       NOTE: This disposition is nonprecedential.


  United States Court of Appeals
      for the Federal Circuit
                ______________________

  IN RE: VICTOR MANUEL CELORIO GARRIDO,
                    Appellant
             ______________________

                      2016-1007
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/012,726.
                  ______________________

                Decided: April 26, 2016
                ______________________

    VICTOR MANUEL CELORIO GARRIDO, Gainesville, FL,
pro se.

    SARAH E. CRAVEN, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA, for
appellee Michelle K. Lee. Also represented by THOMAS W.
KRAUSE, SCOTT C. WEIDENFELLER, BENJAMIN T. HICKMAN.
                 ______________________

     Before REYNA, HUGHES, and STOLL, Circuit Judges.
PER CURIAM.
    Victor Manuel Celorio Garrido (“Mr. Celorio”) appeals
from the decision of the Patent Trial and Appeal Board
(“Board”) in the ex parte reexamination of U.S. Patent
No. 6,012,890 (“the ’890 patent”). The Board affirmed the
2                                            IN RE: GARRIDO




Patent and Trademark Office (“PTO”) examiner’s rejec-
tion of claims 1–4, 6, 7, 9–11, 13–24, 26, 27, 29–31, 33–36,
38–40, 48, 50–53, 61–67, 75, 76, 78–82, 84–86, 88–90, 100,
102–05, 107, 108, 115, 117–50, 152, 158, 163–86, and
188–223 as anticipated or obvious over the prior art or
invalid for failure to comply with the requirements of
35 U.S.C. § 112. We affirm.
                       BACKGROUND
    Mr. Celorio owns the ’890 patent, which is directed to
an “Electronic Bookstore Vending Machine” for printing
and binding books on demand. A third party requested ex
parte reexamination of the ’890 patent before the PTO.
The examiner initiated reexamination of claims 1–4, 6–
24, 26–31, 33–36, 38–41, 48, 50–53, 61–67, 75, 76, 78–90,
100, 102–08, and 115–20 and issued a non-final office
action, rejecting various claims as anticipated under
35 U.S.C. § 102(b) and obvious under 35 U.S.C. § 103(a).
    During the course of reexamination, Mr. Celorio add-
ed over one hundred new claims. The examiner issued a
final rejection, maintaining the original § 102(b) and
§ 103(a) rejections and entering new rejections for many
of the new claims for deficiencies under § 112. Mr. Celorio
timely appealed to the Board, and the Board affirmed the
examiner’s rejections. Ex Parte Garrido (Board Decision),
No. 15-4695, 2015 WL 4090081 (PTAB June 30, 2015).
    Mr. Celorio timely appeals to this court. We have ju-
risdiction 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 without deference.
Rambus Inc. v. Rea, 731 F.3d 1248, 1251 (Fed. Cir. 2013).
“Substantial evidence is something less than the weight of
the evidence but more than a mere scintilla of evidence.”
In re Mouttet, 686 F.3d 1322, 1331 (Fed. Cir. 2012).
IN RE: GARRIDO                                             3



Obviousness under § 103(a) is a “legal conclusion based on
underlying factual determinations. The factual determi-
nations include (1) the scope and content of the prior art;
(2) the differences between the claims and the prior art;
(3) the level of ordinary skill in the art; and (4) objective
evidence of nonobviousness.” Rambus, 731 F.3d at 1251–
52 (internal citation omitted).
     On appeal, Mr. Celorio first argues that the examiner
failed to consider secondary considerations of nonobvious-
ness before arriving at his ultimate determination regard-
ing obviousness. Specifically, Mr. Celorio asserts that the
examiner improperly presented analysis of the evidence of
secondary considerations for the first time in the examin-
er’s brief to the Board. Mr. Celorio complains that this is
error because, under this Court’s precedent, the examiner
must consider objective evidence before making his ulti-
mate conclusion on obviousness. While this general
proposition is correct, Mr. Celorio did not properly submit
evidence of secondary considerations until after the
examiner issued a final office action. The examiner then
issued an advisory action, explaining why that evidence of
commercial success, long-felt need, failure of others, and
copying was insufficient to demonstrate nonobviousness of
the rejected claims. See Advisory Action, Ex Parte Gar-
rido, Reexam. Control No. 90/012,726 (PTO April 15,
2014). The examiner later elaborated on the reasons for
his conclusion in his brief to the Board.
     Specifically, the examiner explained that Mr. Celorio
failed to present evidence establishing a nexus between
the claims and the evidence of commercial success. Com-
mercial success of a product “is relevant in the obvious-
ness context only if there is proof that the sales were a
direct result of the unique characteristics of the claimed
invention—as opposed to other economic and commercial
factors unrelated to the quality of the patented subject
matter.” In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996)
(emphasis added). With respect to long-felt need and
4                                           IN RE: GARRIDO




failure of others, the examiner explained that Mr. Celorio
failed to present requisite evidence to establish these
factors.     Specifically, the examiner explained that
Mr. Celorio did not demonstrate that those of skill in the
art recognized the problem and were working on a solu-
tion for a long period of time, and yet failed to solve the
problem. “Absent a showing of a long-felt need or the
failure of others, the mere passage of time without the
claimed invention is not evidence of nonobviousness.”
Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392 F.3d
1317, 1325 (Fed. Cir. 2004). And with respect to copying,
the examiner explained that Mr. Celorio’s submitted
evidence did not demonstrate the alleged copying fell
within the scope of the claims. As we have explained,
while copying may be a relevant secondary consideration,
“as with the commercial success analysis, a nexus be-
tween the copying and the novel aspects of the claimed
invention must exist for evidence of copying to be given
significant weight in an obviousness analysis.” Wm.
Wrigley Jr. Co. v. Cadbury Adams USA LLC, 683 F.3d
1356, 1364 (Fed. Cir. 2012) (internal quotation mark
omitted). Although the examiner elaborated on the basis
for rejecting the evidence of secondary considerations in
his brief to the Board, the examiner did consider
Mr. Celorio’s evidence prior to the appeal and Mr. Celorio
had adequate notice prior to appeal of the examiner’s
rationale for rejecting this evidence. The Board adopted
the examiner’s findings regarding secondary considera-
tions, and in view of the evidence of record, we find sub-
stantial evidence supports those findings.
    Mr. Celorio next argues that the Board erred in af-
firming the rejection of certain claims as indefinite under
§ 112, asserting that rejections during reexamination may
be based on only prior-art grounds. Mr. Celorio is correct
that rejections of original patent claims are limited to
prior art grounds during reexamination. When new
claims are added during reexamination, however, the new
IN RE: GARRIDO                                             5



claims may be rejected for failing to comply with § 112.
See 37 C.F.R. § 1.552(a) (“Claims in an ex parte reexami-
nation proceeding will be examined on the basis of pa-
tents or printed publications and, with respect to subject
matter added or deleted in the reexamination proceeding,
on the basis of the requirements of 35 U.S.C. § 112”).
Because the only claims rejected for failure to comply with
§ 112 were new claims added by Mr. Celorio during the
course of reexamination, the Board did not err in affirm-
ing the examiner’s § 112 rejections.
    The finding that certain claims of the ’890 patent
were not indefinite during district court litigation, Celorio
v. Google, No. 11-0079, 2013 WL 5745675 (N.D. Fla.
Oct. 22, 2013), has no impact on the Board’s decision. The
district court decision involved different claims than those
subject to the indefiniteness rejections during reexamina-
tion. In any event, the PTO is not bound here by the
district court’s decision. See In re Swanson, 540 F.3d
1368, 1377 (Fed. Cir. 2008) (“[A] prior holding of validity
is not necessarily inconsistent with a subsequent holding
of invalidity, and is not binding on subsequent litigation
or PTO reexaminations.” (internal citation and quotation
marks omitted)).
    Mr. Celorio also challenges the grounds of rejection
involving a prior art reference, JIM WALLACE, Exploring
IBM Print on Demand Technology (Maximum Press)
(1996) (“Wallace”). Mr. Celorio asserts that Wallace is not
prior art, disputing the publication date of Wallace. But
the Board explained that “the prior art status of Wallace
is not determinative as to the patentability of the rejected
claims.” Board Decision, 2015 WL 4090081, at *5. As the
Board explained, all rejections that relied on Wallace
alternatively relied on U.S. Patent No. 5,028,192 (“Lind-
say”) or HOWARD M. FENTON, et al., On Demand Printing:
The Revolution in Digital and Customized Printing
(Graphic Arts Technical Foundation (1995) (“Fenton”).
Id. Thus, because none of the rejections affirmed by the
6                                            IN RE: GARRIDO




Board depend upon Wallace, we need not resolve the prior
art status of Wallace.
     Mr. Celorio further argues that Wallace, Lindsay, and
Fenton, individually or collectively, do not disclose all
elements of the rejected claims. Mr. Celorio mistakenly
asserts that “clear and convincing” evidence is required to
establish obviousness. In a reexamination before the
PTO, a lower “preponderance of the evidence” standard
applies. See In re Swanson, 540 F.3d at 1377. Further-
more, while we understand Mr. Celorio to be making a
general argument that the rejected claims are not obvious
in view of the cited prior art, Mr. Celorio fails to explain
which specific elements of the claims are not taught by
the prior art. Nor did he present any such argument
before the Board. Thus, we find no error in the Board’s
affirmance of the rejections premised on Wallace, Lind-
say, and Fenton. We advise Mr. Celorio that, in any
future proceedings he has before the PTO, he should
specifically identify the particular language in the claim
that he contends is missing in the prior art references
relied on by the examiner.
    Next, Mr. Celorio argues that the Board applied im-
proper hindsight bias by adopting a construction for the
claim term “formatting” previously adopted in the reex-
amination of U.S. Patent No. 6,213,703 (“the ’703 pa-
tent”), a child of the ’890 patent. He asserts that the
reexamination file of the ’703 patent is not prior art
because it occurred after the priority date of the ’890
patent. Mr. Celorio does not suggest an alternate con-
struction for the term “formatting,” but instead objects
only to the Board’s reliance on the construction adopted in
the reexamination of the ’703 patent. The Board did not
err by construing this claim term consistently across both
the ’890 and ’703 patents. As we have explained, “[w]here
multiple patents ‘derive from the same parent application
and share many common terms, we must interpret the
claims consistently across all asserted patents.’”
IN RE: GARRIDO                                            7



SightSound Techs., LLC v. Apple Inc., 809 F.3d 1307,
1316 (Fed. Cir. 2015) (quoting NTP, Inc. v. Research In
Motion, Ltd., 418 F.3d 1282, 1293 (Fed Cir. 2005)). More-
over, we find Mr. Celorio’s assertion that the Board erred
by relying on the ’703 patent reexamination file because it
is not prior art unpersuasive because the Board relied on
the file merely for claim construction, not for determining
the scope and content of the prior art.
    Finally, Mr. Celorio asserts that the Board’s and ex-
aminer’s decisions evidence bias against Mr. Celorio as a
Hispanic pro se appellant. Specifically, Mr. Celorio as-
serts that the examiner expressed prejudice and bias
against Mr. Celorio and “made extra efforts to try to trip”
him. Appellant Br. 27. We disagree. We see no evidence
suggesting that the examiner treated Mr. Celorio differ-
ently than other pro se applicants. Likewise, the Board’s
decision does not reflect any bias and Mr. Celorio’s allega-
tions of bias on the part of the Board and the examiner
are unsupported by evidence.         We have considered
Mr. Celorio’s remaining arguments and find them unper-
suasive. We therefore affirm the Board’s decision.
                         AFFIRMED
                            COSTS
   No Costs.
