12001556 (P.T.A.B. Oct. 27, 2014)

Ex Parte Bayer et al

Patent Trial and Appeal BoardOct 27, 2014

12001556 (P.T.A.B. Oct. 27, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 12/001,556 12/12/2007 Eben Bayer 4155 7590 10/27/2014 Francis C. Hand, Esq., c/o Carella, Byrne, Bain, Gilfillan, Cecchi, Stewart & Olstein 5 Becker Farm Road Roseland, NJ 07068 EXAMINER ARIANI, KADE ART UNIT PAPER NUMBER 1651 MAIL DATE DELIVERY MODE 10/27/2014 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 EBAN BAYER, GAVIN McINTYRE, and BURT L. SWERSEY1 __________ Appeal 2012-006006 Application 12/001,556 Technology Center 1600 __________ Before ERIC B. GRIMES, ULRIKE W. JENKS, and ROBERT A. POLLOCK, Administrative Patent Judges. POLLOCK, Administrative Patent Judge. DECISION ON APPEAL Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s rejections of claims 1–9, 27, and 28 as unpatentable. We have jurisdiction under 35 U.S.C. § 6(b). We reverse, and enter a New Ground of Rejection under 37 C.F.R. § 41.50(b). STATEMENT OF THE CASE Appellants’ invention relates to methods of making a self-supporting composite material comprising discrete particles bonded together with a network of fungal mycelia. 1 According to Appellants, the Real Party in Interest is Ecovative Design LLC. (App. Br. 2). Appeal 2012-006006 Application 12/001,556 2 Claim 1, the sole independent claim on appeal, reads as follows: 1. A method of making a composite material comprising the steps of forming an inoculum including a preselected fungus; forming a mixture of a substrate of discrete particles and a nutrient material, said nutrient material being capable of being digested by said fungi; adding said inoculum to said mixture; and allowing said fungus to digest said nutrient material in said mixture over a period sufficient to grow hyphae and to allow said hyphae to form a network of interconnected mycelia cells through and around said discrete particles thereby bonding said discrete particles together to form a self-supporting composite material. The following grounds of rejection are before us for review: Claims 1–4, 9, and 27 stand rejected under 35 U.S.C. § 102(a) as anticipated by Yamanaka.2 Claims 1–9, 27, and 28 stand rejected under 35 U.S.C. 103(a) as unpatentable over the combination of Yamanaka, Baysal3, and Schirp.4 ISSUE Does the preponderance of evidence relied upon by the Examiner support conclusions of anticipation or obviousness based on a finding that Yamanaka discloses a method of making a composite material wherein 2 Yamanaka et al., US 5,074,959, issued December 24, 1991. 3 Baysal et al., “Cultivation of oyster mushroom on waste paper with some added supplementary materials,” Bioresource Technology, 89:95–97 (2003). 4 Schirp et al., “Production and Characterization of Natural Fiber-Reinforced Thermoplastic Composites Using Wheat Straw Modified with the Fungus Pleurotus ostreatus,” J. Applied Polymer Sci. 102:5191–5102 (2006). Appeal 2012-006006 Application 12/001,556 3 fungal hyphae form a network of interconnected mycelia cells through and around discrete particles “thereby bonding said discrete particles together to form a self-supporting composite material,” as required by claim 1? FINDINGS OF FACT FF 1. The Examiner’s findings concerning the scope and content of the prior art are set forth on pages 4–11 of the Answer. FF 2. The Examiner finds that Yamanka discloses a method of making a composite paper sheet comprising the step of allowing said fungus to grow hyphae and to form hyphae (a network of interconnected mycelia cells) through and around said discrete particles thereby bonding said discrete particles together to form a self-supporting composite material (paper sheet). (Answer 4 (citing Yamanka 3:60-65 and col. 5, table 1); see also Answer 8 (citing Yamanaka 3:27–32 and claim 5.) FF 3. Yamanaka discloses that in order to prepare paper from wood pulp, a beating step is necessary during the manufacturing process. (Yamanaka 1:24–26.) Yamanaka further discloses that “a complex of a fibrous material and fungi can be obtained by allowing fungi to grow in a medium containing a fibrous material.” (Id. 2:44–48; see also Abstract). “When preparing paper from this complex as a raw material, no beating step is required.” (Id. 3:12–13.) FF 4. Yamanaka Example 1 (id. 4:14–5:27) discloses a suspension comprising fungal culture and hardwood pulp cultured for two days in a shaker flask “[w]hile gently stirring at 60 rpm with a magnetic stirrer.” (4:43–47.) The resultant hyphae-containing pulp was subsequently washed, filtered, and “formed into a sheet.” (Id. 4:47–53.) Table 1 (cited Appeal 2012-006006 Application 12/001,556 4 by the Examiner) compares the properties of paper sheets produced using this hyphae-cultured pulp to sheets prepared by other methods. (See id. 5:3–27.) In accord with Table 1, Yamanaka at column 3, lines 62–66 states that “the strength of a sheet obtained by subjecting a mere mixture of hyphae and fibers to papermaking is lower than the strength of a sheet obtained from a complex of hyphae and fibers prepared by culturing fungi in the presence of fibers.” FF 5. Thus, as set forth in Yamanaka claim 6, the reference teaches a process for preparing paper by “preparing a complex of pulp and fungi by growing fungi in an aqueous medium containing pulp or paper . . . and preparing paper from said complex or a pulp mixture containing said complex.” FF 6. Chapter 4 of The Mushroom Growers’ Handbook 25 describes a process for shiitake bag cultivation. The reference states that: Sawdust is the most popular basal ingredient for shiitake bag cultivation in the U.S. Starch-based supplements (10- 60% dry weight) such as wheat bran, rice bran, millet, rye, and maize are added to the mix. These supplements serve as nutrients to provide an optimum-growing medium. Other supplements, added in lesser quantities include CaCo3, gypsum, and table sugar. The ingredients are combined in a mixer and water is added to raise the moisture content of the mix to around 60%. Bags are made of heat resistant polypropylene and contain a breather patch made of microporus plastic. The filled bags are stacked on racks (Fig. 1A), loaded into an industrial-sized autoclave (Fig 1B), sterilized for 2 hours at 121°C, cooled in a clean room and inoculated with shiitake spawn. The bags then are heat- 5 Mushroom Growers’ Handbook 2: Shiitake Cultivation, pp. 88–90 (2005). Appeal 2012-006006 Application 12/001,556 5 sealed and the spawn is through-mixed (evenly distributed) into the substrate by mechanical or hand shaking. (The Mushroom Growers’ Handbook 88.) Figure 2A of the reference shows bags of sawdust-based material during the period of mycelial growth (spawn run). (Id. 89.) “[T]he bags are removed from the substrate after completion of spawn run and the substrate blocks are exposed to an environment conducive for browning (oxidation of surface mycelium . . .) of the exterior block surfaces” (Id.). In Figure 2B, the bags have been removed, revealing self-supporting blocks of sawdust-based substrate held together with fungal mycelia. (Id.) ANALYSIS Yamanaka Appellants’ independent claim 1 recites a method of making a composite material wherein fungal hyphae form a network of interconnected mycelia cells through and around discrete particles “thereby bonding said discrete particles together to form a self-supporting composite material.” Although the Examiner relies on Yamanaka for this disclosure, Appellants contend that the reference does not disclose the claimed “self-supporting composite material.” (App. Br. 5.) We agree with Appellants. The plain language of claim 1 requires that the growth of a hyphal network binds discrete particles together as a self-supporting entity. The Examiner has not established that Yamanaka’s hyphae-containing pulp satisfies this element. Nor, with respect to the rejection under 35 U.S.C. § 103(a), has the Examiner shown that Bayal and/or Schirp make up for this deficiency. Appeal 2012-006006 Application 12/001,556 6 In light of the above, we do not sustain the rejections based on Yamanaka. New Ground of Rejection As set forth in FF. 6, Mushroom Growers’ Handbook 2 describes a process of forming an inoculum including a preselected fungus (shiitake spawn); forming a mixture of a substrate of discrete particles (sawdust) and a nutrient material (e.g., “starch-based supplements such as wheat bran, rice bran, millet, rye, and maize”), said nutrient being capable of being digested by said fungi (“These supplements serve as nutrients to prove an optimum- growing medium.”) and allowing said fungus to digest said nutrient material in said mixture over a period sufficient to grow hyphae and to allow said hyphae to form a network of interconnected mycelia cells through and around said discrete particles thereby bonding said discrete particles together to form a self-supporting composite material (see Figures 2A, 2B and associated text). In view of the above, we find claim 1 anticipated under 35 U.S.C. § 102(a) in view of The Mushroom Growers’ Handbook 2. In the event prosecution is resumed, we leave it to the Examiner’s discretion whether to apply this reference to any or all of the remaining claims. SUMMARY We reverse the rejection of claims 1–4, 9, and 27 under 35 U.S.C. § 102(a) as anticipated by Yamanaka. We reverse the rejection of claims 1–9, 27, and 28 sunder 35 U.S.C. Appeal 2012-006006 Application 12/001,556 7 § 103(a) as unpatentable over the combination of Yamanaka, Baysal and Schrip. Pursuant to 37 C.F.R. § 41.50(b), we reject claim 1 under 35 U.S.C. § 102(a) as anticipated by The Mushroom Growers’ Handbook 2. TIME PERIOD FOR RESPONSE This decision contains a new ground of rejection pursuant to 37 C.F.R. § 41.50(b) (effective September 13, 2004, 69 Fed. Reg. 49960 (August 12, 2004), 1286 Off. Gaz. Pat. Office 21 (September 7, 2004)). 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 appellants, 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 proceeding will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1). REVERSED; 37 C.F.R. § 41.50(b) cam Notice of References Cited Application/Control No. 12/001,556 Applicant(s)/Patent Under Patent Appeal No. 2012-006006 Examiner Art Unit 1600 Page 1 of 1 U.S. PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Name Classification A US- B US- C US- D US- E US- F US- G US- H US- I US- J US- K US- L US- M US- FOREIGN PATENT DOCUMENTS * Document Number Country Code-Number-Kind Code Date MM-YYYY Country Name Classification N O P Q R S T NON-PATENT DOCUMENTS * Include as applicable: Author, Title Date, Publisher, Edition or Volume, Pertinent Pages) U Mushroom Grower's Handbook 2, "Shiitake Cultivation," Part 1 Shiitake, 87-90 (2005) V W X *A copy of this reference is not being furnished with this Office action. (See MPEP § 707.05(a).) Dates in MM-YYYY format are publication dates. Classifications may be US or foreign. U.S. Patent and Trademark Office PTO-892 (Rev. 01-2001) Notice of References Cited Part of Paper No.