Case: 19-1757   Document: 37    Page: 1    Filed: 04/10/2020




        NOTE: This disposition is nonprecedential.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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 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 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                                               3



     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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 4                                                 IN RE: MORSA




        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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 IN RE: MORSA                                                   5



                          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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 6                                               IN RE: MORSA




     The Supreme Court’s decision in Alice provides the
 framework through which we assess patent eligibility un-
 der § 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 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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 IN RE: MORSA                                                7



      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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 8                                               IN RE: MORSA




 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                                                 9



 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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 10                                                IN RE: MORSA




     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.
                          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
