NOTE: This disposition is nonprecedential.

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: PAUL PONIATOWSKI,

Appellant

______________________ 

2017-1346

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 13/559,194.

______________________ 

Decided: May 9, 2017

______________________ 

PAUL PONIATOWSKI, Ontario, Canada, pro se.

NATHAN K. KELLEY, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee Michelle K. Lee. Also represented by THOMAS W.

KRAUSE, JOSEPH GERARD PICCOLO, KAKOLI CAPRIHAN. 

______________________ 

Before REYNA, LINN, and TARANTO, Circuit Judges.

PER CURIAM.

Paul Poniatowski filed U.S. Patent Application No. 

13/559,194 in 2012. As relevant here, the examiner 

rejected claims 1–9 and 11–13 as unpatentable for obviousness, and the Patent Trial and Appeal Board of the 
2 IN RE: PONIATOWSKI

Patent and Trademark Office affirmed. Mr. Poniatowski 

has shown no reversible error, and we therefore affirm. 

I 

Mr. Poniatowski’s application, which claims priority 

through various continuation applications back to April 7, 

2003, concerns an apparatus for engaging in wireless 

commercial transactions. The examiner rejected claims 

1–3, 6, 8, 9, 11, and 12, determining that those claims 

would have been obvious over a combination of U.S. 

Patent No. 7,040,541 issued to Swartz, U.S. Patent No. 

5,181,238 issued to Medamana, U.S. Patent No. 8,219,490 

issued to Hammad, and U.S. Patent Publication No. 

2010/0023449 to Skowronek. The examiner also rejected 

claims 4, 5, 7, and 13 for obviousness based on these and 

other references. The Board affirmed those rejections. In 

re Poniatowski, No. 2014-007989, 2016 WL 3442692, at 

*2–3 (PTAB June 21, 2016) (Decision on Appeal); see also

In re Poniatowski, No. 2014-007989, 2016 WL 6524749 

(PTAB Oct. 27, 2016) (Rehearing Decision).1

 

The Board treated claim 1 as representative of the 

disputed claims because Mr. Poniatowski did not argue 

for the patentability of any of those claims separately in 

his appeal brief to the Board. See Appellee’s App. 5 

(Board decision); id. at 145–54 (appeal brief). Claim 1

reads as follows: 

1. An apparatus for engaging in wireless commercial transactions, said apparatus comprising a 

mobile phone equipped with a dedicated actuator 

for initiating a commercial transaction, and an optical input for receiving information concerning 

prices of goods, a network hub for wireless ex1 The examiner did not reject claim 10 or claim 14. 

The examiner rejected claim 15, but the Board reversed. 

Those claims are not before us.

 
IN RE: PONIATOWSKI 3

change of information between a commercial establishment and said mobile phone within the 

boundaries of the establishment, and a financial/authorization institution for associating a PIN 

number with said mobile phone and for authorizing transactions initiated by said mobile phone.

Appellee’s App. 111. 

Mr. Poniatowski appeals the Board’s decision under 

35 U.S.C. § 141(a). He argues that the Board failed to 

consider the following arguments raised in a letter submitted to the Board on May 18, 2014: (1) Swartz does not 

disclose “a phone equipped with [a] dedicated actuator 

that initiates commercial transaction[s]”; (2) Swartz does 

not disclose “an optical input for receiving information 

concerning prices of goods [that] is . . . attached to the 

phone”; (3) Swartz does not disclose “a phone that solicits 

[a] selection of a subset [of] items from [a] listing”; and (4)

Swartz does not disclose “a financial/authorization institution for associating a PIN number with said mobile 

phone.” Appellant’s Br. 2. According to Mr. Poniatowski, 

the Board could not have affirmed the examiner’s rejections had it considered those arguments. We have jurisdiction to review the Board’s decision under 28 U.S.C. 

§ 1295(a)(4)(A). 

II

Under the version of 35 U.S.C. § 103(a) applicable to 

this application, a claimed invention is unpatentable “if 

the differences between the subject matter sought to be 

patented and the prior art are such that the subject 

matter as a whole would have been obvious at the time 

the invention was made to a person having ordinary skill 

in the art to which the claimed invention pertains.” 35 
4 IN RE: PONIATOWSKI

U.S.C. § 103(a).2 “Whether a claimed invention would 

have been obvious is a question of law, based on factual 

determinations regarding the scope and content of the 

prior art, differences between the prior art and the claims 

at issue, the level of ordinary skill in the pertinent art, 

and any objective indicia of non-obviousness.” Randall 

Mfg. v. Rea, 733 F.3d 1355, 1362 (Fed. Cir. 2013); see KSR 

Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007); Graham 

v. John Deere Co. of Kan. City, 383 U.S. 1, 17–18 (1966).

“On appeal, we review the Board’s compliance with governing legal standards de novo and its underlying factual 

determinations for substantial evidence.” Randall, 733 

F.3d at 1362.

Mr. Poniatowski faults the Board for disregarding 

four contentions about what Swartz teaches. This challenge lacks merit. Mr. Poniatowski has not shown that 

the Board relied on Swartz for any claim element that he 

separately and timely argued to the Board.

As an initial matter, the “phone that solicits” limitation—the third item enumerated above—is reflected in 

claim 5 but does not appear in claim 1. But Mr. Poniatowski did not argue for the patentability of claim 5 

separately to the Board. Under 37 C.F.R. § 41.37(c)(iv), 

the Board acted properly in limiting itself to the arguments raised in the applicant’s appeal brief. See, e.g., In 

re Baxter Int’l, Inc., 678 F.3d 1357, 1362 (Fed. Cir. 2012); 

In re McDaniel, 293 F.3d 1379, 1383 (Fed. Cir. 2002).

2 The Leahy–Smith America Invents Act changed 

the language of § 103(a), see Pub. L. No. 112–29, § 3(c), 

125 Stat. 284, 287 (2011), but those changes do not apply 

to this 2012 application. See id. § 3(n)(1), 125 Stat. at 

293.

 
IN RE: PONIATOWSKI 5

As to the “dedicated actuator” and “PIN number” limitations—the first and fourth items in Mr. Poniatowski’s 

enumeration above—Mr. Poniatowski’s challenge to the 

Board’s decision also fails because the arguments were 

not timely presented to the Board. Those limitations do 

appear in claim 1. But the examiner found those limitations present in the prior art, see Appellee’s App. 131–33, 

and Mr. Poniatowski did not challenge those findings in 

his appeal brief to the Board, see id. at 146–50. The 

Board therefore could properly consider these points 

forfeited. See Rehearing Decision, 2016 WL 6524749 at 

*2. 

Moreover, the examiner found these limitations present, not in Swartz, but in Skowronek and Hammad 

(actuator) and in Medamana (PIN number). See Appellee’s App. 131–33; Rehearing Decision, 2016 WL 652749 

at *3 (discussing Hammad). Those findings make Mr. 

Poniatowski’s current argument about Swartz immaterial 

to the outcome. And Mr. Poniatowski makes no meaningful or persuasive argument that substantial-evidence 

support is lacking for the examiner’s findings that the 

non-Swartz references teach these elements. For example, Hammad discloses that a consumer may initiate a 

transaction with a merchant by interacting with his 

mobile communication device. Hammad, col. 6, lines 51, 

54–56. That disclosure is reasonably read as teaching 

that the mobile communication contains a means by 

which the consumer initiates the transaction, i.e., an 

actuator. 

What remains is the “optical input for receiving information” limitation—the second item in Mr. Poniatowski’s enumeration. As to that limitation, the Board 

first affirmed the examiner’s finding that Swartz disclosed that limitation. Final Written Decision, 2016 WL 

3442692, at *2–3. Swartz discloses an order-fulfillment 

system, Swartz, abstract, that includes a machine used 

“to retrieve data files including items such as prices,” 
6 IN RE: PONIATOWSKI

Swartz, col. 3, lines 9–10. It teaches, moreover, that the 

“[c]ollection of data is preferably performed by a bar code 

scanner.” Swartz, col. 5, lines 19–20. Mr. Poniatowski 

fails to provide any persuasive reason that the Board 

could not consider this bar code scanner to be an optical 

input for receiving information concerning the price of 

goods.

In seeking rehearing, Mr. Poniatowski argued that, 

although the system in Swartz includes a mobile phone, 

the optical input in Swartz is not attached to the mobile 

phone. See Swartz, fig.3 (depicting mobile phone and 

scanner as separate subcomponents of system). Considering this argument, the Board observed that the examiner 

relied on the Hammad reference to teach a wireless phone 

that is equipped with an actuator for initiating a commercial transaction. Rehearing Decision, 2016 WL 652749 at 

*3. And the Board reasoned that a person of ordinary 

skill in the art would modify the device in Swartz to 

include the mobile phone features disclosed in Hammad. 

Id. Mr. Poniatowski challenges this finding with a teaching away argument in one sentence of his opening brief: 

“Combining Swartz with Hammad indeed teaches away 

from the [a]ppellant[’s] invention scope/function and 

would make the invention inoperable.” Appellant’s Br. 6. 

But this argument, made for the first time on appeal to 

this court, has been waived by Mr. Poniatowski. See In re 

Watts, 354 F.3d 1362, 1367 (Fed. Cir. 2004). And in any 

event, he has not shown inoperability or offered any other 

persuasive support for the teaching-away contention. 

Accordingly, he has failed to show that the Board’s decision was unsupported by substantial evidence.
IN RE: PONIATOWSKI 7

III

For the foregoing reasons, we affirm the Board’s decision.

No costs. 

AFFIRMED