Steven Yu et al.

Patent Trials and Appeals Board

Oct 22, 2021

2021003115 (P.T.A.B. Oct. 22, 2021)

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.
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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.

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§ 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. . .”)).
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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.
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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
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(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
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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
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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
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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.
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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.
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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
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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.

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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.
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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
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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.).
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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
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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.
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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
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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
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(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)