United States Court of Appeals for the Federal Circuit ______________________

IN RE: GOOGLE LLC, Appellant ______________________

2022-1012 ______________________

Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 14/628,093. ______________________

Decided: January 9, 2023 ______________________

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 Case: 22-1012 Document: 38 Page: 3 Filed: 01/09/2023

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 represen