NOTE: This disposition is nonprecedential.

 

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: VICTOR KIRILICHIN, DAVID P. 

TURECHEK, BRIAN P. KRIEGER,

Appellants

______________________ 

2021-1168

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 16/027,992.

______________________ 

Decided: July 20, 2021

______________________ 

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, argued for appellee Andrew Hirshfeld. Also represented by 

MAI-TRANG DUC DANG, THOMAS W. KRAUSE, AMY J.

NELSON, FARHEENA YASMEEN RASHEED. 

______________________ 

Before MOORE, Chief Judge, PROST and O’MALLEY, Circuit 

Judges.

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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 obvious 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 address 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 (“Rothstein”) and 5,160,226 (“Lee”). J.A. 420. As relevant here,1

the examiner found that Rothstein disclosed all the limitations of claim 1 except preassembly of the core and the cylindrical 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. 

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IN RE: KIRILICHIN 3

We review the Board’s ultimate obviousness determination de novo and underlying factual findings for substantial 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 administrative 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 appeal to us, Appellants argue, for example, that Lee “explicitly 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-assembly] 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 proceedings below. See, e.g., J.A. 503 (Appellants arguing that Lee 

“clearly and explicitly tells the skilled artisan that pre-assembly is not practical in situations where the outer surface of the insert is cylindrical”). 

We are unable to discern the agency’s basis for rejecting 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) 

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4 IN RE: KIRILICHIN

sufficiently addressed Appellants’ teaching-away arguments. 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 devices 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, contrary to the Director’s suggestion that we do so, see Appellee’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 proceedings consistent with this opinion. 

VACATED AND REMANDED

COSTS

Costs to Appellants. 

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