Ex Parte Bayer et al

Patent Trial and Appeal Board

Mar 9, 2017

13454856 (P.T.A.B. Mar. 9, 2017)

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.
225525.25 4211
EXAMINER
WHITE, DOUGLAS F
ART UNIT PAPER NUMBER
1653
MAIL DATE DELIVERY MODE
13/454,856 04/24/2012
7590 03/09/2017
Francis C. Hand, Esq.,
c/o Carella, Byrne,
Cecchi, Olstein, Brody & Agnello
5 Becker Farm Road
Roseland, NJ 07068
Eben Bayer
03/09/2017 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 EBEN BAYER and GAVIN McINTYRE1
Appeal 2016-003441
Application 13/454,856
Technology Center 1600
Before RICHARD M. LEBOVITZ, RICHARD J. SMITH, and
JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35U.S.C. § 134 involving claims to
dehydrated mycelium elements, which have been rejected as presenting non-
statutory subject matter and as obvious. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
The Specification describes composite materials comprising
dehydrated mycelium and methods for making the same. Spec. 1.
1 Appellants identify the Real Party in Interest as Ecovative Design LLC.
Appeal Br. 2.
Appeal 2016-003441
Application 13/454,856
Claims 14—19 are on appeal. Claim 14 is illustrative and reads as
follows:
14. A fabricated section comprising a plurality of blocks,
each said block being made of mycelium composite containing
at least one of a combination of mycelium and fibers, mycelium
and particles, and mycelium, particles and fibers, and each said
block having mycelium on an exterior thereof grown into an
adjacent block to bond said adjacent blocks together to form a
cohesive unitary structure.
The claims stand rejected as follows:
Claims 14—19 have been rejected under 35 U.S.C. § 101 as being
directed to non-statutory subject matter.
Claims 14, 15, 16, 18, and 19 have been rejected under 35 U.S.C. §
103(a) as unpatentable over Bayer.2
Claim 17 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Bayer in view of Booth.3
THE REJECTION UNDER 35 U.S.C. § 101
Issue
The issue with respect to this rejection is whether the evidence of
records supports the Examiner’s conclusion that the claims are directed to
non-statutory subject matter.
The Examiner finds that the claim are directed to natural products
which are not eligible for patenting. Final Act. 3^4. The Examiner finds
2 Bayer et al., US 2009/0307969 Al, published Dec. 17, 2009 (“Bayer”).
3 Booth et al., Potential of a Dried Mycelium Formation of an Indigenous
Strain of Metarhizium anisopliae Against Subterranean Pests of Cranberry,
10 Biocontrol Sci. Tech. 659 (2000) (“Booth”).
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Application 13/454,856
that the limitations with respect to the shape of the composition do not
render the claims patentable. Final Act. 4.
Appellants contend that the claims are directed to a novel composition
of matter and as such are patentable. Appeal Br. 5—6.
Analysis
Appellants do not persuade us that a preponderance of the evidence
fails to support the Examiner’s conclusion that the rejected claims recite
subject matter ineligible for patenting under 35 U.S.C. § 101.
35 U.S.C. § 101 states that “[wjhoever 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 Supreme Court has “long held that this provision contains an
important implicit exception: Laws of nature, natural phenomena, and
abstract ideas are not patentable.” Alice Corp. Pty. Ltd. v. CLS Bank
Intern., 134 S. Ct. 2347, 2354 (2014).
The Examiner found that the claims included block and H shapes that
would form by mycelium when growing in nature. Final Act. 3; Ans.
8. Appellants did not provide evidence that the structure described in the
claim is any different from compacted mycelium found in nature.
Appellants contend that the claims are directed to a composition
which is statutory patentable subject matter. Reply Br. 2. However,
Appellants have not addressed the Examiner’s finding that the claims read
on mycelium parts only. Ans. 7—8. As indicated by the Examiner, there is
no definition of particles or fibers in the Specification, (cite?) To the
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Application 13/454,856
contrary, the Specification describes the mycelium as being formed into
particles and fibers. Spec. 2: 5—6. Thus, the claims include embodiments of
composites made only of mycelium shaped into forms that occur in
nature. For this reason, the claimed “fabricated section” includes
embodiments that are solely made of mycelium formed into shapes that
Appellants have not established do not occur in nature. Accordingly, the
rejection under Section 101 should be affirmed.
THE REJECTIONS UNDER 35 U.S.C. § 103(a)
The issue with respect to these rejections is whether the evidence
supports the Examiner’s conclusion that the claim are unpatentable over
Bayer or Bayer combined with Booth.
The Examiner finds that Bayer teaches a fabricated section
comprising a plurality of blocks comprising a mycelium composite. Final
Act. 3. The Examiner also finds that Bayer teaches incorporating fibers
and/or particles into the mycelium composite. Id. The Examiner finds that
Bayer teaches growing multiple fruit bodies next to each other such that they
intersect creating a single mass. {Id. at 3—4.) The Examiner finds that Bayer
teaches forming the composite into different shapes. Final Act. 4. The
Examiner concludes that
[i]t would have been obvious to one of ordinary skill in the art
to make a fabricated section comprising a plurality of blocks,
each said block being made of mycelium composite containing
at least one of a combination of mycelium and fibers, mycelium
and particles, and mycelium, particles and fibers, and each said
block being bonded to an adjacent block to form a cohesive
unitary structure based upon the beneficial teachings provided
by Bayer, as fully discussed above. In addition, it would have
been obvious to one of ordinary skill in the art at the time the
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Application 13/454,856
claimed invention was made to provide a block for forming a
fabricated section based upon the beneficial teachings provided
by Bayer (as discussed above). The result-effective adjustment
of these and/or other particular conventional working
conditions (e.g., forming a three dimensional shape-including
an H shape) is deemed merely a matter of design choice,
judicious selection, and routine optimization which is well
within the purview of the skilled artisan having the cited
reference before him/her as a guide.
Id.
Appellants contend that the fungal part used in Bayer is not mycelium
but is the fruiting body, a different part of the fungal body. Appeal Br. 9.
Appellants argue that Bayer does not disclose growing two fungal parts from
different growing substrates to for a single mass. Appeal Br. 10. Appellants
argue that the Examiner engaged in impermissible hindsight in reaching a
conclusion of obviousness. Appeal Br. 11.
“The test of obviousness vel non is statutory. It requires that one
compare the claim’s ‘subject matter as a whole’ with the prior art ‘to which
said subject matter pertains.’” In re Ochiai, 71 F.3d 1565, 1569 (Fed. Cir.
1995) (quoting 35 U.S.C. § 103).
We agree with Appellants that the evidence of record does not support
the Examiner’s conclusion with respect to obviousness. As Appellants point
out, Bayer does not teach or suggest creating a composite using the
mycelium part of a fungal body. Appeal Br. 9. Bayer teaches using the
primordium or fruiting body of the fungus to create a composite material.
Bayer 124. As demonstrated in the Examiner’s Answer, the primordium or
fruiting body is a different part of the fungus. Ans. 8. The Examiner has
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Application 13/454,856
pointed to nothing in Bayer to teach or suggest using the mycelium as the
base for a composite material.
With respect to claim 17, the Examiner points to Booth only for the
teaching of dried mycelium and the use of water to reactivate the mycelium.
The Examiner points to nothing in Booth to remedy the deficiencies of
Bayer discussed above.
We conclude that the evidence or record does not support the
Examiner’s rejection under 35 U.S.C. § 103(a) based on Bayer alone or
Bayer combined with Booth.
SUMMARY
We affirm the rejection under 35 U.S.C. § 101.
We reverse the rejections under 35 U.S.C. § 103(a).
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).
AFFIRMED
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