Federal Circuit Reverses Obviousness Ruling

The Federal Circuit has reversed a ruling by the Patent Trial and Appeal Board (PTAB) because the PTAB’s obviousness rejection did not reflect “the reasoning or findings the Board actually invoked.”

The case is In Re Google, LLC, Case No. 22-1012 (Fed. Cir. Jan. 9, 2023).

Google appealed a PTAB decision affirming a patent examiner’s final rejection of certain claims of its US Patent Application No. 14/628,093 pursuant to 35 U.S.C. § 103.

The application discloses methods for filtering the results of an internet search query so that only results appropriate for the user (e.g., age appropriate) are displayed.

As the court describes,

According to the disclosed method, each result of a search query is assigned a “content rating class” indicating the suitability of the associated content (e.g., “suitable for all ages”)... The search query’s “content rating score,” also referred to as a safety score, is then determined based on the collection of content rating classes assigned to its individual results... 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 proportion 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.

The application discloses multiple ways in which this threshold can be predetermined, such as using the number of words in the search query and/or the length and/or complexity of individual words in the search query.

For example, if a search query exceeds a certain 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 ratings indicating the content is suitable for children can be relatively lower than for a shorter search query.”

The patent application was rejected on the grounds that the claims would have been obvious under 35 U.S.C. § 103 based on two prior art references.

Under 35 U.S.C. § 103,

A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains.

“Obviousness” is a question of law based on underlying factual findings. Something is “obvious” (or not) based on the perspective of an imagined person having ordinary skill in the art (sometimes abbreviated PHOSITA). Often, experts in a field are called to testify as to what would be considered “obvious.”

This hypothetical skilled person is considered to have the ordinary skills and knowledge in a particular technical field (such as computer programming, engineering, chemistry, etc.) without being a genius in that field.

The term "ordinary skill" doesn’t have a fixed definition. Factors that can be considered in determining the level of ordinary skill can include:

  • the educational level of the inventor;
  • types of problems encountered in the field;
  • prior art solutions to those problems;
  • the rapidity with which innovations are made;
  • the sophistication of the technology; and
  • the educational level of active workers in the field

In the case of KSR v. Teleflex, US Supreme Court Justice Kennedy said that “A person of ordinary skill is also a person of ordinary creativity, not an automaton.”

Other cases have described a PHOSITA as having “common sense.”

Also, said the Supreme Court in the KSR case,

One of the ways in which a patent's subject matter can be proved obvious is by noting that there existed at the time of invention a known problem for which there was an obvious solution encompassed by the patent's claims.

One of the prior art references in the Google case disclosed a method to determine a content score to use for ranking results. The other disclosed a method to assign a rating for the importance of the results based on the length of the query.

The examiner contended that it would be obvious to combine both prior art references, 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 doing so would further provide for assigning weight to a long or a short query for retrieving documents.

Google countered that one reference only discloses a query-length-dependent relevance score and that “a score is clearly different than a threshold value.”

On appeal to the Federal Circuit, the US Patent and Trademark Office (USPTO) argued the PTAB’s decision should be affirmed because there are only two ways to predictably modify the threshold in one prior art reference to incorporate query length as taught by the other reference, and both would have been obvious to try.

However, said the court, these arguments couldn’t sustain the PTAB’s decision because they didn’t reflect the reasoning or findings the PTAB actually invoked.

As the court noted, “a court may uphold agency action only on the grounds that the agency invoked when it took the action.”

Contrary to the Patent Office’s characterization of the PTAB’s decision, said the court,
it did not rest on a finding that there were only two ways to modify one prior art reference using the other or suggest that these modifications would have been obvious to try.

Indeed, said the court,

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’s fact-based arguments in the first instance on appeal.

Thus, the court vacated the PTAB’s decision and remanded for further proceedings consistent with the opinion.

Categories: Patents