Case: 21-1168 Document: 30 Page: 1 Filed: 07/20/2021
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: VICTOR KIRILICHIN, DAVID P.
TURECHEK, BRIAN P. KRIEGER,
Appellants
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2021-1168
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Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 16/027,992.
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Decided: July 20, 2021
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JONATHAN A. WINTER, St. Onge Steward Johnston &
Reens, LLC, Stamford, CT, argued for appellants. Also
represented by GENE STANLEY WINTER, STEPHEN S.
ZIMOWSKI.
BENJAMIN T. HICKMAN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, ar-
gued for appellee Andrew Hirshfeld. Also represented by
MAI-TRANG DUC DANG, THOMAS W. KRAUSE, AMY J.
NELSON, FARHEENA YASMEEN RASHEED.
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Before MOORE, Chief Judge, PROST and O’MALLEY, Circuit
Judges.
Case: 21-1168 Document: 30 Page: 2 Filed: 07/20/2021
2 IN RE: KIRILICHIN
PROST, Circuit Judge.
Victor Kirilichin, David P. Turechek, and Brian P.
Krieger (collectively, “Appellants”) appeal the decision of
the Patent Trial and Appeal Board (“Board”) affirming the
patent examiner’s rejection of claims 1–13 of U.S. Patent
Application No. 16/027,992 (“the ’992 application”) as obvi-
ous over two prior art references. See Ex parte Kirilichin,
No. 20-3395,
2020 WL 5231917 (P.T.A.B. Aug. 26, 2020)
(“Board Decision”). We have jurisdiction under
28 U.S.C.
§ 1295(a)(4)(A). Because the Board did not adequately ad-
dress Appellants’ teaching-away arguments, we vacate and
remand.
The ’992 application relates to a plug or insert “that
can withstand high pressures typically found in hydraulic
manifolds.” J.A. 38, 40. The insert comprises a tapered
core and a cylindrical metallic sleeve wherein one end of
the core is inserted and retained (i.e., “preassembled”) in
one end of the cylindrical sleeve through press-fit contact.
See J.A. 43, 50, 56. The insert can be placed in a hole, and
the tapered core can be biased further into the cylindrical
sleeve, causing the sleeve’s outer diameter to expand to
plug the hole. See J.A. 45, 57–58.
The examiner rejected claims 1–13 as obvious under
35 U.S.C. § 103 over U.S. Patent Nos. 4,646,816 (“Roth-
stein”) and 5,160,226 (“Lee”). J.A. 420. As relevant here, 1
the examiner found that Rothstein disclosed all the limita-
tions of claim 1 except preassembly of the core and the cy-
lindrical sleeve through press-fit contact, which the
examiner found to be disclosed by Lee. J.A. 421–23. The
Board subsequently affirmed the examiner’s rejection.
1 Appellants’ teaching-away arguments concern the
“cylindrical metal sleeve” and “press fit” limitations of
claim 1. The same limitations appear in independent
claims 6 and 10 and the remaining claims are dependent.
Case: 21-1168 Document: 30 Page: 3 Filed: 07/20/2021
IN RE: KIRILICHIN 3
We review the Board’s ultimate obviousness determi-
nation de novo and underlying factual findings for substan-
tial evidence. Ariosa Diagnostics v. Verinata Health, Inc.,
805 F.3d 1359, 1364–65 (Fed. Cir. 2015). But our review of
the Board’s decision is also rooted “in basic principles of ad-
ministrative law.” Pers. Web Techs., LLC v. Apple, Inc.,
848 F.3d 987, 992 (Fed. Cir. 2017). The Board therefore
must provide “a reasoned basis for the agency’s actions”
that “suffice[s] for us to see that the agency has done its
job.” In re Nuvasive, Inc.,
842 F.3d 1376, 1383 (Fed. Cir.
2016) (cleaned up).
Appellants’ teaching-away arguments are relevant to
whether it would have been obvious to a person of ordinary
skill to modify Rothstein with the preassembly features
disclosed in Lee to arrive at the claimed invention. On ap-
peal to us, Appellants argue, for example, that Lee “explic-
itly disparage[s] pre-assembly of prior art plugs employing
cylindrical sleeves as impractical and unworkable,” Reply
Br. 7 (citing Lee at col. 1 ll. 12–27, col. 2 ll. 21–25), and that
Lee therefore “teaches away from combining [pre-assem-
bly] with a cylindrical device, the very type of device used
by Rothstein and required in Appellants’ claims,” Reply
Br. 8. Appellants likewise raised this issue in the proceed-
ings below. See, e.g., J.A. 503 (Appellants arguing that Lee
“clearly and explicitly tells the skilled artisan that pre-as-
sembly is not practical in situations where the outer sur-
face of the insert is cylindrical”).
We are unable to discern the agency’s basis for reject-
ing Appellants’ teaching-away arguments (or whether the
issue was addressed at all). The Director seems to suggest
that the Board resolved this issue by finding “that the
claimed invention, Rothstein, and Lee all employ tapering.”
Appellee’s Br. 10; see Board Decision,
2020 WL 5231917,
at *4 (reasoning that Appellants’ arguments regarding the
“tapering” of Lee’s components were unpersuasive because
“Rothstein[’s], Lee[’s], and Appellant[s’] devices all rely on
tapering”). We disagree that the Board (or the examiner)
Case: 21-1168 Document: 30 Page: 4 Filed: 07/20/2021
4 IN RE: KIRILICHIN
sufficiently addressed Appellants’ teaching-away argu-
ments. First, the examiner’s findings with respect to Lee
were limited to general preassembly by press fitting—the
examiner stated that “the only teaching . . . gleaned from
the disclosure of Lee is that it is known to be advantageous
to press fittingly pre-assemble two components of a sealing
insert.” J.A. 526 (emphasis in original). Second, the
Board’s decision makes no mention of teaching away, and
the Board’s generic statement that each of the three de-
vices relies on tapering falls short of “setting out [the
Board’s] reasoning in sufficient detail to permit meaningful
appellate review” of the teaching-away issue. See Power
Integrations, Inc. v. Lee,
797 F.3d 1318, 1327 (Fed. Cir.
2015). And “whether a reference teaches away from the
claimed invention” is a “question[] of fact,” Meiresonne v.
Google, Inc.,
849 F.3d 1379, 1382 (Fed. Cir. 2017), that is
not for us to decide in the first instance in this appeal, con-
trary to the Director’s suggestion that we do so, see Appel-
lee’s Br. 16–18 (arguing for a finding that Lee “does not
teach away”).
Appellants raise additional challenges to the Board’s
decision, but these challenges may arguably overlap with
the teaching-away issue discussed herein. Accordingly, we
do not reach the remaining issues raised on appeal at this
time.
In sum, we are unable to meaningfully assess whether
the Board’s determination of obviousness in this case is
supported by substantial evidence. We therefore vacate
the Board’s decision and remand the case for further pro-
ceedings consistent with this opinion.
VACATED AND REMANDED
COSTS
Costs to Appellants.
