Tuesday, July 20, 2021

The CAFC vacates the PTAB decision in IN RE: VICTOR KIRILICHIN

Within the decision:

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) 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.


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