       NOTE: This disposition is nonprecedential.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 obvi-
ousness, 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 commer-
    cial transactions, said apparatus comprising a
    mobile phone equipped with a dedicated actuator
    for initiating a commercial transaction, and an op-
    tical input for receiving information concerning
    prices of goods, a network hub for wireless ex-


    1  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 es-
    tablishment and said mobile phone within the
    boundaries of the establishment, and a finan-
    cial/authorization institution for associating a PIN
    number with said mobile phone and for authoriz-
    ing 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 sub-
mitted 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 insti-
tution 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 rejec-
tions had it considered those arguments. We have juris-
diction 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 gov-
erning 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 chal-
lenge 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” limita-
tion—the third item enumerated above—is reflected in
claim 5 but does not appear in claim 1. But Mr. Pon-
iatowski 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 argu-
ments 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” limi-
tations—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 limita-
tions 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 pre-
sent, not in Swartz, but in Skowronek and Hammad
(actuator) and in Medamana (PIN number). See Appel-
lee’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 meaning-
ful or persuasive argument that substantial-evidence
support is lacking for the examiner’s findings that the
non-Swartz references teach these elements. For exam-
ple, 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 in-
formation” limitation—the second item in Mr. Pon-
iatowski’s enumeration. As to that limitation, the Board
first affirmed the examiner’s finding that Swartz dis-
closed 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). Consider-
ing 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 commer-
cial 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 teach-
ing 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 deci-
sion was unsupported by substantial evidence.
IN RE: PONIATOWSKI                                      7



                           III
    For the foregoing reasons, we affirm the Board’s deci-
sion.
   No costs.
                      AFFIRMED
