In Re: Poniatowski
688 F. App'x 912
| Fed. Cir. | 2017Background
- Paul Poniatowski filed U.S. Patent Application No. 13/559,194 (priority to 2003) claiming an apparatus for wireless commercial transactions involving a mobile phone with a dedicated actuator, an optical input for price information, a network hub, and a financial/authorization institution associating a PIN with the phone.
- The examiner rejected claims 1–9 and 11–13 as obvious over combinations of prior art (Swartz, Medamana, Hammad, Skowronek, and others); the PTAB affirmed those rejections and denied rehearing.
- The Board treated claim 1 as representative because the applicant did not separately argue other claims on appeal to the Board.
- Poniatowski appealed, arguing the Board failed to consider four distinct contentions about Swartz: lack of a dedicated actuator on the phone, lack of an optical input attached to the phone, lack of a phone that solicits item-subset selection, and lack of a financial institution associating a PIN with the phone.
- The examiner had relied on non-Swartz references (Hammad, Skowronek, Medamana) to supply some claim elements; the Board found substantial-evidence support for the combined teachings and that some arguments were forfeited for not being timely raised.
Issues
| Issue | Poniatowski's Argument | PTO/Board's Argument | Held |
|---|---|---|---|
| Whether Swartz discloses a phone with a dedicated actuator that initiates transactions | Swartz lacks a phone-mounted dedicated actuator | Examiner relied on Hammad/Skowronek to supply actuator; applicant failed to timely contest examiner’s factual findings | Forfeited: Board properly relied on non‑Swartz refs; substantial evidence supports finding of actuator in prior art |
| Whether Swartz discloses an optical input attached to the phone for price info | Swartz’s optical input (scanner) is not attached to the phone and thus not equivalent | Swartz discloses barcode scanner for price data; Hammad teaches phone features; a POS modification combining teachings is obvious | Rejected: Board reasonably treated Swartz scanner as optical input and relied on combining Hammad; teaching-away argument waived and unsupported |
| Whether Swartz discloses a phone that solicits selection of a subset of items | Swartz does not teach the solicit/selection limitation | Claim including this limitation (claim 5) was not separately argued to the Board | Forfeited: Board limited review to arguments made; applicant did not preserve claim-specific argument |
| Whether prior art teaches a financial/authorization institution associating a PIN with the phone | Swartz does not disclose PIN association | Examiner relied on Medamana for PIN association; applicant did not timely dispute that finding | Forfeited: Board properly treated the argument as not raised; substantial evidence supports reliance on Medamana |
Key Cases Cited
- Randall Mfg. v. Rea, 733 F.3d 1355 (Fed. Cir. 2013) (standard of review and Graham factor framework for obviousness)
- KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007) (obviousness analysis and when combinations of prior art are proper)
- Graham v. John Deere Co. of Kan. City, 383 U.S. 1 (1966) (framework for factual inquiries underlying obviousness)
- In re Baxter Int’l, Inc., 678 F.3d 1357 (Fed. Cir. 2012) (Board limits arguments to those made in the appellant’s brief)
- In re McDaniel, 293 F.3d 1379 (Fed. Cir. 2002) (forfeiture of issues not raised before the Board)
- In re Watts, 354 F.3d 1362 (Fed. Cir. 2004) (arguments not raised below are waived on appeal)