in Re: Steve Morsa v. Hospira, Inc., 946 F.3d 1333, 1340 Fed. Cir. 2020

NOTE: This disposition is nonprecedential.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 ex-
aminer’s findings that all pending claims (“the Proposed
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IN RE: MORSA
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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 applica-
tion “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 adver-
tiser’s listing in a match result list generated using adver-
tiser-selected criteria.” S.A. 63. This advertising
technique targets interested consumers and entities based
on “demographic, geographic, [and] psychographic fac-
tors[.] ” 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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IN RE: MORSA
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Proposed independent claim 2 of the ’192 application is
representative
3
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 in-
formation;
receiving at the computer system over the
network from the user the user infor-
mation;

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 (stat-
ing 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] de-
pendent claim . . . stands or falls together with [the] inde-
pendent 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 inde-
pendent 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 inde-
pendent claim 2, see id. at 33, 37, 49–50 (stating that “the
dependent claims add further significant eligibility con-
firming 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 in-
formation;
receiving at the computer system over the
network from a first advertiser an associa-
tion between (i) one or more first criteria
comprising demographic and/or psycho-
graphic 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 asso-
ciation between (i) one or more second cri-
teria 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 sec-
ond 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 Detec-
tion, 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 conclu-
sions may reasonably be drawn from the evidence in rec-
ord, 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 cita-
tion omitted).
“We review issues unique to patent law, including pa-
tent 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 quo-
tation marks and citation omitted). “Whoever invents or
discovers any new and useful process, machine, manufac-
ture, or composition of matter, or any new and useful im-
provement 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, how-
ever, has long interpreted § 101 and its statutory predeces-
sors to contain an implicit exception: ‘laws of nature,
natural phenomena, and abstract ideas’ are not patenta-
ble.” 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 un-
der § 101. See 573 U.S. at 2 15–17. 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 ab-
stract 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 Col-
laborative 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 “di-
rected to the concepts of targeting advertisements for a
user, and using a bidding system to determine how the ad-
vertisements will be displayed[,]” which are both directed
to the “fundamental economic practices long prevalent in
our system of commerce[,]” and that, therefore, independ-
ent 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 “eligi-
bility [is] confirmed[.]” Appellant’s Br. 44 (emphasis omit-
ted) (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 activ-
ity. For example, independent claim 2 recites a “process”
that “transmit[s]” a “request for demographic and/or psy-
chographic 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) in-
formation 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 In-
ternet 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 ‘fundamen-
tal . . . practice long prevalent in our system’” (quoting Al-
ice, 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 sub-
ject 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 ab-
stract 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 ab-
stract nature of the claim into patent eligible subject mat-
ter[.]” Morsa, 2018 WL 6573274, at *4. The PTAB
explained that the specification “describes using generic
computer components such as network PC’s, minicomput-
ers, mainframe computers, cell phones, servers, match, en-
gines, 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 con-
cepts.
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 limita-
tions—when viewed individually and as an ordered combi-
nation—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 pa-
tentable subject matter. When claims, such as independ-
ent claim 2, are “directed to an abstract idea” and “merely
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IN RE: MORSA
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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 tech-
nical field of advertising over the Internet/computer net-
works[,] ” 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 in-
vention[,]” 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 con-
tent 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 newspa-
per could send the user a location-specific advertisement
insert does not confer patent eligibility[.]”). Here, the claim
language recites targeted advertising and bidding for dis-
playing advertisements implemented using generic com-
puter 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 ap-
plication or a specific limitation beyond the judicial excep-
tion 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 pro-
cess, such as “saving by the computer system the user in-
formation” 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 (Independ-
ent Claim 2). As such, when viewing the limitations of in-
dependent 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 di-
rected to a technological improvement, such as “improving
an existing technological process in the technical field of
advertising over the Internet/computer networks[,] ” Appel-
lant’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 concern-
ing 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 ab-
stract because they were not rejected for anticipation or ob-
viousness during prosecution and “for th[at] reason alone
[they are] eligible.” Appellant’s Br. 51. Novelty of an in-
vention, however, “ does not avoid the problem of abstract-
ness.” 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 rel-
evance in determining whether the subject matter of a
claim falls within the § 101 categories of possibly patenta-
ble 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)). There-
fore, 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.
C
ONCLUSION
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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