Ex Parte Yarbrough

Board of Patent Appeals and Interferences

May 25, 2011

11211012 (B.P.A.I. May. 25, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte PHILLIP C. YARBROUGH
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Appeal 2010-004332
Application 11/211,012
Technology Center 3600
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Before: MURRIEL E. CRAWFORD, BIBHU R. MOHANTY, and
MICHAEL W. KIM, Administrative Patent Judges.

KIM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-004332
Application 11/211,012

STATEMENT OF THE CASE
This is an appeal from the final rejection of claims 20-271. We have
jurisdiction to review the case under 35 U.S.C. §§ 134 and 6.
The claimed invention is generally directed to systems and methods
for consumer opt-out of payment conversions (Spec. 1:5-7). Claim 20,
reproduced below, is further illustrative of the claimed subject matter.

20. A system for consumer opt-out of payment
conversions residing comprising:
memory storing a local opt-out list; and
one or more processors operable to:
identify check data of a physical check;
compare the identified check data to the local opt-
out list to determine a match, the opt-out list comprising
a plurality of consumer records and at least a subset of
the consumer records provided by an opt-out list
provider;
in response to the identified check data not being
matched to the opt-out list, authorize the check for
conversion to an electronic payment transaction; and
in response to the identified check data being a
match to the opt-out list, indicate that the check should be
processed by a financial institution without electronic
payment conversion.

Claims 20-21 and 24 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Phillips (US Pub. 2005/0091132 A1, pub. Apr. 28, 2005)
in view of Lortscher (US Pub. 2002/0111816 A1, pub. Aug. 15, 2002);
claims 22 and 23 stand rejected under 35 U.S.C. § 103(a) as unpatentable
over Phillips in view of Lortscher, Hoyos (US Pub. 2002/0037097 A1, pub.
Mar. 28, 2002), and Official Notice (as evidenced by Acharya (US Pub.

1 Claims 1-19 are withdrawn (Reply Br. 1).
Appeal 2010-004332
Application 11/211,012

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2004/0236647 A1, pub. Nov. 25, 2004) and Bliakhman (US Pub.
2004/0267632 A1, pub. Dec. 30, 2004)); claim 25 stands rejected under 35
U.S.C. § 103(a) as unpatentable over Phillips in view of Lortscher and
Sellen (US Pub. 2004/0236692 A1, pub. Nov. 25, 2004); and claims 26 and
27 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Phillips in
view of Lortscher and Official Notice (as evidenced by Phillips).
We AFFIRM.

ISSUE
Did the Examiner err in asserting that modifying the electronic check
processing opt-out procedure of Phillips to include an opt-out list, as
disclosed in Lortscher, renders obvious the subject matter of independent
claim 20?

FINDINGS OF FACT
We adopt the Examiner’s findings of fact, as set forth on pages 11-16
of the Examiner’s Answer.

ANALYSIS
We are not persuaded the Examiner erred in asserting that modifying
the electronic check processing opt-out procedure of Phillips to include an
opt-out list, as disclosed in Lortscher, renders obvious the subject matter of
independent claim 20 (App. Br. 4-9). We have considered Appellant’s
arguments on pages 4-9 of the Appeal Brief, and in response, adopt the
Examiner’s reasoning, as set forth on pages 11-16 of the Examiner’s
Answer. Specifically, paragraphs [0220]-[0221] of Phillips disclose
Appeal 2010-004332
Application 11/211,012

4
scanning checks and then distinguishing personal checks from non-personal
checks so as to determine which clearing house to use. Personal checks are
electronically processed by the automated clearing house (ACH), while non-
personal checks are processed non-electronically by the federal clearing
house (FCH). The exclusion of non-personal checks from the automated
clearing house (ACH) is the application of an opt-out list, i.e., all non-
personal checks are on the opt-out list. Lortscher is cited for the aspect that
the opt-out list of Phillips may include individual payors, corresponding to
the recited consumer records, as opposed to just non-personal checks
(Exam’r’s Ans. 4).
Appellant asserts that dependent claims 21-27 are patentable because
the additionally cited references do not remedy the deficiencies of the
rejection of independent claim 20. As the rejection of independent claim 20
is not deficient, however, we sustain the rejections of dependent claims 21-
27.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. §
1.136(a)(1)(iv).

AFFIRMED

Appeal 2010-004332
Application 11/211,012

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