upon which the PTAB actually relied, and therefore it could not consider the PTO’s argument for the first time on appeal.  The PTO conceded that Rose does not disclose a predetermined threshold based on a number of words and instead discloses calculating scores only implemented after the query results are retrieved.  As a result, the Court concluded that the Board’s reasoning did not support the rejections.  Accordingly, the Federal Circuit vacated the PTAB’s decision and remanded for further proceedings.

Editor: Paul Stewart