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 .
Terminal Disclaimer
The terminal disclaimer filed on July 15, 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of any patent granted on Application Number 18/628,209 has been reviewed and is accepted. The terminal disclaimer has been recorded.
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
upon login by the at least one staff member, keeping the at least one staff member logged for at least a predetermined duration configured in accordance a configured at least one staff member specific feature for a current location out of home venue, and determining, a number of respective users for paid playback of songs while the at least one staff member is logged in;
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 recites the additional elements of using a digital jukebox device, user interface, processor, server, 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 does 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 of a using a digital jukebox device, server, user interface, processor, digital memory 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 July 15, 2025 have been fully considered but they are not persuasive.
The applicant argues in regards to the 101 rejection that the limitations of the claims are significantly more than the abstract idea. The Examiner respectfully disagrees first NOTE: MPEP 2106.05(a) states. “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field.” Thus based on the 101 rejection in view of the applicant’s amendments, the additional elements of jukebox device, user interface, display, processor, and server when considered individually or/and in combination are not significantly more than the judicial exception. The applicant further argues the 101 rejection that the claims are similar in concept to the Core Wireless, the Examiner respectfully disagrees the Core Wireless court decision was deemed an improvement to the functioning of the computer because the specification disclosed the necessary details that the invention improved the user interface by reducing the number of navigation steps. The applicant argues novelty, however novelty(102/103 comparisons) is not considered in a 101 analysis. “technical improvements realized by the claim over the prior art”, is part of determining Step 2A, Prong 2, whether the claim integrates the abstract idea into a practical application. Therefore a technical improvement over the prior art is an improvement in how the technology itself works, not whether its novel under 103/103. Thus, it does not appear that the interface improves the functioning of the computer, technical field or other technology. The applicant has cited paragraph [0102] of the applicant’s specification as evidence, however the Examiner respectfully disagrees, the cited paragraph does not “explain the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art.” The cited paragraph merely describes the results (e.g. conclusory). MPEP 2106.05(a) states, “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). “ The applicant argues the 101 rejection in view of Enfish and Finjan, that the claims are focused on an improvement to computer functionality itself, not an economic or other tasks for which a computer is used in its ordinary capacity. That the claims enable the digital jukeboxes to do things it could no do before, the Examiner respectfully disagrees in Enfish the improvement was a specific self-referential database, which improved computer functionality itself. (i.e., improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility. Unlike Enfish the applicant’s claims merely use generic digital jukebox hardware to present(e.g. provide an interface…, access (e.g. upon login provide access…), provide rules to perform a calculation (e.g., conditions to determine points for staff members), a processor or remote server (e.g. to determine the numbers of users and number of the units of value). Thus, it is explicitly clear that the aforementioned features do not improve the functioning of the computer, technical field of other technology. In regards to the court case of Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 125 USPQ2d 1282 (Fed. Cir. 2018) (claims to virus scanning were found to be an improvement in computer technology and not directed to an abstract idea); SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1303 (Fed. Cir. 2019) (claims to detecting suspicious activity by using network monitors and analyzing network packets were found to be an improvement in computer network technology and not directed to an abstract idea) (MPEP 2106.04(d)(1)) Unlike Finjan the applicant’s jukebox capability to do the aforementioned features stated above, does not create a new file type, data structure, or security process improving the computer itself.
Therefore even if the interface is new layout, the courts have held the claims to be abstract if the interface does not improve the functioning of the computer, technical field or other technology. Example court cases such as - a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016); For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology. The applicant further argues the 101 rejection that invention improves performance and utilization, the Examiner respectfully disagrees the cited paragraph of [0102], does not teach or suggest said improvement to performance and utilization.
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
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
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