NOTE: This disposition is nonprecedential. 

United States Court of Appeals

for the Federal Circuit

______________________ 

IN RE: STEVE MORSA,

Appellant

______________________ 

2019-1757

______________________ 

Appeal from the United States Patent and Trademark

Office, Patent Trial and Appeal Board in No. 13/694,192.

______________________ 

Decided: April 10, 2020

______________________ 

STEVE MORSA, Thousand Oaks, CA, pro se.

COKE MORGAN STEWART, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, for 

appellee Andrei Iancu. Also represented by KAKOLI

CAPRIHAN, THOMAS W. KRAUSE, AMY J. NELSON, FARHEENA

YASMEEN RASHEED. 

______________________ 

Before NEWMAN, DYK, and WALLACH, Circuit Judges. 

PER CURIAM. 

Appellant Steve Morsa appeals the decision of the U.S. 

Patent and Trademark Office’s (“USPTO”) Patent Trial 

and Appeal Board (“PTAB”), which affirmed the patent examiner’s findings that all pending claims (“the Proposed 

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2 IN RE: MORSA

Claims”) of Mr. Morsa’s U.S. Patent Application 

No. 13/694,192 (“the ’192 application”) (S.A. 54–128)1 were 

unpatentable subject matter under 35 U.S.C. § 101.2 See 

Ex Parte Morsa, No. 2018-004483, 2018 WL 6573274, at *4 

(P.T.A.B. Nov. 20, 2018) (Decision on Appeal) [S.A. 1–8]; 

see also S.A. 11–20 (Decision on Request for Rehearing). 

Mr. Morsa appeals. We have jurisdiction pursuant to 

28 U.S.C. § 1295(a)(4)(A). We affirm. 

BACKGROUND

Entitled “Match Engine Marketing,” the ’192 application “relates generally to the field of advertising, and in 

particular to the field of matching advertisers with entities 

via computer networks.” S.A. 54, 55. The ’192 application 

explains that embodiments of the invention may provide “a 

new system of advertising where advertisers target the 

most interested consumers and entities by participating in 

a free market which attaches a monetary cost for an advertiser’s listing in a match result list generated using advertiser-selected criteria.” S.A. 63. This advertising 

technique targets interested consumers and entities based 

on “demographic, geographic, [and] psychographic factors[.]” S.A. 63. This advertising technique also provides 

“promoters a match engine that permits such promoters to 

influence a higher or lower placement in a match result list 

via a continuous, competitive online bidding process.” 

S.A. 63. 

1 “S.A.” refers to the supplemental appendix filed by 

the Appellee, the Director of the USPTO. 

2 Congress did not amend § 101 when it passed the 

Leahy-Smith America Invents Act. See generally Pub. L. 

No. 112-29, 125 Stat. 284 (2011).

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Proposed independent claim 2 of the ’192 application is 

representative3 and recites: 

A technical field improving technological process 

comprising: 

transmitting by a computer system over a 

network for display to a user a request for 

demographic and/or psychographic user information; 

receiving at the computer system over the 

network from the user the user information; 

3 The PTAB determined that independent claim 2 

was representative of the claims of the ’192 application. 

Morsa, 2018 WL 6573274, at *1; see Appellee’s Br. 3 (stating that independent claim 2 is representative of all claims 

of the ’192 application). Where a party “does not raise any 

arguments with respect to any other claim limitation, nor 

does it separately argue [the] dependent claim,” “[the] dependent claim . . . stands or falls together with [the] independent claim.” Genentech, Inc. v. Hospira, Inc., 946 

F.3d 1333, 1340 (Fed. Cir. 2020). On appeal, while Mr. 

Morsa disagrees with the PTAB’s decision to treat independent claim 2 as representative, see Appellant’s Br. 20–

21 (arguing that “each and all of the [Proposed] 

[C]laims . . . are patentably distinct from each other” and 

thus, “[t]here are no representative claims” (emphasis 

omitted)), he only raises arguments pertaining to independent claim 2, see id. at 33, 37, 49–50 (stating that “the 

dependent claims add further significant eligibility confirming features,” without discussing any dependent 

claims). Because Mr. Morsa does not separately argue any 

other claim, and because the PTAB treated independent 

claim 2 as representative, we will treat independent 

claim 2 as representative. 

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saving by the computer system the user information; 

receiving at the computer system over the 

network from a first advertiser an association between (i) one or more first criteria 

comprising demographic and/or psychographic criteria and a first ad and (ii) a first 

bid, the bid being the highest amount the 

advertiser is willing to, but may not have 

to, pay, and the first ad;

receiving at the computer system over the 

network from a second advertiser an association between (i) one or more second criteria comprising demographic and/or 

psychographic criteria and a second ad and 

(ii) a second bid, the bid being the highest 

amount the advertiser is willing, but may 

not have, to pay, and the second ad;

determining by the computer system that a 

first match exists between the first criteria 

and the user information;

determining by the computer system that a 

second match exists between the second 

criteria and the user information;

in the event of both a first match and a second match, determining by the computer 

system placement of at least one of the first 

and second ads based on one or more ad 

placement factors comprising the first and 

second bids;

transmitting by the computer system at 

least one of the first and second ads over 

the network to the user.

S.A. 25–26. 

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DISCUSSION

I. Standard of Review and Legal Standard

“We review the PTAB’s factual findings for substantial 

evidence and its legal conclusions de novo.” Redline Detection, LLC v. Star Envirotech, Inc., 811 F.3d 435, 449 (Fed. 

Cir. 2015) (citation omitted). “Substantial evidence is 

something less than the weight of the evidence but more 

than a mere scintilla of evidence[,]” meaning that “[i]t is 

such relevant evidence as a reasonable mind might accept 

as adequate to support a conclusion.” In re NuVasive, Inc., 

842 F.3d 1376, 1379–80 (Fed. Cir. 2016) (internal quotation 

marks and citations omitted). “If two inconsistent conclusions may reasonably be drawn from the evidence in record, the PTAB’s decision to favor one conclusion over the 

other is the epitome of a decision that must be sustained 

upon review for substantial evidence.” Elbit Sys. of Am., 

LLC v. Thales Visionix, Inc., 881 F.3d 1354, 1356 (Fed. 

Cir. 2018) (internal quotation marks, alterations, and citation omitted). 

“We review issues unique to patent law, including patent eligibility under . . . § 101, consistent with our circuit’s 

precedent.” Smart Sys. Innovations, LLC v. Chi. Transit 

Auth., 873 F.3d 1364, 1367 (Fed. Cir. 2017) (internal quotation marks and citation omitted). “Whoever invents or 

discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to 

the conditions and requirements of” Title 35 of the United 

States Code. 35 U.S.C. § 101. “The Supreme Court, however, has long interpreted § 101 and its statutory predecessors to contain an implicit exception: ‘laws of nature, 

natural phenomena, and abstract ideas’ are not patentable.” Content Extraction & Transmission LLC v. Wells 

Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1346 (Fed. 

Cir. 2014) (quoting Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 

573 U.S. 208, 216 (2014)). 

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The Supreme Court’s decision in Alice provides the 

framework through which we assess patent eligibility under § 101. See 573 U.S. at 215–17. A patent claim is patent 

ineligible when “ (1) it is ‘directed to’ a patent-ineligible 

concept, i.e., a law of nature, natural phenomenon, or abstract idea, and (2), if so, the particular elements of the 

claim, considered ‘both individually and “as an ordered 

combination,”’ do not add enough to ‘“transform the nature 

of the claim’ into a patent-eligible application.’” Elec. 

Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353 (Fed. 

Cir. 2016) (quoting Alice, 573 U.S. at 217) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 

77–80 (2012)). 

II. The Proposed Claims Are Directed to an Abstract Idea 

Under Alice Step One

The PTAB determined that independent claim 2 is “directed to the concepts of targeting advertisements for a 

user, and using a bidding system to determine how the advertisements will be displayed[,]” which are both directed 

to the “fundamental economic practices long prevalent in 

our system of commerce[,]” and that, therefore, independent claim 2 “is directed to an abstract idea[.]” Morsa, 2018 

WL 6573274, at *2. Mr. Morsa argues that “advertising is 

real, tangible, and concrete” and, therefore, patent “eligibility [is] confirmed[.]” Appellant’s Br. 44 (emphasis omitted) (capitalization normalized). Additionally, Mr. Morsa 

asserts that the PTAB erred because it identified more 

than one abstract idea and it is only supposed to identify 

“one and only one single alleged abstract idea.” Id. at 26. 

We disagree with Mr. Morsa.4 

4 Mr. Morsa asserts that because “[t]he Supreme 

Court and the Federal Circuit both use preemption as the 

mechanism to evaluate whether a claim is eligible or not[,]” 

his claims are not directed to an abstract idea because they 

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Independent claim 2 is directed to the abstract idea and

fundamental economic practice of organizing human activity. For example, independent claim 2 recites a “process” 

that “transmit[s]” a “request for demographic and/or psychographic user information” to the user and then “sav[es]” 

the “user information” on the system to match the user to 

a specific advertiser. S.A. 25. We have explained that 

claims related to “customizing information based on (1) information known about the user and (2) [specific] data” are 

directed to abstract ideas. Intellectual Ventures I LLC v. 

Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 

2015); see Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 

778 F. App’x 882, 888 (Fed. Cir. 2019) (similar) (citing Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 

1346 (Fed. Cir. 2015)); see also Intellectual Ventures, 792 

F.3d at 1370 (“An advertisement taking into account the 

time of day and tailoring the information presented to the 

user based on that information is another ‘fundamental . . . practice long prevalent in our system’” (quoting Alice, 573 U.S. at 219)). Here, the claim recites both targeted 

advertising and bidding to display the advertising, which 

are both abstract ideas relating to customizing information 

based on the user and matching them to the advertiser. See 

RecongiCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327 

(Fed. Cir. 2017) (“Adding one abstract idea . . . to another 

abstract idea . . . does not render the claim non-abstract.”). 

Because independent claim 2 of the ’192 application relates 

to “the field of advertising” and “matching advertisers with 

do not preempt all advertising. Appellant’s Br. 43. During 

the PTAB proceedings, the PTAB addressed this argument 

and found it unpersuasive. See Morsa, 2018 WL 6573274, 

at *3. “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not 

demonstrate patent eligibility.” Ariosa Diagnostics, Inc. v. 

Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). 

Therefore, Mr. Morsa’s argument is without merit.

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entities via computer networks,” it is directed to an abstract idea. 

III. The Proposed Claims Do Not Recite an “Inventive 

Concept” Under Alice Step Two

The PTAB found that there was no “inventive concept” 

because independent claim 2 “fail[s] to transform the abstract nature of the claim into patent eligible subject matter[.]” Morsa, 2018 WL 6573274, at *4. The PTAB 

explained that the specification “describes using generic 

computer components such as network PC’s, minicomputers, mainframe computers, cell phones, servers, match, engines, local area networks[,] and wide area networks in a 

conventional manner for the known functions.” Id. at *3. 

Mr. Morsa argues that “[i]t is impossible for a claim that is 

novel and non-obvious under 35 U.S.C. [§] 102 and 35 

U.S.C. [§] 103 to lack an inventive concept under [s]tep 

[two] of” Alice. Appellant’s Br. 51 (emphasis omitted). We 

disagree with this generalization, for abstractness, novelty, 

and non-obviousness are separate legal and factual concepts. 

Because independent claim 2 is directed to an abstract 

idea, the second step of the § 101 analysis requires us to 

determine whether the ’192 application’s claim limitations—when viewed individually and as an ordered combination—contain “an inventive concept sufficient to 

transform the claimed abstract idea into a patent-eligible 

application.” Alice, 573 U.S. at 217 (internal quotation 

marks and citation omitted). A claim contains an inventive 

concept if it “include[s] additional features” that are more 

than “well-understood, routine, conventional activities[.]” 

Id. at 221, 225 (internal quotation marks, alterations, and 

citations omitted).

The limitations of independent claim 2 do not recite an 

inventive concept to transform their abstract idea into patentable subject matter. When claims, such as independent claim 2, are “directed to an abstract idea” and “merely 

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requir[e] generic computer implementation[,]” they “do[] 

not move into [§] 101 eligibility territory[.]” buySAFE, 

Inc. v. Google, Inc., 765 F.3d 1350, 1354 (Fed. Cir. 2014) 

(internal quotation marks and citation omitted). Although 

Mr. Morsa alleges that the Proposed Claims are “directed 

to improving an existing technological process in the technical field of advertising over the Internet/computer networks[,]” Appellant’s Br. 51 (emphasis omitted), we have 

recognized that similar claims directed to advertising do 

not “transform[] the abstract idea into a patent-eligible invention[,]” BASCOM Glob. Internet Servs., Inc. v. AT&T 

Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016); see id.

at 1348 (explaining that claims “directed to filtering content on the Internet” are abstract); see also Intellectual 

Ventures, 792 F.3d at 1370 (“[T]he fact that the web site 

returns the pre-designed ad more quickly than a newspaper could send the user a location-specific advertisement 

insert does not confer patent eligibility[.]”). Here, the claim 

language recites targeted advertising and bidding for displaying advertisements implemented using generic computer components such as “network PC’s,” “cell phones,” 

and “local area networks[.]” Morsa, 2018 WL 6573274, 

at *3; see In re Smith, 815 F.3d 816, 819 (Fed. Cir. 2016)

(explaining that when a claim does not add a practical application or a specific limitation beyond the judicial exception that is not “conventional” in the field, the claims are 

ineligible for patentability). Additionally, the functions 

performed by the computer system at each step of the process, such as “saving by the computer system the user information” and “receiving at the computer system over the 

network,” does nothing more than instruct the user on how 

to implement the abstract idea using generic computer 

components. S.A. 25. See generally S.A. 25–26 (Independent Claim 2). As such, when viewing the limitations of independent claim 2 individually and as an ordered 

combination, they do not transform the abstract idea into 

an inventive concept.

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Moreover, Mr. Morsa must do more than simply restate 

the claim limitations and assert that the claims are directed to a technological improvement, such as “improving 

an existing technological process in the technical field of 

advertising over the Internet/computer networks[,]” Appellant’s Br. 51 (emphasis omitted), without an explanation of 

the nature of that improvement, see e.g., S.A. 25–26

(providing independent claim 2’s determining steps). 

Mr. Morsa does not provide technological details concerning how the advertisement features are implemented to 

transform an abstract idea into an inventive concept. 

Here, Mr. Morsa simply states that his claims are not abstract because they were not rejected for anticipation or obviousness during prosecution and “for th[at] reason alone 

[they are] eligible.” Appellant’s Br. 51. Novelty of an invention, however, “does not avoid the problem of abstractness.” Affinity Labs of Texas, LLC v. DirecTV, LLC, 838 

F.3d 1253, 1263 (Fed. Cir. 2016); see Diamond v. Diehr, 450 

U.S. 175, 188–89 (1981) (“The ‘novelty’ of any element or 

steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a 

claim falls within the § 101 categories of possibly patentable subject matter.”); see also Synopsys, Inc. v. Mentor 

Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) 

(providing that, even if we accept that a claim recites a 

method different from prior art, “a claim for a new abstract 

idea is still an abstract idea” (emphasis omitted)). Therefore, the claims of the ’192 application are patent-ineligible 

at Alice step two. Accordingly, the PTAB did not err in 

holding the Proposed Claims patent-ineligible under § 101. 

CONCLUSION

We have considered Mr. Morsa’s remaining arguments 

and find them unpersuasive. Accordingly, the Decision on 

Appeal of the U.S. Patent and Trademark Office is

AFFIRMED 

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