In Re: Gorelik , 652 F. App'x 954 ( 2016 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
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IN RE: VICTOR GORELIK, TATIANA GORELIK,
NATALIA HANSON,
Appellants
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2016-1432
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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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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, Cir-
cuit 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 Applica-
tion ¶ [0002]. The application seeks to provide an appa-
ratus that can pair “a high spatial resolution image” with
“high energy resolution spectra of a nano-object” to pro-
duce “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 infor-
mation 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 hol-
low cylindrical analyzer having an electrically
conductive inner cylinder coupled to a source of
voltage, an electrically conductive upper lid cou-
pled 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 an-
alyzer, 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 appa-
ratus, 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 require-
ment 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 de-
pendent claim 2 over D. Varga et al., Design of an Electro-
static 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 dis-
closes 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 cylin-
ders 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 cylin-
drical 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. In-
stead, 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 pur-
ported 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 juris-
diction 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 obvious-
ness 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 embodi-
ment 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 de-
scribes 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 specifica-
tion 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 reasona-
ble 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 modi-
fications will become apparent to those skilled in the art
after having read this disclosure,” and provides an exam-
ple 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 substan-
tial 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 combi-
nation 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
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COSTS
No Costs.