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Ex Parte Martin A. Urban

Representative Claim

  1. A method of advertising comprising the steps of:
    receiving compensation from a party; and
    placing an advertisement of the party on postage in exchange for the compensation received to advertise for the party.

Posture:

Appeal from USPTO claim rejections.

Abstract Idea: No

“The independent claims are admittedly broad, and, if issued, could have broad exclusionary effect. But the mere fact that the claims are broad does not mean that the claims are directed to an abstract idea.”

“The Examiner finds here that the claims are directed to the abstract idea of placing advertising on postage. The Examiner concludes that “use of the [advertising] concept, as expressed in the method, would effectively grant a monopoly over the concept” because “[b]oth known and unknown uses of the concept are covered, and can be performed through any existing or future-devised machinery, or even without any apparatus” (Ans. 19-20). But the Examiner does not explain how, and we fail to see how, applying an advertisement, i.e., a physical implementation, to a postage stamp, i.e., a physical object, constitutes an abstract idea.”

Additional Information:

“We agree with the Examiner that independent claims 1,9, and 17 fail to satisfy the machine-or-transformation test. But our analysis cannot end there. In holding that the machine-or-transformation test “is not the sole test for deciding whether an invention is a patent-eligible ‘process”’ in Bilski v. Kappos, 130 S. Ct. 3218, 3227 (2010), the Supreme Court made clear that a claim’s failure to satisfy the machine-or-transformation test is not dispositive of the § 101 inquiry.”