Steven Yu et al.Download PDFPatent Trials and Appeals BoardOct 22, 20212021003115 (P.T.A.B. Oct. 22, 2021) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 16/109,592 08/22/2018 Steven Sounyoung Yu ARV-07 7697 7590 10/22/2021 Steven Yu 9810 Cresence Way Fairfax, VA 22032 EXAMINER MCPARTLIN, SARAH BURNHAM ART UNIT PAPER NUMBER 3636 MAIL DATE DELIVERY MODE 10/22/2021 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte STEVEN SOUNYOUNG YU and SOUNIL YU Appeal 2021-003115 Application 16/109,592 Technology Center 3600 Before JENNIFER D. BAHR, KEVIN F. TURNER, and LISA M. GUIJT, Administrative Patent Judges. GUIJT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM and enter NEW GROUNDS OF REJECTION of claims 1–20 pursuant to our authority under 37 C.F.R. § 41.50(b). 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as inventors, Steven Yu and Sounil Yu. Appeal Br. 3. Appeal 2021-003115 Application 16/109,592 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to an “Autonomous Unmanned Road Vehicle for Making Deliveries.” Spec., Title. Claim 1, reproduced below as the sole independent claim on appeal, is illustrative of the claimed subject matter: 1. A system for delivering retail goods to customers, comprising: a retail facility that has an inventory of retail goods; an autonomous unmanned road vehicle that comprises radio communication equipment, wherein the autonomous vehicle does not have any passenger seats; an operations hub that receives purchase orders of retail goods from the customers and coordinates the use of the autonomous vehicle for delivering the purchase orders to the customers, and wherein the operations hub is in communication with the autonomous vehicle as it drives the autonomous vehicle, at least partly in an autonomous manner, to the customers’ deliver destination via a paved roadways; wherein the operations hub has personnel. THE REJECTIONS The prior art relied upon by the Examiner is: Name Reference Date Murphy US 5,921,036 July 13, 1999 Myllymaki US 9,256,852 B1 Feb. 9, 2016 Karppinen US 2013/0001908 A1 Jan. 3, 2013 Villamar US 2014/0046512 A1 Feb. 13, 2014 The following rejections are before us for review: I. Claim 4 stands rejected under 35 U.S.C. § 112(b) as being indefinite. II. Claims 1–7 and 14–20 stand rejected under 35 U.S.C. Appeal 2021-003115 Application 16/109,592 3 § 103 as unpatentable over Myllymaki and Villamar.2 III. Claims 8 and 9 stand rejected under 35 U.S.C. § 103 as unpatentable over Myllymaki, Villamar, and Karppinen. IV. Claims 10–13 stand rejected under 35 U.S.C. § 103 as unpatentable over Myllymaki, Villamar, and Murphy. OPINION Rejection I Claim 4 (ultimately) depends from independent claim 1 and recites, in relevant part, “wherein the retail facility is an already-established conventional walk-in retail store that has been modified to also operate the delivery service.” Appeal Br. 16 (Claims App.). The Examiner finds that the claim term “already-established” is indefinite for the lack of “a point of reference” and also that the claim term “conventional” is indefinite because the meaning is “subject to a person’s personal opinion or view point.” Advisory Act. 2; see also Final Act. 2; Ans. 4. Appellant argues that the Specification discloses that “an ‘already- established conventional walk-in retail store’ is one that ‘has been modified to also operate the delivery service but continues to operate the already- existing business.’” Appeal Br. 11 (citing Spec. 24:14–21). We find that the claim term “already-established” means that the retail store is existing, and therefore, the claim term “already-established” is not 2 Although claim 7 is not listed in the statement of the rejection (see Final Act. 3), the Examiner provides findings and reasoning for the unpatentability of claim 7 under 35 U.S.C. § 103 as unpatentable over Myllymaki and Villamar (id. at 4 (“With respect to claims 2-7. . .”)). Appeal 2021-003115 Application 16/109,592 4 indefinite. However, we agree with the Examiner that the claim term “conventional” is subjective, depending, for example, on what one considers of traditional design, and therefore, the meaning of “conventional” is unclear. Claim 2 also recites the claim term “conventional”: “wherein the retail facility operates as both a conventional walk-in retail store and also a delivery service.” Appeal Br. 16 (Claims App.). Thus, similar to claim 4, we find that the claim term “conventional” is subjective, and therefore, unclear. The PTO can properly reject a claim as indefinite if the claim is ambiguous, vague, incoherent, opaque, or otherwise unclear. In re Packard, 751 F.3d 1307, 1311 (Fed. Cir. 2014). Claim 19 is also indefinite for the same reasons, as claim 9 depends from, and therefore incorporates all of the limitations of, claim 2. Accordingly, we sustain the Examiner’s rejection of claim 4 under 35 U.S.C. § 112(b) as being indefinite, and we enter a NEW GROUND OF REJECTION of claims 2 and 19 under 35 U.S.C. § 112(b) as being indefinite. We note the holding in In re Steele that the Board erred in affirming an obviousness rejection of indefinite claims because the rejection was based on speculative assumptions as to the meaning of the claims. In re Steele, 305 F.2d 859, 862–63 (CCPA 1962). Here, although we do not ascribe a meaning to the claim term “conventional” in our consideration of the Examiner’s rejections of claims 2, 4, and 19 under 35 U.S.C. § 103 infra, we can reach the merits of the Examiner’s obviousness rejections without speculation, as Appellant’s arguments are directed to aspects of the claims that are not dependent on the meaning of the claim term “conventional.” See Appeal Br. 5–15. We do so to promote efficient prosecution. Appeal 2021-003115 Application 16/109,592 5 Rejection II Independent claim 1 and dependent claims 2–7 and 14–16 Appellant argues claims 1–7 and 14–16 as a group. Appeal Br. 5. We select independent claim 1 as representative, and claims 2–7 and 14–16 stand or fall therewith. See 37 C.F.R. § 41.37(c)(1)(iv). Regarding independent claim 1, the Examiner finds that Myllymaki discloses a system (i.e., delivery platform 100) comprising a retail facility that has an inventory of retail goods (i.e., a pizza shop merchant selling pizzas), as required by claim 1. Final Act. 3 (citing Myllymaki 2:62). The Examiner explains that Myllymaki’s disclosure suggests that pizza delivery constitutes a direct from merchant delivery of goods, wherein the plain meaning of the term “merchant” is a person or company engaged in the business of selling or trading goods. The fact that the goods, for example pizza, are sold or traded categorizes the transaction as a retail transaction give that the term “retail” is the sale of goods to the public. Ans. 3–4. The Examiner also finds that Myllymaki discloses an autonomous unmanned road vehicle (i.e., autonomous road vehicle 110) with passenger seats. Final Act. 3; cf. (claim 1: “wherein the autonomous vehicle does not have any passenger seats”). The Examiner finds that “Myllymaki suggests a variety of vehicle platforms for the autonomous vehicle,” such that “the road vehicle platform selected would be a matter of design choice based upon product being transported and route.” Id. (citing Myllymaki 3:58–62). The Examiner further finds that Myllymaki discloses an operations hub having personnel (i.e., network 730 operated by a deliver system operator) that coordinates the use of the autonomous vehicle for delivering the purchase orders to the customers, as required by claim 1. Final Act. 3 Appeal 2021-003115 Application 16/109,592 6 (citing Myllymaki 2:62, 7:15); see Ans. 4 (“[a] delivery system operator . . . constitutes personnel under the broadest reasonable interpretation of the term”). The Examiner also relies on Myllymaki for disclosing that “the operator and the series of devices [710,720,730] help manage orders and fulfillment of orders.” Advisory Act. 2. The Examiner finds that “receiving a purchase order from a customer is a necessary part of the system to function as a whole, wherein network devices (720), (730) would be unable to coordinate the operation of the autonomous driven delivery platforms without an order.” Ans. 4. The Examiner relies on Villamar for teaching “the use of a small autonomous vehicle without passenger seats for delivery of products along a roadway.” Final Act. 3 (emphasis added). The Examiner reasons that it would have been obvious “to implement the Myllymaki system on the small vehicle platform without passenger seats as taught by Villamar since selection of vehicle platform would appear to be a matter of design choice and the small platform taught by Villamar promotes reduce[d] energy consumption.” Id. at 3–4 (citing Villamar ¶ 37) (emphasis added); see also Ans. 3. First, Appellant argues that “[r]emoving the passenger seats from the passenger cabin of Myllymaki’s truck is a complete overhaul of Myllymaki’s vehicle concept, not a mere design choice.” Appeal Br. 8. In support, Appellant submits that the Examiner’s proposed modification “is not mere tweaking of design features, rearrangement of parts, or optimizing parameters.” Id. We are not persuaded by Appellant’s argument. Although Myllymaki discloses passenger road vehicles, Myllymaki discloses that a human operator is not required: “[a]n autonomous vehicle is a motor vehicle that Appeal 2021-003115 Application 16/109,592 7 may use artificial intelligence, sensors and location/positioning technology to drive itself without the active intervention of a human operator.” Myllymaki 3:35–38. Villamar discloses driverless delivery vehicles without passenger seats. See, e.g., Villamar ¶ 37, Fig. 3. Thus, we are not apprised of error in the Examiner’s proposed modification of Myllymaki to use Villamar’s driverless delivery vehicles without passenger seats in Myllymaki’s autonomous delivery platform to reduce energy consumption, as a matter of design choice between two known autonomous delivery vehicles—one with passenger seats and one without. Stated differently, where “a patent claims a structure already known in the prior art that is altered by the mere substitution of one element for another known in the field, the combination must do more than yield a predictable result.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007). Second, Appellant argues that “Myllymaki does not explicitly disclose any kind of ‘retail facility.’” Appeal Br. 9. Appellant submits that “the Examiner gives no evidence that a pizza restaurant is an inherent disclosure of Myllymaki.” Id. In other words, Appellant contends that “Myll[y]maki does not explicitly disclose that the “pizza delivery” comes from a ‘pizza restaurant.’” Reply Br. 3. We are not persuaded by Appellant’s argument. As relied on by the Examiner, Myllymaki discloses: “While embodiments herein are disclosed in the context of package services, the technology can be used for all types of delivery, such as . . . direct-from-merchant goods (for example pizza delivery).” Myllymaki 2:59–63. We agree with the Examiner that a person of ordinary skill in the art would glean from Myllymaki that a pizza restaurant is provided as an example of a retail facility, wherein the Appeal 2021-003115 Application 16/109,592 8 autonomously driven delivery platform is used to deliver pizzas directly from the pizza restaurant, as a merchant, to a customer. Third, Appellant argues that “there is no disclosure in Myllymaki that [Myllymaki’s network device 730] and the operator constitute an ‘operations hub [that] has personnel.’” Appeal Br. 10. However, a preponderance of the evidence supports the Examiner’s finding that Myllymaki’s operations hub (i.e., network 730) has personnel (i.e., an operator) based on Myllymaki’s disclosure, with reference to Figure 7, that “[a] delivery system operator may operate the network device . . . 730.” Myllymaki 7:15–16. Fourth, Appellant argues that “[t]hese network devices [(i.e., 710 720, and 730)] and their operators are focused on the task of operating the Myllymaki vehicle,” and that “there is no disclosure that they perform the task of ‘receives purchase orders of retail goods from the customers,” as required by claim 1. Appeal Br. 10. In support, Appellant argues that “there is no evidence that [receiving purchase orders] is necessarily performed by the network devices and their operators” and that “it is possible that customer-facing operations (e.g. receiving purchase orders) are performed by a different working group in Myllymaki than those operating the vehicle.” Id. Myllymaki discloses that the operations hub (i.e., network 730) “can be one or more instances of a delivery service server coordinating the operation of one or more autonomously driven delivery platforms . . . by assigning compartments and access information, transmitting access information to addressees, determining routes, receiving status reports, and the like.” Myllymaki 7:16–21. Thus, we agree with Appellant that although Myllymaki’s delivery service server receives, for example, the customer’s destination address, Myllymaki does not expressly disclose that the delivery Appeal 2021-003115 Application 16/109,592 9 service server receives the customer’s pizza order (i.e., a purchase order of retail goods from the customer), which is placed in an assigned compartment of the autonomous vehicle. Notwithstanding, Villamar’s automated delivery method describes “receiving, by a processing device, an order from a buyer,” wherein “[t]he order specifies one or more products to be delivered to the buyer and [the] itinerary information.” Villamar, Abstract. More specifically, Villamar’s Figure 1 depicts processing device 150 receiving order 160, transmitting order 160 to placer robot 130 that places the customer’s purchased item or product 140 into delivery vehicle 140, and also transmitting order 160 to delivery vehicle 200 to enable delivery vehicle 200 to deliver product 140 to delivery destination 190. Thus, Villamar teaches that it is known for a single processing device within an automated delivery system to both receive purchase orders of retail goods from the customers and coordinate the use of the autonomous vehicle for delivering the purchase orders to the customer, as required by claim 1. We reason that substituting Myllymaki’s delivery service server to be a server that both receives the purchase order (i.e., pizza selection) and coordinates delivery via an autonomous vehicle is the mere substitution of one known system architecture (Myllymaki’s network 730 capability) with Villamar’s system capability. In this way, Myllymaki’s delivery service server and personnel may be at the customer-facing operations (i.e., the pizza retailer) to commence order fulfillment, or, alternatively, Myllymaki’s delivery service server and personnel may transmit the pizza order to the pizza retailer, which is more like Villamar’s system, wherein Myllymaki’s pizza retailer corresponds to Villamar’s warehouse. Appeal 2021-003115 Application 16/109,592 10 Thus, we sustain the Examiner’s rejection of independent claim 1 as unpatentable over Myllymaki and Villamar, and claims 2–7 and 14–16; however, because we rely on different findings and reasoning than articulated by the Examiner, we designate our affirmance of claims 1–7 and 14–16 as a NEW GROUND OF REJECTION to provide Appellant with a fair opportunity to respond. Dependent claims 17 to 20 Claims 17 and 19 depend (ultimately) from independent claim 1 and each recite, in relevant part, “wherein the customers are notified when their purchase order is ready for delivery, and when the customers’ delivery request is received, the purchase order is loaded into the autonomous vehicle at the retail facility.”3 Appeal Br. 18 (Claims App.). Claims 18 and 20 depend from 17 and 19, respectively, and each recite, in relevant part, “wherein further, the customers are notified that the autonomous vehicle is on its way or has arrived at the customers’ delivery destination.” Appeal Br. 18 (Claims App.). Claims 17 and 19 both recite “the customers’ delivery request,” however, there is no antecedent basis for a delivery request. The Specification discloses, inter alia, that [i]n one embodiment, the unmanned vehicle can be used for delivering packages (e.g. boxes, parcels, envelopes, shipments, mail items, letters, etc.) that are destined for multiple (two or more delivery destinations. This can be useful in situations 3 To the extent these claims appear to recite method steps, which modify the system for delivery retail goods to customers as set forth in claim 1, we apply the Examiner’s claim interpretation: “These claims have been interpreted as functional language of system claims, wherein the system is configured to notify customers, receive a delivery request from customers and load purchase order into the autonomous vehicle.” Ans. 6. Appeal 2021-003115 Application 16/109,592 11 where the recipient is not present at the delivery destination when the delivery is ready to be made. As such, the recipient can request delivery upon demand. Our invention can be particularly useful in making deliveries to residences (i.e.[,] the delivery destinations are peoples’ homes). For example, the recipient may not be able to receive their package until they return home from work, but can request delivery after they arrive home from work. Spec. 22:20–28. The Examiner finds that Myllymaki discloses these claim limitations. Final Act. 3 (citing Myllymaki 3:17, 7:57–58). In particular, the Examiner finds that Myllymaki discloses “separate from and after the customer’s purchase order, receiving from the customer, a request for delivery of the purchase order.” Ans. 6 (citing Myllymaki 8:23–28). As relied on by the Examiner, Myllymaki discloses: “In some embodiments, the autonomous delivery platform can change its route based on a signal from a mobile communication device of an addressee. In such a ‘follow me’ mode, the addressee can indicate that the package be delivered to the addressee’s present location—for example the recipient’s office.” Myllymaki 8:23–28. Appellant argues that “Myllymaki says that the vehicle is already at or near the delivery address when the two text messages are sent,” and therefore, “[t]he first message is sent ‘shortly before it is to arrive at the delivery address’ and the second when the ‘package is ready for pickup.’” Appeal Br. 15. Appellant submits that claims 17 and 19 require the purchase order to be loaded into the autonomous vehicle only after the customers’ delivery required is received. Id. at 14; see also Reply Br. 4–6. We agree with Appellant that claims 17 and 19 require the system to be configured to receive a customers’ delivery request before the purchased item is loaded onto the autonomous vehicle. However, we interpret a Appeal 2021-003115 Application 16/109,592 12 purchase order as also including a delivery request. For example, the Specification discloses that “[t]he method comprises receiving a purchase order from a customer for delivery to a delivery destination (the purchase order comprising a purchased item)”—in other words, the purchase order contains a customer’s delivery request. Spec. 3:7–9. As is well known, when a customer places a pizza order from Myllymaki’s retail pizza restaurant, the customer is simultaneously requesting delivery of the pizza, such that when Myllymaki receives a customer’s pizza order and delivery request (in one), the pizza (to be baked or perhaps off the shelf) is loaded into the autonomous vehicle at the pizza shop. Thus, claims 17 and 19 read on Myllymaki’s pizza retailer, as modified by Villamar supra. Accordingly, we sustain the Examiner’s rejection of claims 17 and 19; however, because we designated our affirmance of claim 1, from which claims 17 and 19 (ultimately) depend as a NEW GROUND OF REJCTION, and also because we rely on a claim interpretation of claims 17 and 19 different from the Examiner’s claim interpretation, we designate our affirmance of claims 17 and 19 as a NEW GROUND OF REJECTION to provide Appellant with a fair opportunity to respond. Appellant relies on the arguments presented for dependent claims 17 and 19 for the patentability of claims 18 and 20 depending therefrom; therefore, for essentially the same reasons as set forth supra, we also sustain the Examiner’s rejection of claims 18 and 20, and for the same reasons as set forth supra relative to claims 17 and 19, we designate our affirmance of claims 18 and 20 as a NEW GROUND OF REJECTION to provide Appellant with a fair opportunity to respond. Appeal Br. 15. Appeal 2021-003115 Application 16/109,592 13 Rejection III Claim 8 depends from independent claim 1 and recites, in relevant part, “wherein the retail facility has a covered garage for storing the autonomous vehicle”; claim 9 depends from claim 2 and recites the same claim limitation as claim 8. Appeal Br. 17. The Examiner finds that “Karppinen teaches using a portable garage unit for vehicle storage” and reasons that “[m]odifying a retail space (i.e.[,] pizza shop disclosed in Myllymaki) to include garage parking, in the form of a portable garage unit, would have been obvious since such a modification protects the vehicle thereby decreasing the chance of vandalism.” Final Act. 4–5. Appellant argues that Karppinen is not analogous art to the Appellant’s invention, and therefore, improperly relied on by the Examiner. Appeal Br. 11–12; Reply Br. 4. Appellant submits that “Karppinen’s portable garage designed for smaller open-air vehicles is not in the same field of endeavor as the claimed invention” and that “the Examiner has not stated how Karppinen is reasonably pertinent to the particular problem of autonomous vehicle delivery.” Id. at 12. A reference qualifies as prior art for an obviousness determination when it is analogous to the claimed invention. Innovention Toys, LLC. v. MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). Two separate tests define the scope of analogous art: (1) whether the art is from the same field of endeavor, regardless of the problem addressed, and, (2) if the reference is not within the field of the inventor’s endeavor, whether the reference still is reasonably pertinent to the particular problem with which the inventor is involved. Appeal 2021-003115 Application 16/109,592 14 In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004). “A reference is reasonably pertinent if . . . it is one which, because of the matter with which it deals, logically would have commended itself to an inventor’s attention in considering his problem.” In re Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). We find that Appellant’s field of endeavor is, as stated in the Specification, “autonomous (e.g., driverless or self-driving) vehicles for making deliveries.” Spec. 1:9–10. We also find that Karppinen is not in the same field of endeavor as Appellant’s invention, as Karppinen is in the field of endeavor of storage containers. See, e.g., Karppinen, Abstract. Notwithstanding, Karppinen discloses that problems solved by the storage container, and, in particular, a container for open vehicles, such as motorcycles, snowmobiles, and ATVs, include “protect[ion] . . . from bad weather, theft, and vandalism.” Id. ¶ 2. Appellant’s Specification similarly discloses that the invention addresses the problem of “potentially damaging external forces, such as vandalism, weather conditions, debris, etc.,” especially with respect to “more expensive components of the vehicle,” wherein the Specification suggests a protective housing. Spec. 8:3–5; see also id. at 11:7 (discussing color choice as a deterrent against vehicle vandalism); id. at 13:19–29 (discussing the use of warning signs as a deterrent against vehicle vandalism). Thus, we find that Karppinen would have logically commended itself to an inventor’s attention in considering how to protect vehicles, such that Karppinen is analogous art to Appellant’s invention and properly relied on by the Examiner. Appellant also argues that “there is no good reason that the (non- disclosed) pizza restaurant would have a need for storing Myllymaki’s delivery truck,” and that “[e]ven if Myllymaki does disclose a pizza Appeal 2021-003115 Application 16/109,592 15 restaurant, Myllymaki’s delivery truck would simply make a pick-up stop and then depart”—“[i]t would not stay there for storage.” Appeal Br. 12. Appellant’s response amounts to unsupported attorney argument, and therefore we give it little weight. In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997) (it is well settled that unexpected results must be established by factual evidence). Further, the Examiner proposes modifying Myllymaki to use delivery vehicles, as described in Villamar, such that storage at the pizza restaurant, within a covered garage or container, as disclosed in Karppinen, is a logical location to store a pizza-delivering autonomous vehicle fleet. Accordingly, we sustain the Examiner’s rejection of claims 8 and 9; however, because we designated our affirmance of claim 1, from which claims 8 and 9 (ultimately) depend as a NEW GROUND OF REJCTION, we designate our affirmance of claims 8 and 9 as a NEW GROUND OF REJECTION to provide Appellant with a fair opportunity to respond. Rejection IV Claims 10 and 11 depend (ultimately) from independent claim 1 and each recites, in relevant part, “wherein the retail facility has a vehicle bay for parking the autonomous vehicle, and wherein the vehicle bay is configured to allow loading of a purchase order into the autonomous vehicle while parked.” Appeal Br. 17 (Claims App.). Claim 12 depends from claim 10 and recites in relevant part, “wherein the vehicle bay has a clearance height of less than 15 feet.” Appeal Br. 17 (Claims App.). Claim 13 depends from claim 10 and recites, in relevant part, “wherein the purchase order is loaded into the autonomous vehicle while parked in the vehicle bay.” Appeal Br. 17 (Claims App.). Appeal 2021-003115 Application 16/109,592 16 The Examiner relies on Murphy for teaching “a drive through bay, wherein the vehicle bay is configured for loading of a purchase order into a vehicle while parked.” Final Act. 5. The Examiner reasons that “[t]he Myllymaki system is concerned with product delivery via autonomous vehicle[s] and such a system requires loading of product into the vehicle,” and further, that “Murphy teaches a drive through lane which helps promote efficien[cy] in loading product into the vehicle.” Ans. 5. In other words, “[t]he process of moving the product (i.e. pizza) into the delivery vehicle would be simplified by providing a drive through lane, as taught by Murphy, since such a lane helps closely position the delivery vehicle to the location of the product read for delivery, thereby cutting down on transportation waste.” Id. The Examiner also finds that although Murphy fails to expressly disclose a bay of less than 15 feet, designing the bay to be of less than 15 feet is “a matter of design choice since such a dimension encompasses a large percentage of road vehicles and 15 feet appears to solve no specific problem.” Final Act. 5. The Examiner relies on “the Myllymaki delivery system being implemented with a small sized vehicle as taught by Villamar,” as well as Murphy’s disclosure that “canopy 40 [of the drive- through bay] is at least 9 feet above the driveway 22 for the passage of various sized vehicles.” Ans. 5–6 (quoting Murphy 5:1–5 (additions in original)). Appellant argues that because the Examiner modifies Myllymaki’s autonomous vehicle to be without passengers, as taught by Villamar, “no passengers means no drive-through meals to serve to them,” and therefore, the Examiner’s combination lacks motivation. Appeal Br. 13. However, this argument does not address the Examiner’s rejection, which does not Appeal 2021-003115 Application 16/109,592 17 require a passenger in the autonomous vehicle to receive the pizza, but only that the autonomous vehicle is in a drive through bay of the pizza restaurant for loading of the pizza into the autonomous vehicle. Appellant also argues that Murphy is not analogous art to Appellant’s invention, in that “Murphy’s drive-through restaurant is not in the same field of endeavor as the claimed invention,” nor has the Examiner found that Murphy is reasonably pertinent to a particular problem with which the Appellant is involved relative to the claimed invention. Appeal Br. 13. We apply the two-prong analogous art test discussed supra to Murphy. We find that Murphy is in the field of endeavor of “drive-through structures” (Murphy 1:5–6), which is different from Appellant’s field of endeavor, namely, autonomous (e.g., driverless or self-driving) vehicles for making deliveries. However, Murphy discloses that an advantage of a drive- through restaurant is that “[a]fter placing an order, the customer then may drive the vehicle to a delivery window to . . . receive[] the order,” wherein “[a] primary advantage of the drive-through restaurant is that . . . a customer may order and receive a meal in minimum time.” Murphy 1:21–23, 29, 33– 34. The Specification discloses, with reference to Figures 8 to 10, that “vehicle bay 90 where the unmanned delivery vehicle can be parked,” wherein “[e]mployees load the delivery vehicle through the service doors 92.” Spec. 36:15–16. The Specification also discloses that “unmanned delivery vehicle 96 is parked in the vehicle bay 90 awaiting a delivery request.” Id. at 24–25. We find that Murphy is reasonably pertinent to Appellant’s particular problem of placing the autonomous vehicle nearby the retail facility for the easy and efficient loading of retail goods. Thus, Murphy is analogous art to Appellant’s invention and properly relied on by the Examiner. Appeal 2021-003115 Application 16/109,592 18 Regarding claim 12, Appellant argues that the Examiner erroneously relies on design choice by failing to consider that the claimed vehicle bay clearance height of less than 15 feet solves a particular problem: “because the vehicle is unmanned, it may have a lower height than conventional delivery trucks.” Appeal Br. 13. However, we find that where the Examiner’s proposed modification eliminates Myllymaki’s autonomous vehicle from being a passenger vehicle, and in view of the teachings as relied on by the Examiner in Murphy, that “canopy 40 is generally at least 9 feet above the driveway 22 for passage of various sized vehicles” (Murphy 5:1–5), and in Villamar, that the passenger-less autonomous vehicle may be “small in size” (Villamar ¶ 37), the Examiner’s design choice motivation has sufficient factual support. A reason to modify a prior art reference may be found explicitly or implicitly in market forces; design incentives; the “interrelated teachings of multiple patents”; “any need or problem known in the field of endeavor at the time of invention and addressed by the patent”; and the background knowledge, creativity, and common sense of the person of ordinary skill. Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328–29 (Fed. Cir. 2009) (quoting KSR, 550 U.S. at 418–21). Accordingly, we sustain the Examiner’s rejection of claims 10–13; however, because we designated our affirmance of claim 1, from which claims 10 to 13 (ultimately) depend as a NEW GROUND OF REJCTION, we designate our affirmance of claims 10 to 12 as a NEW GROUND OF REJECTION to provide Appellant with a fair opportunity to respond. SUMMARY OF DECISION We AFFIRM the Examiner’s rejections of claims 1–20. We enter NEW GROUNDS OF REJECTION of claims 1–20. Appeal 2021-003115 Application 16/109,592 19 CONCLUSION In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 4 112(b) Indefiniteness 4 2, 19 112(b) Indefiniteness 2, 19 1–7, 14– 20 103 Myllymaki, Villamar 1–7, 14– 20 1–7, 14– 20 8, 9 103 Myllymaki, Villamar, Karppinen 8, 9 8, 9 10–13 103 Myllymaki, Villamar, Murphy 10–13 10–13 Overall Outcome 1–20 1–20 TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). 37 C.F.R. § 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that the Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new Evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . Appeal 2021-003115 Application 16/109,592 20 (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED; 37 C.F.R. § 41.50(b) Copy with citationCopy as parenthetical citation