NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: VICTOR GORELIK, TATIANA GORELIK,

NATALIA HANSON,

Appellants

______________________ 

2016-1432

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 13/289,814.

______________________ 

Decided: June 14, 2016

______________________ 

 VICTOR GORELIK, Brooklyn, NY, pro se.

 TATIANA GORELIK, Brooklyn, NY, pro se.

 NATALIA HANSON, Brooklyn, NY, pro se.

 THOMAS W. KRAUSE, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee Michelle K. Lee. Also represented by SARAH E.

CRAVEN, MEREDITH HOPE SCHOENFELD. 

______________________ 

Before PROST, Chief Judge, BRYSON, and STOLL, Circuit Judges.
2 IN RE: GORELIK

PER CURIAM. 

Named inventors Victor Gorelik, Tatiana Gorelik, and 

Natalia Hanson (collectively, “Gorelik”) appeal from a 

decision of the Patent Trial and Appeal Board in the 

examination of Patent Application Serial No. 13/289,814. 

The Board affirmed the examiner’s rejection of claims 1–4 

as obvious under 35 U.S.C. § 103. We affirm. 

BACKGROUND

Gorelik filed the ’814 application on November 4, 

2011. The patent discusses a purportedly new apparatus 

for studying objects at a nanoscopic scale. ’814 Application ¶ [0002]. The application seeks to provide an apparatus that can pair “a high spatial resolution image” with 

“high energy resolution spectra of a nano-object” to produce “valuable information” about the nano-object. Id. 

The high resolution image is produced by, for example, a 

transmission electron microscope (“TEM”) or scanning 

probe microscope. Id. at ¶ [0010]. The spectra information is produced by a claimed “hollow cylindrical 

analyzer.” Joint Appendix (“J.A.”) 100. The application 

explains that pairing these two instruments “allows 

extracting additional elemental and chemical information 

about a nano-object of interest.” ’814 Application ¶ 

[0002]. 

The application provides several embodiments of its 

“hollow cylindrical analyzer,” including the example in 

Figure 1 shown below: 
IN RE: GORELIK 3

Id. at Fig. 1. The analyzer has an upper window 2 where 

electrons, scattered from source 1, enter. Potentials 

applied to the hollow cylinder 4 and lids 3 and 5 create a

field that forces the electrons toward diaphragm 6 and

collector 7. Id. at ¶ [0014]. An object of the purported 

invention is to provide “an analyzer with entrance angles 

of electrons slightly greater than /2 (90.5° – 98.5°) . . . .” 

Id. at ¶ [0009]. 

Claim 1 is generally directed to a hollow cylindrical 

analyzer and reads: 

An electrostatic electron spectrometry apparatus, 

comprising:

a source of electrons and

a spectrometer that includes at least one hollow cylindrical analyzer having an electrically 

conductive inner cylinder coupled to a source of 

voltage, an electrically conductive upper lid coupled to another source of voltage, an electrically 

conductive outer cylinder coupled to yet another 

source of voltage, and an electrically conductive 

lower lid coupled to yet another source of voltage

wherein the spectrometer is configured so that 

the electrons emitted from the source enter the 
4 IN RE: GORELIK

hollow cylindrical analyzer through the windows 

in the inner cylinder, make at least one U-turn in 

the direction of the axis of the hollow cylinder analyzer, and then the electrons are being collected 

by a detector.

J.A. 100. Claim 2 depends from claim 1 and adds the 

requirement that the “electrons enter the spectrometer 

within the diapason 90.5°–98.5° of entrance angles in 

respect to the axis of the hollow cylinder analyzer, move 

in radial directions, and then the electrons are being 

collected in full azimuth directions.” Id. Claim 3 depends 

from claim 1 and adds several requirements, including a 

TEM and an entrance-angle requirement. It reads: 

An electrostatic electron spectrometry apparatus, comprising:

the hollow cylindrical analyzer of claim 1 and

a transmission electron microscope

wherein the analyzer and the microscope are 

configured so that the electrons emitted from the 

specimen of the microscope within the diapason

90.5°–98.5° 90.5°– 95.5° in respect to the axis of 

the microscope enter the analyzer, move through 

the electrostatic field of the analyzer, and then the

electrons are being collected by a detector.

Id. Claim 4 depends from Claim 3, and adds the requirement that “the analyzer comprises at least two hollow 

cylindrical analyzers and fits around the objective lens of 

the microscope.” Id.

The examiner rejected independent claim 1 and dependent claim 2 over D. Varga et al., Design of an Electrostatic Electron Spectrometer For Simultaneous Energy 

and Angular Distribution Measurements, 76 J. ELECTRON 

SPECTROSCOPY & RELATED PHENOMENA 433–36 (1995) 

(“Varga”), and claims 3 and 4 over Varga in view of U.S. 
IN RE: GORELIK 5

Patent No. 7,582,868 to Jiang. The Board affirmed these 

rejections and denied Gorelik’s motion for rehearing. 

The Board explained that Varga discloses a two-stage 

electrostatic analyzer capable of measuring electrons 

incident at a range of angles, including those claimed by 

Gorelik. As shown in Figure 1 below, Varga’s analyzer 

has an inner cylinder and an outer cylinder with conical 

ends. 

Varga, supra, at 434. The Board noted that “Varga discloses a double-pass spectrometer which comprises a

mirror-type analyzer with distorted cylindrical field and 

can be suitable for measuring both energy and angular 

distributions of electrons simultaneously in the full 0°–

180° range of scattering with high energy resolution.” 

J.A. 4 (citing Varga, supra, at 433). The entrance for 

electrons into the analyzer shown in Figure 1 is 90°. 

Before the Board, Gorelik argued that Varga did not 

render its claims obvious because the “claim term ‘hollow 

cylindrical’ is limited to the space between two cylinders 

having flat ends and, therefore, excludes Varga’s cylinders 

having conical ends.” Id. The Board determined that the

broadest reasonable interpretation of “hollow cylindrical” 
6 IN RE: GORELIK

was consistent with Varga’s cylinders having conical ends

because the specification did not limit the term to cylinders having flat ends. Id. The Board therefore affirmed 

the examiner’s rejection of claims 1 and 2 as obvious over 

Varga. 

With respect to claims 3 and 4, the Board considered 

Gorelik’s argument against the examiner’s rejection of 

Varga in view of Jiang. Jiang teaches the use of a cylindrical mirror analyzer in concert with a TEM, and the 

examiner explained that it would have been obvious to 

combine Jiang with Varga “to improve measurement 

accuracy by utilizing highly precise calibrations.” Id. 

at 112. On appeal, Gorelik did not contest the examiner’s 

finding that Varga could be combined with Jiang. Instead, Gorelik argued that the resulting combination 

would be impractically large. Gorelik reasoned that the 

only workable combination would require the entire TEM 

to be inside of the Varga analyzer’s first stage, and that 

such a combination would not work as well as the purported invention in Gorelik’s application. The Board 

rejected Gorelik’s argument because it was unsupported 

by evidence. Id. at 5–6, 10. 

Gorelik timely appeals to this court. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) and 

35 U.S.C. § 141. 

DISCUSSION

We review the Board’s factual findings for substantial 

evidence and its legal conclusions de novo. Rambus Inc. 

v. Rea, 731 F.3d 1248, 1251 (Fed. Cir. 2013). An obviousness determination under § 103 is a “legal conclusion 

based on underlying factual determinations.” Id. at 1251–

52. We review the Board’s claim construction de novo 

“because the intrinsic record fully determines the proper 

construction . . . .” Microsoft Corp. v. Proxyconn, Inc., 789 

F.3d 1292, 1297 (Fed. Cir. 2015). “During examination, 

‘claims . . . are to be given their broadest reasonable 
IN RE: GORELIK 7

interpretation consistent with the specification . . . .” In 

re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.

Cir. 2004) (alteration in original) (quoting In re Bond, 910 

F.2d 831, 833 (Fed.Cir.1990)). 

With respect to the first two claims, Gorelik presses 

the same issue on appeal as before the Board, asserting 

that the term “hollow cylindrical” cannot, by definition, 

include a cylinder with conical ends. Gorelik further 

argues that the specification proposes only one embodiment of a cylindrical analyzer, which has a flat lid. And 

Gorelik notes that the specification describes only one 

electrostatic field, that of an analyzer with flat lids.

While we agree with Gorelik that the specification describes a hollow cylindrical analyzer with flat lids, we do 

not agree that the broadest reasonable interpretation of 

the claims is so limited. This court has recognized that a 

patentee “may demonstrate an intent to deviate from the 

ordinary and accustomed meaning of a claim term by 

including in the specification expressions of manifest 

exclusion or restriction, representing a clear disavowal of 

claim scope.” Id. at 1365 (quoting Teleflex, Inc. v. Ficosa 

N. Am. Corp., 299 F.3d 1313, 1325 (Fed. Cir. 2002)). But 

that the “claims are interpreted in light of the specification does not mean that everything expressed in the 

specification must be read into all the claims.” Raytheon 

Co. v. Roper Corp., 724 F.2d 951, 957 (Fed. Cir. 1983). 

Here, we agree with the Board that the broadest reasonable interpretation of “hollow cylindrical” is not limited to 

cylinders with flat ends. Even though the specification 

only discusses cylindrical analyzers with flat lids, it does 

not disclaim “hollow cylindrical” analyzers with non-flat 

lids. Indeed, the specification notes that “[v]arious modifications will become apparent to those skilled in the art 

after having read this disclosure,” and provides an example modification to the lid, noting that an “analyzer can be 

made of several lids of increasing radiuses . . . .” ’812 

Application ¶ [0023]. This recognition of an embodiment 
8 IN RE: GORELIK

with stacked flat lids at minimum suggests Gorelik’s 

proposed definition of “hollow cylindrical” is not the 

broadest reasonable interpretation consistent with the 

specification. Instead, we agree with the Board that the 

broadest reasonable interpretation of “hollow cylindrical” 

in light of the specification includes hollow cylinders with 

conical ends. Under this claim interpretation, Gorelik 

does not contest that the Board’s finding that Varga 

renders claims 1 and 2 obvious is supported by substantial evidence. We thus affirm the Patent Office’s rejection 

of claims 1 and 2 as obvious over Varga.

Turning to claims 3 and 4, we also affirm the Board’s 

rejection of these claims as obvious over a combination of 

Varga and Jiang. Gorelik argues that the Board’s combination of Varga with a TEM is impractical because the 

resultant analyzer would need to be very large to fit 

inside the first stage of the analyzer. Appellant Br. 5–8. 

When Gorelik presented the same argument to the Board, 

it found the argument lacking evidentiary support. 

J.A. 5–6, 10. We agree. Gorelik fails to submit any 

evidence beyond conjecture to support its contention that 

the combination of the references would result in a very 

large device. Moreover, the obviousness determination is 

“not whether the references could be physically combined 

but whether the claimed inventions are rendered obvious 

by the teachings of the prior art as a whole.” In re Etter, 

756 F.2d 852, 859 (Fed. Cir. 1985). Thus, Gorelik does not 

establish that the Board’s judgment was unsupported by 

substantial evidence. Because Gorelik brings no further 

challenge to the rejection of claims 3 and 4 as obvious over 

a combination of Varga in light of Jiang, we affirm the 

Board’s rejection of these claims. 

We have considered Gorelik’s additional arguments 

and find them unconvincing. We thus affirm the Board’s 

decision.

AFFIRMED
IN RE: GORELIK 9

COSTS

No Costs.