N OTE : This disposition is nonprecedential. 

# United States **Court of Appeals**  **for the Federal Circuit**

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IN RE: VICTOR GOREL IK, TATIANA GORELIK, NATALIA HANSON, Appellants

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2016

- 1432

______________________ Appeal from the United States Patent and Trademark Office, Patent Trial and Appeal Board in No. 13/289,814.

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Decided: June 14, 2016

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V ICTOR G ORELIK , Brooklyn, NY, pro se.

T ATIANA G ORELIK , Brooklyn, NY, pro se.

N ATALIA H ANSON , Brooklyn, NY, pro se.

T HOMAS W. K RAUSE , Office of the Solicitor, United States Patent and Trademark Office, Alexandria, VA, for appellee Michelle K. Lee. Als o represented by S ARAH E. C RAVEN , M EREDITH H OPE S CHOENFELD

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Before P ROST , Chief Judge, B RYSON , and S TOLL , Ci rcuit Judges.IN RE : GORELIK 2

P ER C URIAM

. Named inventors V ictor Gorelik, Tatiana Gorelik, and Natalia Hanson (collectively, “Gorelik”) appeal from a decision of the Patent Trial and Appeal Board in the examination of Patent A pplication S erial No. 13/289,814. The Board affirmed the e xaminer’s rejection of claims 1 –4 as obvious under 35 U.S.C. § 103. We affirm.

B ACKGROUND

Gorelik filed t he ’814 application on November 4
, 2011. The patent discusses a purportedly new apparatus for studying objects at a nanoscopic scale. ’814 A pplic ation ¶ [0002]. The application seeks to provide an app aratus that can pair “a high spatial resolution image ” with “high energy resolution spectra of a nano

- object” to pr oduce “valuable information” about the nano

- object. Id. T he high resolution image is produced by, for example, a transmission electron microscope (“TEM”) or scanning probe microscope

. Id. at ¶ [0010]. The spectra i nfo rmation is produced by a claimed “hollow cylindrical analyzer.” Joint A ppendix (“J.A.”) 100

. The application explains that pairing these two instruments “allows extracting additional elemental and chemical information about a n an o- object of interest.” ’814 Application ¶ [0002].
The application provides several embodiments of its “hollow cylindrical analyzer ,” including the example in F igure 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 a p paratus,

c omprising:

a source of electrons and
a spectrometer that includes at least one ho llow cylindrical analyzer having an electrically conductive inner cylinder co u pled to a source of voltage, an electrically conductive upper lid co upled to another source of voltage, an electrically condu c tive outer cylinder coupled to yet another source of voltage, and an electrically co n ductive lower lid coupled to yet another source of voltage
wherein the spectrometer is confi g ured so that the electrons emitted from the source enter theIN RE : GORELIK 4

hollow cylindrical a n alyzer through the wi n dows in the inner cylinder, make at least one U

- turn in the direction of the axis of the hollow cylinder a nalyzer, and then the electrons are being collected by a detector.

J.A. 100

. Claim 2 depends from c laim 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 collect ed 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 app aratus, comprising:

the hollow cylindrical analyzer of claim 1 and a transmission electron m i croscope wherein the analyzer and the micr o scope are configured so that the electrons emitted from the specimen of the micr o scope 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 an a lyzer, and then the electrons are being co l lected by a detector.

Id. Claim 4 depends from Claim 3, and adds the requir ement that “ the analyzer comprises at le ast two hollow cylindrical analyzers and fits around the objective lens of the microscope. ” Id.

The e xaminer rejected independent claim 1 and d ependent claim 2 over D. Varga et al., Design of an Electr ostatic Electron Spectrometer F or Simultaneous Energy and Angular Distribution Measurements, 76 J. E LECTRON S PECTROSCOPY & R ELATED P HENOMENA 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 rejec tions and denied Gorelik’s motion for rehearing.
The Board explained that Varga disclose s a two

- stage electrostatic analyzer capable of measuring electrons incident at a range of angles, including those claimed by Gorelik. As shown in F igure 1 below

, Varga’s analyzer has an inner cylin der and an outer cylinder with conical ends.

Varga

, supra, at 434

. The Board noted that “ Varga di scloses 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 determi ned that the broadest reasonable interpretation of “hollow cylindri cal ”IN RE : GORELIK 6

was consistent with Varga’s cylinders having conical ends b ecause the specification did not limit the term to cyli nders having flat ends

. Id. The Board therefore affirmed the e xaminer’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 e xaminer’s rejection of Varga in view of Jiang. Jiang teaches the use of a cyli ndrical mirror analyzer in concert with a TEM , and the

e xaminer 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 e xaminer’s finding that Varga could be combined with Jiang. I nstead, 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 pu rported 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 juri sdi ction pursuant to 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. § 141.

D ISCUSSION We review the Board’s factual findings for substantial evidence and its legal conclusions de novo

. Rambus Inc. v. Rea , 731 F.3 d 1248, 1251 (Fed. Cir. 2013). An obviou sness dete rmination under § 103 is a “legal conclusion based on underlying factual determinations. ” Id. at 1251

– 5 2. 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 reasonableIN 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” c annot, by definition, include a cylinder with conical ends. Gorelik further argues that the specification proposes only one embod iment of a cylindrical analyzer, which has a flat lid. And Gorelik notes that the specification describes only one electrosta tic field , that of an analyzer with flat lids.
While we agree with Gorelik that the specification d escribes 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

c laim 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 specific ation does not mean that everything expressed in the specification must be read i nto 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 reason able interpretation of “hollow cylindrical” is not limited to cylinders with flat ends

. Even though the specifica tion 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 mod ifications will become apparent to those skilled in the art after having r ead this disclosure,” and provides an exa mple modification to the lid, noting that an “analyzer can be made of several lids of increasing radiuses . . . .” ’812 A pplication ¶ [0023]. Th is recognition of an embodimentIN RE : GORELIK 8

with stacked flat lids at minimum suggest s Gorelik’s proposed definition of “hollow cylindrical ” is not the broadest reasonable interpretation consistent with the specification

. Instead, we agree with the B oard that the b roadest reasonable interpretation of “hollow cylindrical” in light o f the specification includes hollow cylinders with conical ends. U nder this claim interpretation, Gorelik does not contest that the Board’s finding that Varga renders claims 1 and 2 obvious is supported by substa ntial evidence

. We thus affirm the Patent Office’s rejection of claims 1 and 2 as obvious over Varga.
Turning to claims 3 and 4, w e also affirm the Board’s rejection of these claims as obvious over a combination of Varga and Jiang

. Gorelik argues that the Board’s comb ination of Varga with a TEM is impracti cal 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 w hether 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 do es not establish that the Board’s j udgment 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.

AFFIRMEDIN RE : GORELIK 9

C OSTS

No Costs.