Case: 22-1012 Document: 38 Page: 1 Filed: 01/09/2023
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: GOOGLE LLC,
Appellant
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2022-1012
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 14/628,093.
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Decided: January 9, 2023
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DEBMALLO SHAYON GHOSH, Williams & Connolly LLP,
Washington, DC, argued for appellant Google LLC. Also
represented by ANDREW V. TRASK.
ROBERT MCBRIDE, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee Katherine K. Vidal. Also represented by DANIEL
KAZHDAN, THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA
YASMEEN RASHEED.
______________________
Before MOORE, Chief Judge, LOURIE and PROST, Circuit
Judges.
MOORE, Chief Judge.
Google appeals a decision of the Patent Trial and Ap-
peal Board affirming an examiner’s final rejection of claims
1, 3–10, 12–19, and 21–27 of U.S. Patent Application No.
Case: 22-1012 Document: 38 Page: 2 Filed: 01/09/2023
2 IN RE: GOOGLE LLC
14/628,093 pursuant to
35 U.S.C. § 103. For the reasons
given below, we vacate the Board’s decision and remand for
further proceedings.
BACKGROUND
A. THE ’093 APPLICATION
The ’093 application discloses methods for filtering the
results of an internet search query such that only results
appropriate for the user (e.g., age appropriate) are dis-
played. See, e.g., J.A. 27 ¶ 2; J.A. 31–32 ¶ 29. According to
the disclosed method, each result of a search query is as-
signed a “content rating class” indicating the suitability of
the associated content (e.g., “suitable for all ages”). J.A.
38 ¶ 53; J.A. 46–48 ¶¶ 75–79. The search query’s “content
rating score,” also referred to as a safety score, is then de-
termined based on the collection of content rating classes
assigned to its individual results. J.A. 38 ¶ 53; J.A. 46–48
¶¶ 75–79. The content rating score is then compared to a
predetermined threshold value to determine whether and
which results will be presented. For example, if the pro-
portion of search results assigned a “suitable for all ages”
content rating class is below a predetermined threshold of,
say, 50%, the search query may be completely or partially
blocked and no or only some results will be displayed. See
J.A. 38 ¶ 54; J.A. 43–45 ¶¶ 67–68, 71; J.A. 78 at Fig. 3.
The predetermined threshold value thus plays a criti-
cal role in determining which results of a search query will
be presented to the user. The ’093 application discloses
multiple ways in which this threshold can be predeter-
mined. As relevant on appeal, “the predetermined thresh-
old can be determined based on parameters associated with
the search query itself, such as the length of the search
query (e.g., a number of words and/or characters of the
search query) and/or the length and/or complexity of indi-
vidual words in the search query.” J.A. 39 ¶ 55. In this
embodiment, longer or more complex queries are associ-
ated with older users and the corresponding threshold is
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IN RE: GOOGLE LLC 3
set accordingly.
Id. Thus, if a search query exceeds a cer-
tain number of words, suggesting it was entered by an
older child or an adult, “the proportion of search results
[i.e., the threshold] associated with classes of content rat-
ings indicating the content is suitable for children can be
relatively lower than for a shorter search query.”
Id.
Independent claim 1, as amended in December 2018, is
representative:
1. A method for presenting search results, com-
prising:
receiving text corresponding to a search
query entered on a user device;
determining whether a content rating score
associated with the search query is below a
predetermined threshold value, wherein
the predetermined threshold value is deter-
mined based on a number of words in-
cluded in the search query and wherein the
score is calculated by:
identifying a first plurality of
search results retrieved using the
search query, wherein each search
result in the first plurality of
search results is associated with
one of a plurality of content ratings
classes;
determining, for each search result
in the first plurality of search re-
sults, a weight, wherein the weight
is determined based on a popular-
ity of the search result; and
calculating the content rating score
that is a proportion of search re-
sults associated with at least one of
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4 IN RE: GOOGLE LLC
the content ratings classes among
the first plurality of search results,
wherein the proportion of search
results associated with at least one
of the content ratings classes is cal-
culated using the weight associated
with each search result;
in response to determining that the content
rating score is below the predetermined
threshold value, identifying a second plu-
rality of search results to be presented
based on the search query; and
causing the second plurality of search re-
sults to be presented on the user device.
J.A. 17 at claim 1 (emphasis added).
B. THE PRIOR ART
Two prior art references are at issue on appeal: U.S.
Patent Application Publication No. 2012/0150850 A1 (Par-
thasarathy) and
U.S. Patent No. 5,870,740 (Rose). Par-
thasarathy discloses methods of filtering search results by
comparing a “search-query-intent score” to a predeter-
mined safety threshold. J.A. 540–41 ¶¶ 17–21. To deter-
mine the search-query-intent score, each search result is
first assigned a relevance rank or score, indicating the re-
sult’s relevance to the query, and an “adult-content score,”
indicating the amount of adult content within the result as
assessed via keywords, metadata, advertising, etc.
Id.
¶¶ 17–19, 22. In one embodiment, the search-query-intent
score is then determined by taking the weighted sum of
adult-content scores corresponding to the most relevant
search results, wherein the weights correspond to each re-
sult’s relevance rank or score. See J.A. 544 ¶¶ 42–44; J.A.
534 at Figs. 4A–4B.
The search-query-intent score, in combination with a
user-selected safety setting, is then used to “influence the
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IN RE: GOOGLE LLC 5
search results presented to a user in response to a search
query.” J.A. 541 ¶ 21. The safety setting is first associated
with a numerical threshold against which the adult-con-
tent score is compared. See J.A. 544 ¶¶ 42–44; J.A. 434 at
Figs. 4A–4B. Depending on whether the search-query-in-
tent score exceeds the user’s chosen safety threshold, all,
some, or none of the results will be displayed. J.A. 544
¶¶ 42–44. Although Parthasarathy discloses a predeter-
mined threshold, it is undisputed that it does not disclose
a predetermined threshold “based on a number of words”
in a search query, as required by claim 1.
Rose addresses the so-called “short query problem” pre-
sent in prior art relevance-ranking algorithms of the time.
In the case of queries containing only a few terms, prior art
algorithms would often incorrectly assign higher relevance
scores to documents including only a subset of search terms
than to those including the entire query. J.A. 502 at 3:4–
21; J.A. 504 at 7:11–19. Rose discloses a modified rele-
vance-ranking algorithm intended to address this problem
by adjusting prior art relevance scores based on the degree
of overlap between the query terms and documents terms
(i.e., the number of query terms that also appear in the doc-
ument), as well as the number of words in the query itself.
J.A. 502 at 4:29–36; J.A. 503 at 6:4–38. In this way, the
relevance score of a document with high overlap is in-
creased more for short queries than long queries, mitigat-
ing the error exhibited by prior art algorithms. J.A. 503 at
6:36–56. Further, because the algorithm factors in not only
the number of words in the query (which remains the same
for each document), but also the degree of overlap between
the document and query, the relevance adjustment will be
document-dependent. J.A. 502 at 4:31–36.
C. PROCEDURAL HISTORY
Following a non-final obviousness rejection based on
Parthasarathy, Google amended claim 1 to add the limita-
tion presently at issue, namely that the predetermined
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6 IN RE: GOOGLE LLC
threshold value is “determined based on a number of words
included in the search query.” J.A. 355 (Dec. 6, 2018 Reply
to Non-Final Office Action). In response, the examiner is-
sued a final rejection, relying on Rose in combination with
Parthasarathy. See J.A. 379–85 (Mar. 14, 2019 Final Of-
fice Action). The examiner acknowledged Parthasarathy
does not disclose a threshold based on a number of words
but found Rose does, citing Rose’s modified relevance-rank-
ing algorithm. J.A. 384. He further reasoned it would have
been obvious to combine Rose and Parthasarathy to
achieve the claimed threshold because “analyzing a query
for determining the query length and using the query
length as a threshold is very well known in the art and do-
ing so would further provide for assigning weight to a long
or a short query for retrieving documents.”
Id.
In reply, Google argued Rose only discloses a query-
length-dependent relevance score and that “a score is
clearly different than a threshold value.” J.A. 405–06 (May
13, 2019 Reply to Final Office Action) (emphasis omitted).
Accordingly, Google asserted, the combination of Parthasa-
rathy and Rose at most described increasing a score based
on the number of words in a query, not determining
whether a score was below a threshold that itself depended
on query length.
Id. The examiner disagreed, see J.A. 426–
28, and Google appealed to the Board. J.A. 432–42.
The Board issued a final decision affirming the exam-
iner’s rejection of claims 1, 3–10, 12–19, and 21–27. Ex
Parte Eileen Margaret Peters Long et al., No. 2020-001978,
2021 WL 3466217, at *1 (P.T.A.B. Aug. 3, 2021) (Decision).
The Board adopted the examiner’s findings, Decision at *2,
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.
Id. at *4. Google appeals. We have jurisdic-
tion pursuant to
28 U.S.C. § 1295(a)(4)(A).
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IN RE: GOOGLE LLC 7
STANDARD OF REVIEW
Obviousness is a question of law based on underlying
factual findings. In re Giannelli,
739 F.3d 1375, 1378 (Fed.
Cir. 2014) (citing Graham v. John Deere Co.,
383 U.S. 1,
17–18 (1966)). We review the Board’s legal conclusions de
novo and any underlying findings of fact for substantial ev-
idence. In re Van Os,
844 F.3d 1359, 1360 (Fed. Cir. 2017).
“Substantial evidence requires the reviewing court to ask
whether a reasonable person might find that the eviden-
tiary record supports the agency’s conclusion.” In re Sulli-
van,
498 F.3d 1345, 1350 (Fed. Cir. 2007) (internal
quotation marks omitted).
DISCUSSION
On appeal, the PTO argues 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 obvi-
ous 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-in-
tent score or its threshold and that either modification
would predictably result in a threshold based on the num-
ber of words in a query. According to the PTO, because
Parthasarathy teaches a simple comparison of its score and
threshold, “the result of the comparison would be exactly
the same” regardless of whether the score is raised or the
threshold is decreased. And, in this way, Rose’s query-
length-dependent algorithm could be used to modify Par-
thasarathy’s threshold to achieve the threshold described
by claim 1.
Meritorious or not, the PTO’s arguments cannot sus-
tain the Board’s decision below because they do not reflect
the reasoning or findings the Board actually invoked.
Michigan v. E.P.A.,
576 U.S. 743, 758 (2015) (“[It is a] foun-
dational principle of administrative law that a court may
uphold agency action only on the grounds that the agency
Case: 22-1012 Document: 38 Page: 8 Filed: 01/09/2023
8 IN RE: GOOGLE LLC
invoked when it took the action.” (citing SEC v. Chenery
Corp.,
318 U.S. 80, 87 (1943))); see also Power Integrations,
Inc. v. Lee,
797 F.3d 1318, 1326 (Fed. Cir. 2015) (“[O]ur re-
view of a patentability determination is confined to the
grounds upon which the Board actually relied.” (internal
quotation marks omitted)). Contrary to the PTO’s charac-
terization of the Board’s decision, it did not rest on a find-
ing 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 ac-
count query length would have been obvious, Decision at
*4, 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 modifica-
tions 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 PTO attempts to ground its arguments in isolated
examiner statements incorporated by the Board that Par-
thasarathy’s thresholds are configurable design choices
and thus amenable to modification. See J.A. 347. But
squint as we may, we do not see the justifications invoked
by the PTO on appeal reflected in the record below. Read
in its entirety, the record suggests the examiner and Board
did not rely on Rose to modify Parthasarathy’s threshold at
all, but instead understood Rose’s score to disclose a query-
length-dependent value that could be directly substituted
for Parthasarathy’s user-selected threshold. The examiner
was quite clear in this respect. In the Final Office Action,
the examiner expressly found that Rose alone discloses a
predetermined threshold based on a number of words and
cited to Rose’s relevance algorithm. J.A. 384 (citing J.A.
502 at 4:28–54). Later, in an advisory action preceding
Google’s appeal to the Board, the examiner was even more
explicit:
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IN RE: GOOGLE LLC 9
The score value as disclosed in Rose is equivalent
to the threshold value as claimed because the
threshold is a value which depends on the number
of words in the query and increases or decreases
based on the number of words in the query and the
score in Rose is also a value which depends on the
query length and increases or decreases based on
the query length; they are therefore the same.
J.A. 427 (emphasis added); see also J.A. 428 (“Rose is relied
on for . . . using the query length as a threshold for rele-
vancy comparison . . . .”). And in briefing to the Board, the
examiner again asserted it would have been obvious to “use
the technique of calculating a value based on the number
of words included in the search query as taught by Rose as
a configurable threshold value to which a different score is
compared as taught by Parthasarathy.” J.A. 479 (empha-
sis added). Thus, although the Board purported to “agree”
with the examiner that it would have been obvious to mod-
ify Parthasarathy’s threshold using Rose, Decision at *4,
we see no such statement in the examiner’s analysis and
thus no basis for the Board’s conclusion.
The PTO also rests its arguments on the Board’s find-
ing, quoting the examiner, that using query length as a
threshold was “very well known in the art.” Decision at *3
(quoting J.A. 384). In making this assertion, however, nei-
ther the Board nor the examiner cited any evidence sug-
gesting such a technique was in fact conventional or
widespread. Instead, the Board, again quoting the exam-
iner, cited only to Rose’s discussion of its modified rele-
vance-ranking algorithm. But as the PTO concedes on
appeal, Rose does not disclose using query length as a
threshold, and there is no record evidence that supports a
finding that using query length as a threshold was well
known in the art. The PTO also argues that simple logic or
common knowledge might fill these evidentiary gaps. But
while common knowledge “can be invoked, even potentially
to supply a limitation missing from the prior art, it must
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10 IN RE: GOOGLE LLC
still be supported by evidence and a reasoned explanation.”
Arendi S.A.R.L. v. Apple Inc.,
832 F.3d 1355, 1363 (Fed.
Cir. 2016). An examiner’s assertion that a particular fact
or principle is well-known is not evidentiary support. See
id. at 1362; see also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co.,
464 F.3d 1356, 1367
(Fed. Cir. 2006) (“[A]ssumptions about common sense can-
not substitute for evidence thereof . . . .”). Particularly in
light of the absence of any explanation of how query length
could be used as, or to modify, Parthasarathy’s threshold,
the Board’s unsupported assertion cannot provide substan-
tial evidence supporting its decision.
Further, to the extent the Board found that Rose’s
score could be substituted for Parthasarathy’s threshold to
achieve the disputed limitation of claim 1, that finding is
not supported by substantial evidence. As the PTO now
concedes, Rose does not by itself disclose a predetermined
threshold based on a number of words. Rather, it discloses
a method of calculating result-dependent relevance scores,
one that can necessarily only be implemented after the re-
sults of the query are retrieved. J.A. 502 at 4:29–54; J.A.
503 at 5:66–6:56. Unlike a predetermined threshold, which
applies to a collection of search results, Rose’s relevance
score will in general vary from result to result. Simple sub-
stitution of Rose’s score for Parthasarathy’s user-selected
threshold therefore cannot provide the predetermined
threshold of claim 1.
For the reasons given, we conclude that the Board’s ex-
pressed reasoning cannot sustain its rejection of claims 1,
3–10, 12–19, and 21–27 and therefore vacate the Board’s
decision. Google urges us to find that the PTO’s arguments
based on Parthasarathy and Rose, which the Board did not
invoke, lack merit. But, as Google concedes, those argu-
ments rest on factual predicates unaddressed by the exam-
iner or Board. We will not address their merits in the first
instance on appeal.
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CONCLUSION
We have considered the parties’ other arguments and
find them unpersuasive. For the reasons given, we vacate
the Board’s decision and remand for further proceedings
consistent with this opinion.
VACATED AND REMANDED
COSTS
No costs.
