Federal Circuit disposition — 2011-1417

NOTE: This disposition is nonprecedential
United States Court of Appeals
for the Federal Circuit
__________________________
(Reexamination No. 90/008,387)
IN RE ALEKSANDR L. YUFA
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2011-1417
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
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Decided: February 8, 2012
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ALEKSANDR L. Y UFA, of Colton, California, pro se.
RAYMOND T. CHEN , Solicitor, United States Patent
and Trademark Office, of Alexandria, Virginia, for appel-
lee. With him on the brief were FARHEENA Y. RASHEED
and SYDNEY O. JOHNSON , JR., Associate Solicitors.
__________________________
Before LOURIE, M OORE, and REYNA, Circuit Judges.
Per Curiam.
Aleksandr Yufa appeals the decision by the Board of
Patent Appeals and Interferences (Board) in reexamina-
tion 90/008,387 holding claims 1 and 3-5 invalid for

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IN RE YUFA 2
obviousness and claims 6-8 invalid for lack of written
description. Because the Board correctly held that claims
1 and 3-5 would have been obvious, we affirm those
rejections. Regarding claims 6-8, the U.S. Patent and
Trademark Office (PTO) concedes that the written de-
scription rejections should be withdrawn by the Board
and thus we vacate and remand.
BACKGROUND
This appeal arises from an ex parte reexamination of
U.S. patent no. 6,346,983. The specification describes a
system for detecting particles in an airborne gas or a
liquid. J.A. 66 col.1 ll.5-10. The system includes a com-
puter that controls a remote detection system by wire-
lessly sending activation commands. J.A. 70 col.9 ll.3-24.
The remote detection system includes sensors to deter-
mine the amount of particles in a sample, means to ana-
lyze and process the signal from the sensors, and a
wireless communication mechanism to transmit the
results back to the computer. J.A. 68 col.6 ll.60-65; J.A.
70 col.10 ll.46-55. The computer converts and displays
the results. J.A. 70 col.10 ll.60-65. Claim 1, amended
during reexamination, is illustrative:
A method for counting and measuring particles il-
luminated by a light beam, providing two-way
wireless communication between a data process-
ing and control system and a remote particle de-
tecting system, said method comprising the steps
of:
. . .
sensing by a light detecting means of a particle
detecting means of said remote particle detecting
system a light created by an intersection of said
light beam and said particles within a particle

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IN RE YUFA 3
monitoring region and providing an output, which
is effectively indicative of a size of said particles;
processing said output by a signal processing sys-
tem of said remote particle detecting system pro-
viding said measuring and said counting of said
particles;
forming in said signal processing system of said
remote particle detecting system a data, contain-
ing an information about a quantity and said size
of said particles;
converting said data, containing said information
about said quantity and said size of said particles
to the form for wireless transmission;
wireless transmitting of the converted data, con-
taining said information about said quantity and
said size of said particles, from said remote parti-
cle detecting system to said data processing and
control system;
. . . .
The Board rejected claims 1, 3, and 4 under 35 U.S.C.
§ 103(a) based on a single reference, Japanese Unexam-
ined Patent Application Publication No. H4-12248 (Mi-
kami). Mikami discloses a system for measuring particle
concentration in the air in a clean room. S.A. 612. The
system includes a computer, measurement means, and
FM radios for transmitting signals wirelessly. S.A. 615
Fig 1. The computer issues commands wirelessly to the
measurement means instructing it to take measurements.
S.A. 613. The measurement means detects particles and
sends a raw signal back to the computer. Id. The com-
puter then determines the “cumulative number of dust
particles” using the data from the measurement means.
Id. In its background section, Mikami describes prior art

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IN RE YUFA 4
robot-operated systems in which a single device included
both sensor and signal processing systems to determine
the amount of particles in a sample. S.A. 612.
The Board held that Mikami disclosed all of the limi-
tations of claims 1, 3, and 4 except for “processing said
output by a signal processing system of said remote
particle detecting system” because Mikami performs this
processing at the computer instead of the remote meas-
urement means. S.A. 8. The Board found that the back-
ground disclosure in Mikami teaches this limitation
because the robot-operated sensors included a detection
system and processing means for determining the amount
of particles. Id. The Board held that these disclosures
rendered the claims obvious because the patent simply
rearranged known elements. S.A. 9. Regarding claim 4,
the Board held that Mikami discloses the claimed “tubu-
lar means,” “environmental assaying control means,” and
“detection means” pointing to specific structures and
functions in Mikami. S.A. 15-16. Regarding claim 5,
which requires that each remote detection system have an
identification code, the Board held that it would have
been obvious over Mikami in view of U.S. patent no.
5,864,781 (White). White discloses sensors with unique
ID codes. White Abstract; col.2 ll.27-33. Finally, the
Board rejected claims 6-8 for lack of written description
support under 35 U.S.C. § 112, ¶1.
The applicant appeals. We have jurisdiction pursuant
to 28 U.S.C. § 1295(a)(1).
D ISCUSSION
Obviousness is a question of law that we review de
novo. In re Gartside, 203 F.3d 1305, 1316 (Fed. Cir.
2000). What a reference teaches and the motivation to
combine are questions of fact. Id. at 1315-16; Para-
Ordnance Mfg., Inc. v. SGS Importers Int’l, Inc., 73 F.3d

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IN RE YUFA 5
1085, 1088 (Fed. Cir. 1995). We uphold fact findings that
are supported by substantial evidence. 5 U.S.C.
§ 706(2)(E)
We agree with the Board that claims 1 and 3 would
have been obvious based on the disclosure of Mikami.1
Mikami teaches every element of the claims except that
the processing of the raw sensor data occurs at the com-
puter in Mikami, but at the remote detecting system in
the claims. For example, Mikami discloses measurement
means positioned inside a clean room collecting data and
sending this data wirelessly to a computer. S.A. 613. The
computer processes this data to “[calculate] the cumula-
tive number of dust particles.” Id. This is nothing more
than a reconfiguration of a known system. We agree with
the Board that this “‘simply arranges old elements with
each performing the same function it had been known to
perform’ and yields no more than one would expect from
such an arrangement.” KSR Int’l Co. v. Teleflex, Inc., 550
U.S. 398, 417 (2007).
The appellant argues that Mikami teaches away from
the claimed invention citing a statement by an examiner
that “Mikami taught that processing measurement data
at the remote sensing location was possible, but preferred
not to include the extra equipment at the remote location
because it was quicker and more accurate to have most of
the equipment outside of the location being measured.”
Appellant’s Br. 9-10 (quoting S.A. 1728). Substantial
evidence supports the Board’s factual finding that Mikami
does not teach away from the claimed invention. Mikami
is not concerned with the location of signal processing,
rather, it addresses the issues associated with having a
large apparatus in the clean room. S.A. 612 (“the space
1 Claim 3 is an apparatus claim that is analogous to
claim 1 and the analysis for each is identical.

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IN RE YUFA 6
required for the robot to move placed restraints on the
actual operations”). Mikami simply criticizes larger
systems, and does not specifically address whether the
signal processing function could be moved from the com-
puter to the remote measurement means. Thus, there is
substantial evidence that Mikami does not teach away
from the claimed invention.
The appellant’s arguments regarding secondary con-
siderations of nonobviousness do not rebut this strong
prima facie case. For example, the appellant presents, as
evidence of unexpected results, many technical reasons
that the claimed invention is more efficient than prior art
systems. Appellant’s Br. 23-27; 60-61. But the appel-
lant’s unsupported arguments do not amount to evidence
of unexpected results that would rebut the prima facie
case for obviousness. Appellant similarly argues that the
invention enjoyed commercial success. The appellant
made no substantive arguments regarding commercial
success before the PTO except for the statement: ”The
Product . . . has a commercial success.” S.A. 1626. This
conclusory statement was not supported by any evidence
or even any additional argument. This is not sufficient to
preserve the issue for appeal. We will not consider evi-
dence of commercial success offered for the first time on
appeal and not part of the record before the PTO. There-
fore, we deem the argument regarding commercial success
waived.
Regarding claim 4, substantial evidence supports the
Board’s finding that Mikami discloses the claimed ele-
ments. The specification of the patent in reexamination
provides very little description for the elements in ques-
tion: “environmental assaying control means” and “tubu-
lar means.” The Board held that the function of the
“environmental assaying control means” is to send an air
sample to the detection means and the structure is box 41

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IN RE YUFA 7
of figure 6. S.A. 15-16. We agree that Mikami discloses
this as the box structure surrounding laser beam 8 that
moves an air sample from the air entry point near refer-
ence number 7 toward the photomultiplier 11 (which
undisputedly corresponds to the detection means). Re-
garding the “tubular means,” the Board held that the
function is to allow passage of the assayed air sample
from the environmental assaying control means to the
detection means and pointed to box 37 in figure 6 as
corresponding structure. S.A. 15. The Board correctly
held that chamber 9 in Mikami corresponds to this limita-
tion because it moves air from the environmental assay-
ing control means to the photomultiplier 11.
Regarding claim 5, substantial evidence supports the
Board’s finding that White discloses the additional ele-
ment of an identification code for the remote detecting
system. See White Abstract; col.2 ll.27-33. We agree with
the Board that the claim would have been obvious be-
cause a person of ordinary skill in the art would recognize
the advantages of using identification codes to differenti-
ate between multiple remote detection systems.
The Board also rejected claims 6-8 for lack of written
description under 35 U.S.C. § 112 ¶1. The PTO concedes
that these rejections are in error and “seeks remand to
the Board for it to withdraw the written description
rejection and take appropriate action.” Appellee’s Br. 26.
The Appellant agrees. Reply Br. 37.
Because substantial evidence supports the Board’s
fact findings and it correctly held that claims 1, 3, 4, and
5 would have been obvious under 35 U.S.C. § 103(a), we
affirm those rejections. Because the PTO concedes the
impropriety of the written description rejections of claims
6-8, we vacate and remand for the Board to withdraw
those rejections and take appropriate action.

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IN RE YUFA 8
AFFIRMED-IN-PART, VACATED-IN-PART, and
REMANDED
COSTS
No costs.

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