Steven Yu et al.Download PDFPatent Trials and Appeals BoardSep 30, 20212021001818 (P.T.A.B. Sep. 30, 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. 15/872,723 01/16/2018 Steven Sounyoung Yu ARV-03 1562 7590 09/30/2021 Steven Yu 9810 Cresence Way Fairfax, VA 22032 EXAMINER MCPARTLIN, SARAH BURNHAM ART UNIT PAPER NUMBER 3636 MAIL DATE DELIVERY MODE 09/30/2021 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 2021-001818 Application 15/872,723 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 1–9 and 12–23. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. 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 2021-001818 Application 15/872,723 2 CLAIMED SUBJECT MATTER Appellant’s invention relates to “Autonomous Unmanned Road Vehicle[s] 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 method of transporting an item from a sender to a recipient using an autonomous unmanned road vehicle that comprises a cargo compartment but does not have any passenger seats, the method comprising: receiving from the sender, a request for transporting an item from a first location designated by the sender to a second location designated by the recipient, wherein the request includes the recipient’s contact information; from a fleet of multiple autonomous unmanned road vehicles, assigning a vehicle for transporting the item; driving the assigned vehicle, at least partly in an autonomous manner, to the first location via a paved roadway; receiving into the cargo compartment, an item to be sent to the recipient; driving the assigned vehicle, at least partly in an autonomous manner, to the second location; notifying the recipient that the assigned vehicle is on its way or has arrived; wherein the sender is different from the recipient; and wherein the first location is different from the second location. Appeal 2021-001818 Application 15/872,723 3 THE REJECTIONS2 The prior art relied upon by the Examiner is: Name Reference Date Stevens US 6,820,805 B2 Nov. 23, 2004 Mountz US 8,972,045 B1 Mar. 3, 2015 Villamar US 9,235,213 B2 Jan. 12, 2016 Goosman US 2003/0033825 A1 Feb. 20, 2003 Sicard US 2010/0185482 A1 July 22, 2010 Zini US 2010/0234990 A1 Sept. 16, 2010 Dam US 2013/0102333 A1 Apr. 25, 2013 The following rejections are before us for review: I. Claims 1–6, 9, 12, and 17–19 stand rejected under 35 U.S.C. § 103 as unpatentable over Villamar, Mountz, and Stevens. II. Claims 7, 8, and 13 stand rejected under 35 U.S.C. § 103 as unpatentable over Villamar, Mountz, Stevens, and Sicard. III. Claims 14, 15, 20, 21, and 23 stand rejected under 35 U.S.C. § 103 as unpatentable over Villamar, Mountz, Stevens, and Zini. IV. Claim 16 stands rejected under 35 U.S.C. § 103 as unpatentable over Villamar, Mountz, Stevens, and Goosman. V. Claim 22 stands rejected under 35 U.S.C. § 103 as unpatentable over Villamar, Mountz, Stevens, and Dam. 2 The Examiner’s rejection of Claim 17 under 35 U.S.C. § 112(b) as being indefinite has been withdrawn. Ans. 3. Appeal 2021-001818 Application 15/872,723 4 OPINION Rejection I Independent claim 1 and dependent claims 2–6, 9, 12, and 19 Appellant argues claims 1–6, 9, 12, and 19 as a group. Appeal Br. 5. We select independent claim 1 as representative, and claims 2–6, 9, 12, and 19 stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv). Regarding independent claim 1, the Examiner finds, inter alia, that Villamar’s “processor” corresponds to the claimed sender, which sends a request for transporting an item from a first sender-designated location (i.e., placer robot 130’s location) to a second recipient-designated location (i.e., delivery destination 190), as required by claim 1. Final Act. 3. Villamar’s Figure 1 is reproduced below. Villamar’s Figure 1 depicts “an environment 100 . . . for automated delivery using the delivery vehicle 200,” including “a network 110, the delivery Appeal 2021-001818 Application 15/872,723 5 vehicle 200, a warehouse 120, a placer robot 130, a product 140, a processing device 150, a buyer 170, one or more client devices 180, an order 160, and a delivery destination [190].” Villamar 3:28–35. In particular, Villamar’s Figure 1 shows a flowchart from order placement to product delivery: buyer 170 places order 160 via network 110 whereby order 160 is transmitted by processing device 150 to placer robot 130 at warehouse 120 (i.e., corresponding to the claimed first location), placer robot 130 places product 140 into delivery vehicle 200, and delivery vehicle 200 delivers product 140 to delivery destination 190 (i.e., corresponding to the second claimed location). The Examiner also finds that “Villamar does not disclose driving the vehicle to the sender[’]s designated location via a paved roadway.” Final Act. 3–4 (emphasis added); see also Ans. 4 (“Villamar does not explicitly disclose the method step of driving the assigned vehicle ‘via a paved roadway’”). The Examiner observes that “Villamar does teach that the delivery vehicle may be configured to allow the vehicle to move on a surface with no track such as a conventional street surface.” Final Act. 4; see Villamar 5:52–54 (“wheel 230 may be configured to allow the delivery vehicle 200 to move on a surface area which has no tracks such as a conventional street surface”). The Examiner relies on Mountz for disclosing “an inventory management system that spans multiple buildings” and reasons that “[i]t would have been obvious to use the vehicles disclosed by Villamar in a multi-building warehouse complex, thereby requiring driving of the vehicle (200) on ‘conventional’ street surface[s] or paved roadway[s] since large warehousing and processing facilities are well known to span multiple buildings.” Final Act. 4; see also Ans. 4 (“[the] combination proposes using the Villamar autonomous delivery vehicle within a multi- Appeal 2021-001818 Application 15/872,723 6 facility warehousing system, as taught by Mountz”). The Examiner finds that “[s]uch a system is well known in the art of warehousing spaces for ensuring the robots are able to perform the duties required by the system.” Final Act. 4. Appellant argues that “Villamar is incompatible with Mountz, and therefore, there is no motivation.” Appeal Br. 6 (emphasis omitted). In particular, Appellant submits that “the Examiner proposes that [Mountz’s] warehouse robots 106 could be replaced by Villamar’s delivery vehicles,” but that “this proposed combination does not work for two reasons.” Id. at 6–7. First, Appellant contends that “warehouse robots 106 in Mountz are limited to circulating within the warehouse floor” and “Mountz makes no suggestion that its warehouse robots 106 could itself make the outbound shipments.” Id. at 7. Second, Appellant contends that “Mountz’s loading mechanism is incompatible with Villamar’s loading mechanism” because, for example, “[i]n contrast to Mountz’s lateral loading design, Villamar’s design is a drop-loading (or top-loading) design,” and “[t]he Examiner’s proposed combination of incompatible loading mechanisms results in something that does not work in the manner intended.” Id. at 7–8. We are not persuaded by Appellant’s argument. The Examiner’s rejection does not propose substituting Mountz’s warehouse robots 106 with Villamar’s delivery vehicles 200 for the purpose of transporting inventory holders to and from freight transporters for outbound shipment, or to perform a loading function, as disclosed with respect to embodiments disclosed in Mountz. See, e.g., Mountz 3:29–31. Rather, the Examiner merely relies on Mountz for teaching, more generally, that Villamar’s first location (i.e., the location of placer robot 130 in a warehouse) may be within Appeal 2021-001818 Application 15/872,723 7 a fully-paved warehouse complex, such that Villamar’s delivery vehicles travel via a paved roadway to the first location, as required by claim 1. Next, Appellant submits that “Villamar and Mountz focus on different aspects of a transportation system,” and, therefore, “there is no ‘perceptible benefit’ in the Examiner’s proposal for replacing the warehouse robots 106 of Mountz with Villamar’s delivery vehicles 200.” Appeal Br. 9–10 (emphasis omitted). Again, Appellant’s argument is misplaced, as the Examiner is not proposing the substitution of Mountz’s robots 106 with Villamar’s deliver vehicles 200, but rather, the Examiner modifies Villamar’s first location (i.e., the location of placer robot 130 in a warehouse) to be within a paved warehouse complex, such that the assigned delivery vehicle drives to the first location via a paved roadway, for the benefit of ensuring the delivery vehicles are able to perform the duties required by the inventory system. Accordingly, we sustain the Examiner’s rejection of independent claim 1, and claims 2–6, 9, 12, and 19 fall therewith. Dependent claim 17 Claim 17 depends from independent claim 1 and recites, in relevant part, “wherein the assigned vehicle is neither the sender’s or the recipient’s legal possession.” Appeal Br. 18 (Claims App.). The Examiner finds that there are “three options” regarding the legal possession of Villamar’s delivery vehicles: the vehicles are owned by the senders, the recipients, or neither the senders nor the recipients. Ans. 5. The Examiner reasons that because “[t]his is a very small finite group of options[,] . . . it would have been obvious to one of ordinary skill to consider any of the three ‘possession’ characteristics based upon the product being shipped.” Id. (internal quotation omitted). Appeal 2021-001818 Application 15/872,723 8 Appellant submits that “Villamar does not explicitly mention who possesses the delivery vehicle 200” and that “the more plausible reading of Villamar is that the warehouse or factory (i.e. the purported ‘sender’) owns the delivery vehicle 200, which is contrary to the claim recitation.” Appeal Br. 12. Appellant argues that, to the extent the Examiner is relying on a “common sense” or an “Obvious to Try” rationale, “the Examiner must explain why the Villamar delivery vehicle should not be the ‘sender’s … legal possession’ and also not the ‘recipient’s legal possession.’” Reply Br. 5. The “obvious to try” analysis is addressed in KSR Int’l Co. v. Teleflex Inc.: When there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions, a person of ordinary skill has good reason to pursue the known options within his or her technical grasp. If this leads to the anticipated success, it is likely the product not of innovation but of ordinary skill and common sense. In that instance the fact that a combination was obvious to try might show that it was obvious under § 103. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Here, we find that the Examiner’s rationale, either by common sense or due to a finite number of identified, predictable solutions (i.e., legal possessors of Villamar’s delivery vehicle 200), is sufficient to state a prima facie case of obviousness. In support, we point to Villamar’s disclosure that the delivery vehicles “may be used to deliver goods from a factory to a store or warehouse” or “by individuals to attain goods from stores,” wherein “[f]or this purpose, the delivery vehicles 200 may be kept by individuals at homes.” Villamar 5:42–46. This passage suggests that legal possession of delivery vehicle 200 may be by any of a discrete number of parties involved Appeal 2021-001818 Application 15/872,723 9 in automating the delivery of goods, including a factory, a store, a warehouse, and an individual. Mountz suggests that another party having legal possession of the delivery robots may be an owner/operator of the inventory management system, for example, by characterizing the facility and the inventory management system as two different assets: “mobile order fulfillment systems are used within inventory facilities.” Mountz 1:20–21. Thus, we agree with the Examiner’s finding that a known option within the technical grasp of a person of ordinary skill in the art is that legal possession of Villimar’s assigned vehicle is neither the sender’s (i.e., the owner/operator of processing device 150) nor the recipient’s (i.e., the individual buyer), but rather, is warehouse owner’s—in other words, as suggested in Mountz, a third party (other than the warehouse owner) is the owner of the inventory management system (i.e., processing device 150). Cf. Spec. 34:14–16 (“The unmanned ground vehicle is not the possession of the customer. Some other party, such as the local retail facility, has legal possession of the unmanned ground vehicle (e.g. owns, leases, or through other contractual arrangement.)”). Accordingly, we sustain the Examiner’s rejection of dependent claim 17. Dependent claim 18 Claim 18 depends from independent claim 1 and recites, in relevant part, “further comprising notifying the sender that the assigned vehicle is on its way or has arrived.” Appeal Br. 18 (Claims App.). The Examiner finds that “[t]he claim does not specify that the notification be indicative of the assigned vehicle being on its way or arrived at the first location or at the second location.” Ans. 5. Notwithstanding, the Examiner relies on Stevens for disclosing that “a message . . . is sent from a Appeal 2021-001818 Application 15/872,723 10 central processing unit on a vehicle (i.e.[,] delivery truck) to a central server (sender) upon arrival of the vehicle at a receptacle used by the customer.” Id. at 6 (citing Stevens 6:19–22). The Examiner reasons that adding such a messaging step (i.e. message sent from vehicle (200) upon arrival at delivery destination (190) to processing device (150)) would be obvious to enable communication about the delivery status to be made from the processing device (150) to the buyer at the delivery destination to ensure secure delivery of the items to the appropriate buyer. Id. Appellant argues that, in Villamar’s Figure 1, the arrows show forwarding order 160 from processing device 150, “[b]ut there is no message sent back to the processing device 150.” Appeal Br. 13. Appellant’s argument, however, does not address the rejection as articulated by the Examiner, which relies on a modification of Villamar, in view of Stevens. Non-obviousness cannot be established by attacking references individually where the rejection is based upon the teachings of a combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981). Rejections II and IV Appellant chose not to present arguments for the patentability of dependent claims 7, 8, 13, and 16 apart from the arguments presented for independent claim 1 supra. Appeal Br. 5–15. Accordingly, for essentially the same reasons as set forth supra, we sustain the Examiner’s rejection of claims 7, 8, 13, and 16. Appeal 2021-001818 Application 15/872,723 11 Rejection III Dependent claims 15 and 23 Claims 15 and 23 (ultimately) depend from independent claim 1, and each further requires, in relevant part, that driving the assigned vehicle is “performed by a combination of human control via remote operation and autonomous control.” Appeal Br. 18, 19 (Claims App.). The Examiner finds that Zini discloses that “[t]he autonomous robot can also be controlled via a remote control.” Final Act. 5, 6–7 (citing Zini ¶¶ 67–69). The Examiner explains that, in Zini, “[an] autonomous tug can send an indication that the tug is ‘stuck’ and . . . a help desk operator can take control of the functionality and operation of the tug via remote control.” Ans. 5 (citing Zini ¶ 98). The Examiner reasons that it would have been obvious to add “remote control” to Villamar’s method for automated delivery “for conditions which could cause damage to the unit, such as extreme weather.” Final Act. 5. Appellant argues that the Examiner’s motivation for combining the references is “not sufficient,” because the Examiner does not state “why the two references should be combined.” Appeal Br. 10. Appellant also argues that “Villamar makes no specific mention or has any contemplation that its automated delivery vehicle is designed for roaming inside hospitals,” similar to Zini’s “hospital robot.” Reply Br. 4. Appellant’s argument does not address the rationale (or the why), which is expressly provided by the Examiner, namely, to allow human control of Villamar’s delivery vehicle via remote operation, in addition to autonomous control, in the event weather conditions cause damage to the delivery vehicle. In addition, Villamar is not relied on for teaching a hospital robot; rather, the Examiner proposes modifying Villamar’s Appeal 2021-001818 Application 15/872,723 12 autonomous delivery vehicle 200 to be capable of being driven by human control via remote operation, as taught by Zini. Accordingly, we sustain the Examiner’s rejection of dependent claims 15 and 23. Dependent claims 14, 20, and 21 Appellant chose not to present arguments for the patentability of dependent claims 14, 20, and 21 apart from the arguments presented for independent claim 1 and dependent claim 15 supra. Appeal Br. 5–15. Accordingly, for essentially the same reasons as set forth supra, we sustain the Examiner’s rejection of claims 14, 20, and 21. Rejection V Claim 22 depends on independent claim 1 and recites, in relevant part, “wherein the assigned vehicle is selected from the fleet of multiple autonomous unmanned road vehicles based, at least in part, on the proximity of the assigned vehicle to the first location.” Appeal Br. 19 (Claims App.). The Examiner relies on Dam for describing “how proximity of a particular fleet vehicle . . . is used as a dispatch/assignment criteria.” Final Act. 6 (citing Dam ¶ 27). In particular, the Examiner finds that Dam discloses “allocating work assignments to [a series of field crews (46), (62), and (64)] based on a series of factors,” including “the closest field crew 46, 62, or 64 to the emergency condition.” Ans. 6 (citing Dam ¶ 27). The Examiner reasons that it would have been obvious to apply Dam’s teaching to Villamar’s automated delivery vehicle system to “cut down on waste (i.e. travel time) in the system, thereby improving overall efficiency and customer satisfaction.” Final Act. 6. Appellant argues that Dam’s disclosure is limited to “one particular utility crew,” and not “selection from [a] fleet [of vehicles].” Appeal Br. 15. Appeal 2021-001818 Application 15/872,723 13 Appellant also argues that “Dam’s work crew assignment system is irrelevant to Villamar . . . because all the delivery vehicles of Villamar originate from the same place, i.e. the product warehouse from where they are dispatched,” and thus, “all the delivery vehicles are equidistant to any delivery site.” Reply Br. 6. Appellant further argues that “[t]he fleet assignment system of Dam, which is based on proximity of the work crew to the various work sites, is irrelevant to how Villamar operates,” and therefore, “there is no motivation for the combination proposed by the Examiner.” Id. at 7. We are not persuaded by Appellant’s arguments. A preponderance of the evidence supports the Examiner’s finding that Dam discloses coordinating work assignments between more than one field crew (i.e., a fleet of field crews), and further, that such coordination is based on the proximity of the crew to an emergency condition location: “the dispatching server 26 may receive information indicating an emergency utility grid condition and the server 26 may determine the closest field crew 46, 62, or 64 to the emergency condition and immediately assign the field crew 46, 62, and 64 to go to the emergency condition location.” Dam ¶ 27. We also do not agree with Appellant that Villamar’s delivery vehicles must necessarily originate from the same place; rather, as discussed supra, Villamar’s delivery vehicles, as modified by Mountz, may be located within a multi- facility warehousing system. Finally, notwithstanding the differences between the environments of Villamar’s automated delivery vehicle system and Dam’s system for dispatching utility repairs, Appellant’s argument does not apprise us of error in the Examiner’s reasoning that modifying Villamar’s automated delivery vehicle system to coordinate vehicle Appeal 2021-001818 Application 15/872,723 14 assignment based on proximity, as taught in Dam, reduces travel times for Villamar’s fleet of autonomous delivery vehicles. CONCLUSION The Examiner’s rejections of claims 1–9 and 12–23 are affirmed. DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–6, 9, 12, 17–19 103 Villamar, Mountz, Stevens 1–6, 9, 12, 17–19 7, 8, 13 103 Villamar, Mountz, Stevens, Sicard 7, 8, 13 14, 15, 20, 21, 23 103 Villamar, Mountz, Stevens, Zini 14, 15, 20, 21, 23 16 103 Villamar, Mountz, Stevens, Goosman 16 22 103 Villamar Mountz, Stevens, Dam 22 Overall Outcome 1–9, 12–23 TIME PERIOD FOR RESPONSE 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 Copy with citationCopy as parenthetical citation