DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on April 8, 2026 has been entered.
In light of Applicant's submission filed April 8, 2026, the Examiner has maintained and
updated the 35 USC § 101 rejection.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
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 this title.
The claims herein are directed to a method and system which would be classified under one of the listed statutory classifications (i.e., 2019 Revised Patent Subject Matter Eligibility Guidance (hereinafter “PEG”) “PEG” Step 1=Yes). Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) recite(s) the following limitations that are considered to be abstract ideas:Claims 1 and 11
providing a user interface…for at least one staff member to login to the rewards program;
upon login by the at least one staff member to the digital jukebox device, keeping the at least one staff member logged in to the digital jukebox device for at least a predetermined duration configured in accordance with a configured at least one staff member-specific feature for a current location out-of-home venue of the digital jukebox device, modifying an attract mode loop of the digital jukebox device to display an avatar associated with the at least one staff member while logged in, and determining, by a processor of the digital jukebox device or the remote server connected to the digital jukebox device, a number of respective users accessing the digital jukebox device for paid playback of songs while the at least one staff member is logged in to the digital jukebox device;
upon each occurrence of a configured condition under which staff members are to be provided with units of value in connection with the rewards program while the at least one staff member is logged in, as determined, provide a configured number of the units of value associated with the relevant condition to the at least one staff member, wherein said each occurrence is detected by the processor or the remote server, and wherein an accumulated said number of units of value is changed in accordance with the determined number of respective users, in accordance with the determined number of respective users
The limitations of independent claim 1 as detailed above, as drafted, falls within the “Certain Method of Organizing Human Activity” grouping of abstract ideas namely “commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations; managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions))” because the claims disclose a loyalty program by providing points to employees based on conditions. Accordingly, the claims recite an abstract idea This judicial exception is not integrated into a practical application.
In particular the claims recite the additional elements of:
A digital jukebox operated at an out of home venue
A remote server connected to the jukebox
Providing access to the login interface through a concealed physical button or wireless remove signal
Modifying an attract mode loop to display an avatar associated with the logged in staf member
Processor
Digital memory
The aforementioned additional generic computing elements perform the steps of the claims at a high level of generality (i.e. As a generic medium performing generic computer function of configuring, providing, login, determining) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element amounts to no more than mere instruction to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
Thus, taken individually and in combination, the additional elements do not amount to
significantly more than the above-identified judicial exception (the abstract idea).
Thus, based on the detailed analysis above, claim 1-20 is not patent eligible.
Potentially Allowable Subject Matter
Claims 1-20 would be allowable if the applicant were to be able to overcome the 35 U.S.C 101 rejection above.
The following is a statement of reasons for the indication of allowable subject matter: In regards to claims 1-20, the closest prior art found by the examiner is the prior art of Hicks et al. (US 2003/0200142) which discloses, “reward points may be earned and the number of points which may be earned for an employer whose business includes the sale of goods or services. As shown in the table of FIG. 2, various point-reward levels are defined for a plurality of behaviors, such as attendance goals, meeting sales goals, meeting quality assurance goals, completing training, and excelling in sales performance, that the employer wishes to incent. Point reward levels range from 50 points per thousand dollars of sales to 25,000 points for the highest sales performer per year.” However, the Examiner was unable to find prior art for the limitations that states, “upon login by the at least one staff member uses the digital device, keeping the at least one staff member logged in to the digital jukebox device for at least a predetermined duration” and “determining, by a processor of the digital jukebox device or the remote server connected device, a number of respective users accessing the digital jukebox device for paid playback of songs while the at least one staff member is logged in to the digital jukebox device.” The system appears to be an advancement over typical employee loyalty program systems because it specifically rewards staff members in a jukebox/media playback environment based on customer selections while the employee is logged in to said jukebox/media device.” Thus claims 1-20 would be allowable over the prior art.
Response to Arguments
Applicant's arguments filed April 08, 2026 have been fully considered but they are not persuasive.
The applicant argues in regards to the 101 rejection, by stating “The amended claims no longer recite generic computer components performing standard data gathering. Instead, the claims are tied to a particular machine that is a multi-user, out-of- home digital jukebox device, and moreover, the claims dictate a highly specific, technical manner of operating that machine. Standard, off-the-shelf computers do not utilize "attract mode loops," nor do they require "concealed physical buttons" to securely separate an employee's state from a public patron's state. By requiring a specific physical hardware trigger (the concealed button or wireless remote) to access the authentication interface, and by physically altering the visual operating state of the public terminal (modifying the attract mode loop to display an avatar), the claims provide an unconventional technical solution to the problem of securely managing simultaneous, disparate user states (staff vs. patron) on a single public kiosk. These hardware and machine-state limitations improve the functioning of the digital jukebox itself, seamlessly integrating the tracking logic into a practical application. Therefore, the claims are eligible at Step 2A, Prong 2.” The Examiner respectfully disagrees although the claims recite a digital jukebox device, merely limiting the abstract idea to a particular technological environment does not integrate the judicial into a practical application. see MPEP 2106.05(b) and 2106.05(h) The claim uses the digital jukebox as a tool to carry out the underlying abstract idea of a staff rewards program by tracking employee participation and awarding value based on user’s playback of songs. The recited digital jukebox is not itself improved. Applicant argues that a concealed physical button and wireless remote triggers provide an unconventional technical solution. The Examiner respectfully disagrees the applicant has not provided a citation to the applicant’s specification that discloses a identifies a technical problem and explains the details of an unconventional technical solution. As stated in the previous office action, See MPEP 2106.05(a) - If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea. McRO, 837 F.3d at 1313-14, 120 USPQ2d at 1100-01. In contrast, the court in Affinity Labs of Tex. v. DirecTV, LLC relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible. 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016). Thus, that argument is moot. Furthermore, the asserted unconventional technical solution merely specifies how access to the staff login interface.is initiated. The claim does not recite an improvement to the functioning of the computer, or other technology or technical field. The concealed button and remote merely perform their ordinary functions of receiving user input and initiating access. The input mechanism being hidden from customers is purely a business or design choice for separating employee access from the public and not an improvement to the functioning of the computer, or other technology or technical field.
The applicant argues in regards to the added feature of an attract loop, the Examiner respectfully disagrees the limitation changes only the information presented to the user. Merely presenting information to a user/customer does not convey an improvement to the functioning of the computer, or other technology or technical field. The applicant further argues the unconventional solution of securely managing simultaneous, disparate user states (staff vs. patron) on a single public kiosk. As stated above the applicant has not provided any citation to the specification, thus this argument is moot. Furthermore the asserted improvement merely seems to be a business/administrative problem and not a technical problem. The applicant further argues that previously cited references did not teach or suggest the applicant’s claims, the Examiner respectfully disagrees it appears the applicant is attempting to argue novelty in regards to the 101 rejection. However, novelty does not overcome a 35 U.S.C 101 rejection. See MPEP 2106.04 that states, The Supreme Court’s decisions make it clear that judicial exceptions need not be old or long-prevalent, and that even newly discovered or novel judicial exceptions are still exceptions. For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel or newly discovered, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were "‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection." Myriad, 569 U.S. 576, 589, 106 USPQ2d at 1976, 1978 (noting that Myriad discovered the BRCA1 and BRCA1 genes and quoting Mayo, 566 U.S. 71, 101 USPQ2d at 1965); Flook, 437 U.S. at 591-92, 198 USPQ2d at 198 ("the novelty of the mathematical algorithm is not a determining factor at all"); Mayo, 566 U.S. 73-74, 78, 101 USPQ2d 1966, 1968 (noting that the claims embody the researcher's discoveries of laws of nature). The Supreme Court’s cited rationale for considering even "just discovered" judicial exceptions as exceptions stems from the concern that "without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’" Myriad, 569 U.S. at 589, 106 USPQ2d at 1978-79 (quoting Mayo, 566 U.S. at 86, 101 USPQ2d at 1971). See also Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 ("Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the 101 inquiry."). The Federal Circuit has also applied this principle, for example, when holding a concept of using advertising as an exchange or currency to be an abstract idea, despite the patentee’s arguments that the concept was "new". Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a new abstract idea is still an abstract idea") (emphasis in original)
The Step 2B inquiry ask whether the additional elements integrate the judicial exception into a practical application. The applicant has not identified any additional elements and as stated in the 101 rejection above the additional elements are not sufficient to amount to significantly more than the judicial exception
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
The applicant’s claims do not appear to have limitations that are indicative of integration into a practical application. Thus the 35 USC 101 rejection is maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARNELL A POUNCIL whose telephone number is (571)270-3509. The examiner can normally be reached Monday - Friday 10:00 - 6:00.
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/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
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