Oral argument of the day: In re Kirilichen

The oral argument of the day is from today’s opinion in In re Kirilichen. The Federal Circuit wrote:

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) 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”).

In re Kirilichen, 2021-1168 (Fed. Cir. July 20, 2021).

Here are a couple of interesting sound bites from the oral argument; Chief Judge Moore’s questions to the Appellant and to the Office, respectively, sum up the ultimate decision that the court rendered.

You can listen to the entire oral argument here:

You can read the court’s opinion here: [Link].

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