In Re KIRILICHIN
21-1168
| Fed. Cir. | Jul 20, 2021Background
- Appellants appealed the Patent Trial and Appeal Board’s affirmation of an examiner’s obviousness rejection of claims 1–13 of U.S. Patent Application No. 16/027,992 over Rothstein and Lee.
- The claimed device is a high‑pressure insert for hydraulic manifolds: a tapered core and a cylindrical metallic sleeve, with one end of the core preassembled into the sleeve by press‑fit; driving the core further expands the sleeve to plug a hole.
- Examiner found Rothstein disclosed all claim limitations except preassembly by press‑fit; the examiner relied on Lee to supply the preassembly teaching and rejected the claims as obvious.
- Appellants argued Lee teaches away from preassembling inserts with cylindrical outer surfaces, making the proposed combination nonobvious.
- The Board affirmed the rejection but did not expressly address the teaching‑away argument; its brief remark that the devices ‘‘all rely on tapering’’ was deemed insufficiently reasoned.
- The Federal Circuit vacated and remanded because the Board failed to provide adequate factual reasoning on the teaching‑away issue, which is a factual question requiring administrative factfinding.
Issues
| Issue | Appellants' Argument | Director/Board's Argument | Held |
|---|---|---|---|
| Whether Lee teaches away from preassembling a cylindrical sleeve by press‑fit, undermining the Rothstein+Lee combination | Lee explicitly disparages preassembly of cylindrical inserts and therefore teaches away from the combination | The Board/examiner treated Lee as teaching preassembly; the Director contends the devices all rely on tapering so Lee does not teach away | Vacated and remanded: the Board did not adequately address teaching away; the factual question must be resolved by the agency first |
| Whether the Board gave a sufficient reasoned explanation to permit meaningful appellate review | Board failed to explain why teaching‑away concerns were rejected or inapplicable | Board’s generic statement about tapering sufficed to reject the argument | Court held the Board’s statement was insufficient; remand required for fuller reasoning and factual findings |
Key Cases Cited
- Ariosa Diagnostics v. Verinata Health, Inc., 805 F.3d 1359 (Fed. Cir. 2015) (reviews ultimate obviousness de novo and factual findings for substantial evidence)
- Pers. Web Techs., LLC v. Apple, Inc., 848 F.3d 987 (Fed. Cir. 2017) (administrative decisions must provide reasoned basis for actions)
- In re Nuvasive, Inc., 842 F.3d 1376 (Fed. Cir. 2016) (agency must set out reasoning sufficient for meaningful appellate review)
- Power Integrations, Inc. v. Lee, 797 F.3d 1318 (Fed. Cir. 2015) (discusses requirements for Board explanations on factual issues)
- Meiresonne v. Google, Inc., 849 F.3d 1379 (Fed. Cir. 2017) (whether a reference teaches away is a question of fact)