[00:00:00] Speaker 01:
Our next case for argument is 22-1012, in Rae, Google.

[00:00:10] Speaker 02:
This is an appeal of an obvious decision based on a factual finding for which there is no evidence in the record.

[00:00:16] Speaker 02:
The board found that using the query length as a threshold is very well known in the ART.

[00:00:22] Speaker 02:
But nothing in the record supports that finding, including the board's only citation for that point, the ROSE reference.

[00:00:28] Speaker 02:
ROSE does not use a threshold value of any kind.

[00:00:31] Speaker 02:
ROSE does not calculate any type of score for an entire search query.

[00:00:34] Speaker 02:
And ROSE has nothing to do with content filtering, which is the subject of Google's application.

[00:00:39] Speaker 02:
Therefore, there's no evidence in the record that the person is still in the ART would or even could have combined Parthasarathy and ROSE.

[00:00:47] Speaker 02:
Instead of defending the board's finding, on appeal, the PTO has pivoted largely to a new theory that the claim modification would have been, quote, obvious to try.

[00:00:55] Speaker 02:
This is a new argument on appeal for all the reasons that we've explained in our reply brief.

[00:01:01] Speaker 02:
And as such, it violates fundamental principles of administrative law.

[00:01:05] Speaker 02:
The board made a decision.

[00:01:08] Speaker 02:
And on appeal, the PTO is obligated to stick to the reasons that the board gave for its decision.

[00:01:13] Speaker 02:
And by not doing so, the PTO has

[00:01:16] Speaker 00:
I mean, they didn't use the term obvious to try, but they could have, they didn't necessarily have to do that.

[00:01:30] Speaker 00:
There's more to obvious to try.

[00:01:31] Speaker 00:
It's like they were, these were the limited number of design choices, ya da da.

[00:01:36] Speaker 00:
And I didn't see the board getting involved in that either.

[00:01:39] Speaker 00:
So it wasn't, am I correct, that it wasn't just

[00:01:42] Speaker 00:
They didn't say obvious to try.

[00:01:44] Speaker 00:
They didn't do any of the analysis that would come in behind that with respect to limited design choices and so forth.

[00:01:51] Speaker 02:
Correct, Your Honor.

[00:01:51] Speaker 02:
Yes.

[00:01:52] Speaker 02:
And that gets to the second issue with what the PTO has done in appeal, which is that whether there are a limited set of design choices is itself a factual finding that the board never made.

[00:02:02] Speaker 02:
And so the PTO is resting here on a completely new legal argument.

[00:02:05] Speaker 02:
based on completely new factual premises that the board never developed.

[00:02:10] Speaker 00:
So what about what the board did develop?

[00:02:12] Speaker 00:
I mean, you mentioned one which is, we claim it was an error for them to say that this was in the prior art.

[00:02:18] Speaker 00:
Was there anything more to the board's analysis beyond that?

[00:02:22] Speaker 02:
Essentially, no.

[00:02:24] Speaker 02:
The board's analysis appeared to assume that the score that's described in rows is essentially the same as the content rating score disclaimed.

[00:02:35] Speaker 02:
But there's several key differences between the score that's described in rows and the content rating score that is claimed in Google's invention.

[00:02:45] Speaker 02:
One is that the content rating score is a measure of whether a particular search query is appropriate for a particular user.

[00:02:54] Speaker 02:
The relevance ranking score in rows is a completely different type of score.

[00:02:59] Speaker 02:
It's evaluating whether a particular search result is relevant to a particular search.

[00:03:05] Speaker 02:
And beyond that, the score in Google's application applies to an entire search query.

[00:03:14] Speaker 02:
And the relevance ranking scores in rows are for a particular search result.

[00:03:18] Speaker 02:
So it's not so easy as the board would have it to just say, well, if the score for a particular document were higher or lower, we could just adjust that score or adjust the threshold.

[00:03:29] Speaker 02:
Because the threshold is applying across the entire universe of search results.

[00:03:35] Speaker 00:
But it's not that far off, right?

[00:03:37] Speaker 00:
So the board does have leeway applying common sense

[00:03:42] Speaker 00:
something else, even if the reference isn't precisely, the combination of references doesn't precisely do it.

[00:03:51] Speaker 00:
So was there any effort for the board to sort of rely on how they got to making that leap?

[00:03:58] Speaker 02:
No, Your Honor.

[00:03:59] Speaker 02:
I would agree with you that the Board would have been entitled to rely, perhaps, on common sense.

[00:04:04] Speaker 02:
But as this Court has said in the Randi decision, among others, the Board has to explain why common sense would have led a person of skill in the art to make the leap that the PTO now suggests for the first time in appeal, really.

[00:04:17] Speaker 02:
And there's nothing in the record to say that to explain how someone would have adapted the relevance ranking score algorithm in Rhodes into the content rating threshold that's described in Parthasarathy.

[00:04:32] Speaker 00:
Can I ask you a housekeeping question, which is that we're talking about claim one.

[00:04:38] Speaker 00:
But that, it also covers 3 through 10, 12 through 19, and 21 through 27 are all covered by this analysis here with respect to claim one.

[00:04:48] Speaker 02:
Yes, Your Honor.

[00:04:49] Speaker 02:
Yeah, we agree that claim one is representative of the issues.

[00:04:53] Speaker 01:
Counsel, one of the things that I think you argued and I'd like you to touch upon is the examiner found that using a query link as a threshold is very well known in the art.

[00:05:06] Speaker 01:
But it seemed to me to be an assertion.

[00:05:08] Speaker 01:
I was going through the entire record and I couldn't find anything.

[00:05:13] Speaker 01:
Certainly neither the examiner nor the board cited anything to demonstrate something's very well known.

[00:05:19] Speaker 01:
Do we defer to an examiner's sort of assertion that something is either known in the art or well known in the art in the absence of any sort of evidence presented, or is that something that we ought not do?

[00:05:34] Speaker 02:
We would suggest that something that Your Honors ought not do.

[00:05:36] Speaker 02:
And I think that requirement stems from administrative law.

[00:05:40] Speaker 02:
As we said in many instances in our briefing that

[00:05:45] Speaker 02:
the board and the examiner have an obligation under the APA to explain the basis for their decisions.

[00:05:50] Speaker 02:
If the board finds that something is very well known in the art, it has the obligation to explain, to permit appellate review, to explain why it is very well known in the art.

[00:06:00] Speaker 01:
And in fact, the board did... So we shouldn't treat the examiner as an expert who offers their own testimony?

[00:06:08] Speaker 02:
The examiner does have expertise, obviously, in patent law and perhaps has some expertise in the level of skill in the art.

[00:06:18] Speaker 02:
the statement that something that is not immediately, that is not a matter of public record, that's a statement that something like that is very well known in the art, I think requires some citation or some explanation of why that's so.

[00:06:32] Speaker 02:
And to be fair, the examiner here and the board did cite one thing for that proposition and that grows, which doesn't say that.

[00:06:42] Speaker 01:
Anything further?

[00:06:44] Speaker 02:
I did want to

[00:06:46] Speaker 02:
explain a little bit about the distinction between content rating and relevance ranking.

[00:06:52] Speaker 02:
And I touched on this earlier.

[00:06:53] Speaker 02:
Content rating has to do with whether the results for a query are appropriate for a particular user.

[00:06:57] Speaker 02:
Relevance ranking has to do with whether the results for a query are relevant to the particular query.

[00:07:01] Speaker 02:
I just want to note that this is not a distinction that's coming up for the first time on appeal.

[00:07:07] Speaker 02:
This is intrinsic in both the claims of the application and in Barthasarathy.

[00:07:13] Speaker 02:
Google's claims separately describe a, quote, content rating score associated with a search query and then a weight that's associated with each search result.

[00:07:22] Speaker 02:
And similarly, Parthasarathy, at paragraphs 35, 39, and 42, distinguishes between analysis of a search query and an analysis of search results.

[00:07:32] Speaker 02:
And in particular, in each of the embodiments in Parthasarathy, there's a separate, quote, rank assigned by a ranking component and a, quote, identifier indicating whether a search result contains adult content.

[00:07:45] Speaker 00:
Finish your thought.

[00:07:46] Speaker 02:
That was the end of my thought.

[00:07:48] Speaker 00:
OK.

[00:07:48] Speaker 00:
Just let me ask you another kind of

[00:07:50] Speaker 00:
hypothetical housekeeping sort of matter.

[00:07:52] Speaker 00:
I mean, you're asking for a reversal here based on this opinion.

[00:07:56] Speaker 00:
But given that one of your arguments is sort of the Chenery APA kind of argument, why is it not necessary for us, in your view, to remand this case to give the board another opportunity to provide the meat on the bones or the explanation you're seeking?

[00:08:19] Speaker 02:
We think that this is a case like the ones we cited in our briefs where there's no other conclusion that could be drawn from the record.

[00:08:26] Speaker 02:
If your honors were inclined to give the board another shot at it.

[00:08:30] Speaker 01:
When you say give the board another shot, this is original examination, right?

[00:08:34] Speaker 01:
Correct.

[00:08:34] Speaker 01:
This isn't an IPR.

[00:08:36] Speaker 02:
Correct.

[00:08:36] Speaker 01:
We can't order the issuance of a patent, correct?

[00:08:38] Speaker 02:
Correct.

[00:08:39] Speaker 01:
So all we can do is vacate and send this back.

[00:08:42] Speaker 01:
I mean, we can't give you more relief than that, can we?

[00:08:46] Speaker 01:
What is it you think we can give you?

[00:08:49] Speaker 02:
If Your Honors were to reverse, I think what Your Honors could give us is an explanation of why Rose and Parthasarathy combined don't disclose what the examiner and the board found that they did.

[00:09:02] Speaker 02:
And in our view, that decision is not only unsupported or not only did the board fail to provide sufficient support for that decision, there's no support that it could have provided because Rose and Barthasarathy don't say what the board and examiner found that they say.

[00:09:16] Speaker 02:
And if Your Honors were to reverse that decision... I don't know.

[00:09:20] Speaker 01:
One of your arguments seems to be that the red brief makes a lot of new assertions on appeal.

[00:09:28] Speaker 01:
Yes, Your Honor.

[00:09:30] Speaker 01:
If that's the case, why isn't there the possibility, maybe we agree with you, these are new and these are not the rationales the board articulated, but they could be on remand, so why would I reverse that?

[00:09:44] Speaker 02:
In particular, when it comes to the obvious to try arguments, obviously I agree with Your Honor that they're new and that the board never articulated a factual basis or the examiner didn't either.

[00:09:54] Speaker 01:
You can't agree with me that they're new.

[00:09:55] Speaker 01:
I started by saying it's your argument that they're new.

[00:09:59] Speaker 01:
Correct.

[00:10:00] Speaker 01:
So you're agreeing with yourself is what you're doing.

[00:10:02] Speaker 02:
Yes.

[00:10:02] Speaker 02:
I am agreeing with myself that they're new.

[00:10:04] Speaker 02:
But what I'll note is that not only are they new, they're also incorrect for the reasons that we gave in the reply brief.

[00:10:11] Speaker 02:
all really beg the question.

[00:10:13] Speaker 01:
These are new arguments about what a piece of prior art discloses.

[00:10:17] Speaker 01:
That feels like something I can't do on appeal, doesn't it?

[00:10:21] Speaker 01:
Doesn't that sound an awful lot like a fact-finding, me addressing a new argument about what a piece of prior art does or doesn't teach?

[00:10:30] Speaker 02:
That is a factual issue.

[00:10:33] Speaker 02:
What a piece of prior art does or doesn't teach is a factual issue, but I would suggest, Your Honor, that the board and examiner went to

[00:10:42] Speaker 02:
spent years explaining what they thought that the prior did and didn't teach, and they fundamentally got it wrong.

[00:10:48] Speaker 02:
It's not clear to us what remanding for the board to try to, or for the examiner to take another shot at it would accomplish in terms of these particular references.

[00:10:59] Speaker 02:
Now if your honors were to, obviously if your honors were to remand, they could, the board could, or the examiner could come up with other references, and we obviously can't take a position on that, but in the particular context of the obviously try arguments,

[00:11:13] Speaker 02:
they're repeating the same mistakes, the PTO and appeal is repeating the same mistakes that the board has made and the examiner made for years.

[00:11:21] Speaker 01:
I see I'm into my rebuttal time, so I'll say the rest of my time.

[00:11:37] Speaker 03:
Good morning, Your Honor.

[00:11:38] Speaker 03:
May it please the Court?

[00:11:41] Speaker 03:
Judge Broce, you made a good observation when you noticed that the prior art here is not that far off from the claim that you mentioned.

[00:11:47] Speaker 03:
It's undisputed that Parthasarathi... Did I release?

[00:11:49] Speaker 00:
Did I say that?

[00:11:51] Speaker 03:
You said it's not that far up.

[00:11:54] Speaker 03:
And I think that's a good observation because it's undisputed that Partha Sarathi here discloses almost all the limitations except for a predetermined threshold value that's based on query length.

[00:12:06] Speaker 00:
So why don't we get to the heart of the question that raised by the chief and by the citation to reference to it's in the prior art, i.e.

[00:12:15] Speaker 00:
rows.

[00:12:16] Speaker 00:
I don't think you try to defend that really hard in your brief.

[00:12:20] Speaker 00:
You seem to come up with other reasons not articulated by the board, like obvious to try.

[00:12:27] Speaker 00:
So I'm making that statement.

[00:12:28] Speaker 00:
Tell me if I'm wrong, if you disagree with my observation that that is not something you can defend.

[00:12:34] Speaker 00:
and that you turned the tables and came up with something the board didn't do.

[00:12:38] Speaker 00:
Am I right or wrong?

[00:12:38] Speaker 03:
So I would have two parts.

[00:12:41] Speaker 03:
With the obviousness to try argument, I think that's the exact rationale that the examiner and the board used.

[00:12:47] Speaker 03:
And we can start with this.

[00:12:49] Speaker 03:
If you look at APPX 478, this is the examiner's answer.

[00:12:54] Speaker 03:
The appellant had made this exact argument that the combination, no reference by itself, teaches modifying the threshold value to account for query length.

[00:13:06] Speaker 03:
And in response, at the bottom of page 478, the examiner says, when a work is available in one field of endeavor, design incentives and market forces can prompt variations of it, either in the same field or a different one.

[00:13:20] Speaker 03:
If a skilled artist can implement a predictable variation, 103 bars its patentability.

[00:13:25] Speaker 03:
For the same reason, if a technique has been used to improve one device, a person of skill would recognize that it would improve similar devices in the same way.

[00:13:35] Speaker 03:
using the same technique, and it's citing specifically to KSR.

[00:13:39] Speaker 03:
In KSR, this was the whole context.

[00:13:41] Speaker 03:
It said this was an obvious-to-try analysis.

[00:13:44] Speaker 03:
Now, the board didn't use the exact words obvious-to-try, but if you read these quotes from KSR, well... I'm sorry.

[00:13:51] Speaker 01:
My problem is I see a fundamental disconnect between what the examiner did and what the board did, and then a later disconnect between what you're arguing.

[00:14:02] Speaker 01:
But if you looked, you just directed us to 478, 479.

[00:14:06] Speaker 01:
On page 479, it's quite clear that the examiner is using Rose's number of words as the threshold to which, how do you pronounce the other one?

[00:14:18] Speaker 01:
Parthasarathi.

[00:14:20] Speaker 01:
Parthasarathi.

[00:14:23] Speaker 01:
Parthasarathi.

[00:14:24] Speaker 01:
It's quite clear the examiner is using the number of words

[00:14:28] Speaker 01:
from ROSE as the threshold.

[00:14:31] Speaker 01:
So, ROSE is providing the threshold.

[00:14:33] Speaker 01:
That's what the examiner is using, right?

[00:14:35] Speaker 03:
So, I'd back up one step.

[00:14:36] Speaker 03:
So, I disagree on one point.

[00:14:37] Speaker 03:
So, I think what's happening here, the examiner is actually saying at the top of 479, Partha Serafi discloses the limitations, but does not disclose a threshold, right?

[00:14:47] Speaker 03:
No, Partha Serafi has a threshold.

[00:14:49] Speaker 03:
It's just not based on query length, okay?

[00:14:52] Speaker 03:
So, it's saying ROSE is missing

[00:14:55] Speaker 03:
a threshold value that's based on query length, and then it says Rose actually says you can use query length to determine a value.

[00:15:04] Speaker 03:
And Rose is using it to boost the relevance ranking.

[00:15:08] Speaker 01:
Okay?

[00:15:08] Speaker 01:
I'm confused.

[00:15:09] Speaker 01:
Are you disagreeing with the following?

[00:15:11] Speaker 01:
The examiner found using Rose's number of words as the threshold to which Partha Sarathy's different scores compared.

[00:15:19] Speaker 01:
Do you disagree with that?

[00:15:21] Speaker 01:
So where are you reading this from?

[00:15:23] Speaker 01:
I'm characterizing page 479 for you.

[00:15:26] Speaker 03:
Okay.

[00:15:27] Speaker 03:
I'm sorry, what was the characterization again?

[00:15:29] Speaker 01:
That the examiner found that he was using Rose's number of words as the threshold to which Parsis thoracis different scores then compared.

[00:15:41] Speaker 01:
So Rose is providing the threshold element for these claims.

[00:15:47] Speaker 03:
I think it's a little different.

[00:15:49] Speaker 03:
I think what he's saying is Rose uses the number of words included in the search query.

[00:15:54] Speaker 01:
Okay, let's read from page 479.

[00:15:56] Speaker 01:
Therefore, it would have been obvious to a person having ordinary skill in the art to combine the applied references and 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.

[00:16:17] Speaker 01:
So what am I missing?

[00:16:18] Speaker 01:
Rose is the threshold.

[00:16:20] Speaker 01:
Rose is from where we gather the threshold element of these claims.

[00:16:24] Speaker 03:
So my reading of this paragraph says you use the teaching, use the technique of calculating a value, which it says up here, Rose uses it to calculate the relevant score, and use that value based on the number of words.

[00:16:38] Speaker 01:
So you're saying my characterization of the examiner's finding here is incorrect?

[00:16:42] Speaker 03:
Well, just bear with me because it says, use that teaching as taught by Rose.

[00:16:48] Speaker 01:
Can I have a yes or no?

[00:16:50] Speaker 01:
Is my interpretation of what I just read, which is pretty much what I just read, incorrect?

[00:16:55] Speaker 03:
I'll get there in just a second.

[00:16:59] Speaker 03:
I'm sorry.

[00:17:01] Speaker 01:
I think under my reading of this it might be a little... Okay, well then let's look at page 428 so that you can be clear about what I'm saying.

[00:17:07] Speaker 01:
Page 428 is also from the examiner.

[00:17:10] Speaker 01:
And in this, in the last sentence on page 428, I'll give you a second to get there.

[00:17:20] Speaker 01:
Please read for me out loud the last sentence on page 428 from the examiner.

[00:17:26] Speaker 03:
Okay, so 428, the second to last sentence.

[00:17:28] Speaker 01:
No, the last sentence.

[00:17:29] Speaker 01:
Rose.

[00:17:30] Speaker 03:
Rose is relied on for analyzing the search query for determining the query length and using the query length as a threshold for relevancy comparison.

[00:17:39] Speaker 01:
So where are we getting the threshold from, according to the examiner?

[00:17:43] Speaker 01:
Where did the examiner find the threshold?

[00:17:45] Speaker 01:
From what reference did he or she, I don't know which it is, identify the threshold?

[00:17:50] Speaker 03:
The threshold limitation.

[00:17:52] Speaker 03:
He got it from combining both Parthasarathi's threshold values.

[00:17:55] Speaker 01:
Is Parthasarathi mentioned there in that sentence?

[00:17:57] Speaker 01:
Because he says, Rose is relied on for analyzing the search query, for determining the query length, and using the query length as a threshold.

[00:18:05] Speaker 01:
That combined with 479, where he also again relies on Rose

[00:18:10] Speaker 01:
as providing the evidence of the threshold.

[00:18:14] Speaker 01:
I don't see how these two passages could be understood otherwise.

[00:18:19] Speaker 03:
So let me just try it, and I'm not doing a very good job at this, so let me just try again.

[00:18:22] Speaker 03:
So if you go back to 479.

[00:18:23] Speaker 01:
I think you're making a very good job because you want to say that the examiner found something different than what he actually found.

[00:18:28] Speaker 03:
Yeah, so I think what happens here, if you read this explanation, the board is saying Parthasarathi does not teach the threshold value based on a query length.

[00:18:36] Speaker 03:
It says, Rose teaches using query length as a factor to calculate a value, a relevance ranking score value.

[00:18:42] Speaker 03:
And then in this bottom paragraph that therefore the examiner says it would have been obvious to a person of skill and the art 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 threshold

[00:18:59] Speaker 03:
to which a different score is compared as taught by Parthasarathy is talking about the configurable threshold value as taught by Parthasarathy.

[00:19:09] Speaker 03:
So it seems to me that the examiner and what the board did was they recognized Parthasarathy's missing the query length and it says it would have been obvious to use the query length as taught by Rose to use it as a configurable threshold value as taught by Parthasarathy.

[00:19:28] Speaker 01:
Where does it say the configurable threshold value?

[00:19:31] Speaker 01:
It says to which a different score is compared, as talked by Parthasarathy.

[00:19:37] Speaker 03:
Because Parthasarathy teaches having a relevant score.

[00:19:39] Speaker 01:
How do you reconcile your view of that with page 428?

[00:19:42] Speaker 01:
428, he never mentions Parthasarathy.

[00:19:45] Speaker 01:
He says clearly, Rose is relied on for the threshold.

[00:19:48] Speaker 03:
So that might have been in our full way of wording it, because that was in the final office action.

[00:19:53] Speaker 01:
That seems like a relevant piece of evidence.

[00:19:57] Speaker 03:
No, it certainly is relevant.

[00:19:59] Speaker 03:
And then the applicant, in response to that final office action, they made this argument.

[00:20:04] Speaker 03:
And then here, the examiner is responding to the argument, and they're clarifying what they're saying here.

[00:20:12] Speaker 01:
So on Appendix Page 9 of the board's opinion, and I think this is why I'm just so confused,

[00:20:18] Speaker 01:
On Appendix Page 9 of the board's opinion, the board found it says, because it doesn't make its own independent termination.

[00:20:27] Speaker 01:
It says, we agree with the examiner that in view of Parthasarathi's thresholds, one skilled in the art would have reason to modify Parthasarathi's threshold values to take into account query length as taught by Rose.

[00:20:44] Speaker 01:
And I thought to myself, what reason?

[00:20:46] Speaker 01:
Because that's not actually the combination the examiner articulated in the two pages I just read you.

[00:20:51] Speaker 01:
You seem to think it is.

[00:20:52] Speaker 01:
I really don't think it is.

[00:20:54] Speaker 01:
And so we agree with the examiner there would be reason to modify something.

[00:20:58] Speaker 01:
Well, you can only do that if you're actually agreeing with the same thing the examiner said.

[00:21:02] Speaker 01:
It seems like the board and the examiner sort of started from the opposite reference when it comes to the threshold element.

[00:21:10] Speaker 03:
Yeah, and I agree this is not a perfect explanation, okay?

[00:21:14] Speaker 03:
Luckily this court has said an evasive, this court doesn't require perfect explanations as long as you can discern the path that was followed and determine that it was a proper path.

[00:21:24] Speaker 01:
But I can't discern a path because the board didn't give a reason to modify and the thing that they said they were combining, that they were relying on the examiner's reason, it's not the same thing.

[00:21:33] Speaker 01:
The examiner used Rose's threshold

[00:21:37] Speaker 01:
The board is talking about Perthasarathi's threshold.

[00:21:41] Speaker 01:
So I can't use whatever examiner modification reason there was because you're not even doing the same comparison.

[00:21:48] Speaker 03:
I think the disconnect is, and that passage on 479, the board adopted this, the examiner said they're using Rose's query length.

[00:21:58] Speaker 03:
to account for the query length in rows as threshold.

[00:22:03] Speaker 03:
Because there's only two ways to account for query length.

[00:22:05] Speaker 03:
You can account for it by boosting your relevance score, and then when you boost your relevance score, your threshold stays the same.

[00:22:12] Speaker 03:
You're going to make that comparison.

[00:22:13] Speaker 03:
Or, as the examiner on the board said, you could keep that threshold, or keep the relevance ranking the same and modify the threshold value.

[00:22:21] Speaker 03:
is the relative comparison is going to be the same.

[00:22:23] Speaker 03:
There's only two ways to do it.

[00:22:25] Speaker 03:
That's a finite number of ways to do it.

[00:22:27] Speaker 03:
It's a predictable result.

[00:22:28] Speaker 03:
There's no evidence or assertion of secondary considerations or unexpected results.

[00:22:33] Speaker 01:
So what about that other issue that I was discussing with Mr. Ghosh?

[00:22:38] Speaker 01:
You think it's okay for an examiner to just say something is very well known in the art without citing anything and that that should be accepted?

[00:22:46] Speaker 03:
No, I don't think so.

[00:22:47] Speaker 03:
I don't think that's what was done in this case.

[00:22:49] Speaker 03:
I think the examiner's statement that using a threshold value based on query length was a misstatement.

[00:22:57] Speaker 03:
I think what the examiner meant, if you read that in context, they're basically making it clear.

[00:23:01] Speaker 03:
Parthasarathy does not disclose a threshold value based on query length.

[00:23:06] Speaker 03:
then they go on to say, Rose discloses query length to measure, to boost your relevance ranking score.

[00:23:12] Speaker 03:
And if you put those two together, it would be obvious as a matter of design choice.

[00:23:16] Speaker 00:
You're here on appeal telling us how you would reinterpret

[00:23:22] Speaker 00:
something or change, sort of change or put in context the meaning of the examiner.

[00:23:28] Speaker 00:
Did the board do that?

[00:23:29] Speaker 00:
The board didn't try to clean up any of that, did it?

[00:23:33] Speaker 00:
Just took the examiner, what the examiner said and erased it, right?

[00:23:37] Speaker 03:
Yeah.

[00:23:37] Speaker 03:
So I'd also point out when the board made that one phrase.

[00:23:39] Speaker 00:
Did you want to answer my question first?

[00:23:41] Speaker 00:
Am I correct

[00:23:41] Speaker 00:
in my observation that the board didn't try to illuminate or correct or restage or clarify what the examiner said in regard, the way you have just done to us on appeal.

[00:23:52] Speaker 03:
I think what the board did, the board focused on, the examiner gave two other reasons why it would be obvious.

[00:23:57] Speaker 00:
Can you answer her question?

[00:23:58] Speaker 00:
Yeah.

[00:23:59] Speaker 00:
Am I correct?

[00:24:00] Speaker 03:
The board didn't really say a lot about that one statement.

[00:24:03] Speaker 00:
So they did not try to clarify what you, I think, initially agreed was not a clear or not a correct statement by the examiner, but tried to recast it.

[00:24:15] Speaker 00:
The board didn't do any of that.

[00:24:17] Speaker 00:
They just embraced what the examiner said.

[00:24:19] Speaker 03:
I think what the board did, they didn't clarify that one thing.

[00:24:21] Speaker 00:
You want a yes or no answer.

[00:24:23] Speaker 00:
I'm agreeing with you.

[00:24:23] Speaker 00:
You can explain it, but am I right?

[00:24:25] Speaker 03:
Yes, you're right.

[00:24:26] Speaker 03:
They didn't clarify that one phrase where they said, you know, it's well known in the art to use a threshold value.

[00:24:33] Speaker 00:
And they did justice themselves in any way from that story.

[00:24:37] Speaker 03:
What they did do though, the examiner gave two other reasons for making this combination.

[00:24:41] Speaker 03:
They said it would be obvious to make this combination to account for query length.

[00:24:44] Speaker 01:
Council did or did not, the board say, unless otherwise indicated, we adopt the findings, the examiner's findings in the final office action answer as our own and any additional findings of fact for emphasis.

[00:24:56] Speaker 03:
They did, yes.

[00:24:57] Speaker 01:
Then on the same exact page did they say and quote specifically the examiner's statement that

[00:25:07] Speaker 01:
analyzing a query for determining the query length and using the query length as a threshold is very well known in the art.

[00:25:13] Speaker 03:
Very well known in the art and doing so would further provide for assigning weight to a long or short query length.

[00:25:19] Speaker 03:
So I would agree if they adopted it.

[00:25:22] Speaker 03:
That statement is there.

[00:25:23] Speaker 03:
It is a little confusing.

[00:25:25] Speaker 03:
I think you could characterize it as a misstatement.

[00:25:28] Speaker 03:
It would have been better, I think, if the board

[00:25:31] Speaker 03:
explain that a little bit better.

[00:25:33] Speaker 03:
It's not a perfect explanation.

[00:25:34] Speaker 03:
But it does say, and doing so would further provide for assigning weight to a long or short query length.

[00:25:40] Speaker 03:
And then there's another motivation where they talk about

[00:25:44] Speaker 03:
This is also in the board's decision on page A8.

[00:25:47] Speaker 03:
They say, and this is italicized on page 8, appendix page 8, it would have been obvious to a person having an ordinary skill in the art to use the technique of calculating a value based on the number of words in a query and use the value as a configurable threshold to which a different score is compared in Partha-Sarathi.

[00:26:07] Speaker 03:
to achieve the predictable result of influencing the selection of documents and search results per presentation.

[00:26:13] Speaker 03:
And that's what these claims are all about.

[00:26:14] Speaker 03:
In both Rose and Parthasarathy, you want to influence the search results.

[00:26:19] Speaker 00:
Before your time runs out, I just want to ask you a question that we discussed with your friend, which is, if we disagree with this being part-heraried, if we disagree, it was obvious to try, that would typically warrant a reversal.

[00:26:37] Speaker 00:
What say you on terms of vacate and remand, reversal and remand?

[00:26:45] Speaker 00:
What position?

[00:26:46] Speaker 00:
Taking my predicate that we think the board got it wrong here.

[00:26:50] Speaker 03:
If you think the board got it wrong because their explanation here is inadequate, I think it would be proper for this court to remand too.

[00:26:58] Speaker 00:
Well, so what's the difference?

[00:26:59] Speaker 00:
Whether we think what they said was inadequate or what we think what they said and relied on?

[00:27:04] Speaker 00:
was wrong, whether it's under de novo or substantial evidence standards, that their reading of the references, et cetera, was wrong.

[00:27:13] Speaker 03:
If you think that it's completely wrong and there's no way to combine these references as the board and the examiner did.

[00:27:22] Speaker 00:
Well, based on the record that exists, not.

[00:27:25] Speaker 00:
So are we obligated to give them another try, another chance to either re-explain what they did or come up with new arguments that weren't used by the examiner in the first instance?

[00:27:37] Speaker 03:
In that situation, I think it would be proper to vacate the decision to give the examiner and the board to correct any deficiencies.

[00:27:43] Speaker 03:
And who knows based on what this court says, what they might come out with.

[00:27:47] Speaker 03:
But I think it would be proper to give them a chance to look at it again and make any new factual findings if they're warranted.

[00:27:53] Speaker 03:
a proper, compelled, necessary?

[00:27:56] Speaker 00:
I mean, is there necessary?

[00:27:58] Speaker 00:
I mean, as the Chief pointed out, they're the ones that are going to issue the patent.

[00:28:02] Speaker 00:
Is there anything that would preclude us from just saying, they had their chance for a number of years, everything they said was wrong, we disagree with the way they read the prior art references, et cetera?

[00:28:14] Speaker 00:
Done.

[00:28:14] Speaker 00:
Reverse and they remand.

[00:28:16] Speaker 00:
for issuance.

[00:28:18] Speaker 00:
So do we have the authority to do that?

[00:28:20] Speaker 03:
Well, I don't think you can direct the PTO to issue a patent necessarily.

[00:28:23] Speaker 03:
I think you could certainly make some statements that, based on the record here, there's no motivation to combine.

[00:28:30] Speaker 03:
The teachings that you relied on are incorrect interpretations of what the records teach.

[00:28:35] Speaker 03:
There's no substantial evidence to support those findings.

[00:28:38] Speaker 03:
I think you could make statements like that on the remand for the board and the examiner to take account of.

[00:28:46] Speaker 01:
Thank you, Mr. McFry.

[00:28:47] Speaker 01:
Thank you.

[00:28:47] Speaker 01:
Mr. Goche will add two minutes to your rebuttal time because we went longer with Mr. McFry.

[00:28:56] Speaker 02:
Thank you, Your Honors.

[00:28:57] Speaker 02:
I will be brief.

[00:28:58] Speaker 02:
As to the point that Your Honors are focusing on in the Board's decision about

[00:29:06] Speaker 02:
the board's adoption of the examiner's findings, one thing I'll note here is that not only did the board quote this finding that analyzing a query for determining the query length and using the query length as a threshold is very well known in the art, the board added its own emphasis to that.

[00:29:22] Speaker 02:
So that is a finding that the board didn't just brush under the rug, it quoted in its decision, it emphasized it, and clearly it thought that that was the basis for, at least part of the basis for the decision.

[00:29:32] Speaker 02:
And going further on to the sentence that Chief Edgemore was focusing on at appendix nine.

[00:29:38] Speaker 01:
Before you go on, let me just say this is a difficult thing with me in terms of vacating or reversing.

[00:29:44] Speaker 01:
I don't think an examiner can say something that's very well known in the art when, for example, the patent doesn't say something like that in the background section.

[00:29:52] Speaker 01:
I think that in the absence of pointing to anything, it's probably not okay for the examiner to do that.

[00:30:01] Speaker 01:
For all I know, there's a million things the examiner could point to to substantiate that statement.

[00:30:06] Speaker 01:
And that's why I don't know, at what point do we say, you've had enough tries, reverse?

[00:30:11] Speaker 01:
Or do we say vacate and remand?

[00:30:14] Speaker 02:
Your Honor, in our view, a reversal would apply to this combination of references.

[00:30:20] Speaker 02:
If Your Honors were to reverse and remand and explain why Barthasarathy and Rose don't disclose what the ward and examiner found that they disclosed,

[00:30:29] Speaker 02:
then the board would have to, and the examiner would have to go back and do that work and find something that does disclose that.

[00:30:36] Speaker 02:
But in the absence of that factual finding with respect to Parthasarathy and Rose, I think your honors can reverse and say that no, you've had the chances, we've read the references, and they don't say what you have said at various times that they say.

[00:30:50] Speaker 01:
Okay, but I was focused on whether something was well known in the art part.

[00:30:58] Speaker 01:
And that, it seems to me, is something the examiner could cure on remand.

[00:31:03] Speaker 02:
Yes, Your Honor.

[00:31:04] Speaker 01:
And I guess what I'm trying to say is that the way... You don't want me to base the decision only on that, because that could be cured.

[00:31:09] Speaker 01:
You want me to focus on something else.

[00:31:12] Speaker 02:
Yes, but also the way that the examiner might cure that would be to cite the different references.

[00:31:18] Speaker 02:
I don't think there is any possibility that the examiner could cure that based on Parthasarathy and Rose alone, because for the reasons we've discussed, they don't say what the examiner said that they say.

[00:31:28] Speaker 01:
But maybe the examiner could abandon the very well-known in the art part and instead give some other motivation or something, right?

[00:31:38] Speaker 02:
For the reasons we've said in our briefing, we don't think that there is a way to combine Parthasarathy and Rose, much less a motivation to combine them.

[00:31:47] Speaker 01:
I know, the red brief was a lot better than the board opinion.

[00:31:51] Speaker 02:
I'll give it that, Your Honor, but it's still

[00:31:55] Speaker 02:
not enough in our view, and for the reasons we explained in our reply brief.

[00:31:59] Speaker 02:
I am out of time, so unless you have any further questions.

[00:32:03] Speaker 01:
Thank you very much.

[00:32:04] Speaker 01:
I thank both councils for taking on this initiative.