Ex Parte McIntyre et alDownload PDFPatent Trial and Appeal BoardMay 24, 201612932640 (P.T.A.B. May. 24, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/932,640 03/02/2011 7590 05/24/2016 Francis C Hand, Esq, c/o Carella, Byrne, Cecchi, Olstein, Brody and Agnello, P.C 5 Becker Farm Road Roseland, NJ 07068 FIRST NAMED INVENTOR Gavin Mcintyre 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 ATTORNEY DOCKET NO. CONFIRMATION NO. 3913 EXAMINER PYLA, EVELYN Y ART UNIT PAPER NUMBER 1651 MAILDATE DELIVERY MODE 05/24/2016 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 GA VIN MCINTYRE, ALLISON POETZSCH, SUE VAN HOOK, and DANIEL FLAGG 1 Appeal2014-005918 Application 12/932,640 Technology Center 1600 Before ERIC B. GRIMES, FRANCISCO C. PRATS and RACHEL H. TOWNSEND, Administrative Patent Judges. TOWNSEND, Administrative Patent Judge. DECISION ON APPEAL This is an appeal under 35 U.S.C. § 134(a) involving claims to methods of producing a composite material from a fungal tissue all of which have been rejected as obvious. We have jurisdiction under 35 U.S.C. § 6(b ). We affirm. STATEMENT OF THE CASE Fungal composite products and processes for making them are known in the prior art, and there is a commercial process that employs a pasteurization step to clean the raw materials prior to fungal inoculation. 1 Appellants identify the Real Party in Interest as Ecovative Design LLC. (Appeal Br. 2.) Appeal2014-005918 Application 12/932,640 (Spec. 2.) However, according to Appellants' specification, pasteurization can be "expensive, time consuming and effective for only 5 to 7 days." (Id.) Appellants' specification indicates that it is an object of the claimed invention to reduce the cost to manufacture a sterilized composite material composed of fungal tissue. (Id.) Claims 1-10 and 14--16 are on appeal. Claims 1, 6, and 10 are illustrative and read as follows: 1. A method for producing a composite material comprising the steps of providing a substrate of a raw material composed of discrete particles of an agricultural byproduct; adding a plant essential oil emulsion to said substrate in an amount and for a time sufficient to effectively inhibit microbial growth on said substrate and to form a mixture therewith; thereafter adding an inoculum including a preselected fungus to said mixture; and allowing the fungus to grow hyphae and to allow the hyphae to form a net\~1ork of interconnected mycelia cells through and around the discrete particles thereby bonding the discrete particles together to form a self-supporting composite material. 6. The method as set forth in claim 1 wherein at least a portion of said emulsion is removed from said mixture of raw material and emulsion prior to inoculation with said fungus. 10. The method as set forth in claim 1 further comprising the step of de-volatizing the substrate of any remaining emulsion prior to said step of adding the inoculum. (Appeal Br. 11-12.) 2 Appeal2014-005918 Application 12/932,640 There is a single rejection by the Examiner before us on review, which is that claims 1-10 and 14--16 are unpatentable under 35 U.S.C. § 103 (a) over Kalisz, 2 Armstrong, 3 and Angelini. 4 (Final Action 8.) DISCUSSION Claim 1 The Examiner finds Kalisz teaches a method of making a commercially useful molded fungal mycelium composite by growing live mycelium in mold cavities. (Final Action 4--5, 8.) The method involves adding a fungal inoculant, such as Ganoderma lucidum, Pleurotus ostreatus and Lentinula edodes, to an aggregate nutrient source, such as lignin or wood by-products, to form a slurry. (Final Action 8-9; Ans. 2 and 10.) The slurry is injected into a mold cavity where fungal mycelium growth takes place. (Final Action 8; Ans. 2.) The Examiner further finds that during the fungal growth phase in Kalisz, "the nutrient aggregate may act as a binder as the fungal inoculum grows into the aggregate forming live mycelium." (Final Action at 8-9 (citing Kalisz i-f 68).) The Examiner finds this teaching meets the claim requirement of "allowing fungus to grow to form a network of mycelia cells thereby bonding the discrete particles together to form a self-supporting composite material." (Id.) 2 Kalisz et al., US 2011/0265688 Al, published Nov. 3, 2011. 3 Armstrong et al., US 5,149,715, issued Sept. 22, 1992. 4 P. Angelini, et al., Effect of antimicrobial activity of Melaleuca alternifolia essential oil on antagonistic potential of Pleurotus species against Trichoderma harzianum in dual culture, World J. Microbiol. Biotechnol., 24: 197-202 (2008). 3 Appeal2014-005918 Application 12/932,640 The Examiner finds that Kalisz does not teach the claim limitation of adding a plant essential oil emulsion to the nutrient source. (Final Action 9.) The Examiner explains, however, that microbial contamination of the nutrient sources taught in Kalisz for fungal cultivation was a known problem, and to solve that problem it was known to use plant oils, including in the form of an emulsion. (Final Action 9--10 (citing Angelini and Armstrong); Ans. 5.) In particular, the Examiner explains that Angelini discloses, a) lignocellulosic waste is used as a nutrient source in commercial cultivation of fungi, such as Pleurotus, b) Trichoderma is a common contaminant of that nutrient source, c) when present, Trichoderma results in the fungal disease "green mould" that ruins the Pleurotus crop, and d) tea tree oil can be used to kill off the antagonistic Trichoderma fungi on the nutrient substrate, without deleterious effects to the commercially desired fungal product (Final Action 9; Ans. 9.) The Examiner finds that Armstrong, like Angelini, is concerned with combating fungal diseases of commercial fungal products, including that caused by Trichoderma. (Final Action 10; Ans. 10.) Armstrong teaches that adding a plant essential oil, such as cinnamon oil comprising cinnamaldehyde, to the fungal growth substrate prevents antagonistic fungi growth and does so without deleteriously affecting the desired fungal product. (Final Action 10; Ans. 10.) The Examiner further finds that Armstrong teaches the plant essential oil can be prepared as an emulsion. (Final Action 10; Ans. 4--5.) 4 Appeal2014-005918 Application 12/932,640 Based on these teachings, the Examiner concludes that it would have been obvious to one of ordinary skill in the art to add a plant essential oil emulsion to the nutrient substrate of Kalisz to disinfect the substrate and thereby prevent toxic fungi growth, such as Trichoderma, in the molded composite. (Final Action 10-11.) The Examiner explains that the motivation to so improve the Kalisz method would have been to prevent significant economic loss that would result from producing a contaminated fungal composite. (Final Action 11.) Regarding dependent claims 6, 10, 15, and 16 concerning removal or deactivation of the emulsion prior to addition of the fungal inoculant, the Examiner finds that it would have been obvious to perform this type of removal to prevent oversaturation or any inhibitory effects that the plant essential oil emulsion may have on the desired fungal inoculum. (Final Action 12-13.) We agree with the Examiner's fact-findings and conclusions of obviousness. Appellants' argument that Armstrong, Angelini, and Kalisz are non- analogous art is not persuasive. (Appeal Br. 6.) It may be that Kalisz is not directed to fungal cultivation for the purpose of selling the fruiting body, but Kalisz' s method of forming molded parts for industrial use employs fungal cultivation, i.e., growing live mycelium. (Kalisz Abstract and i-f 3.) In Kalisz, cultivating the fungal inoculant with a nutrient substrate is how the live mycelium is grown. (Kalisz i-fi-163 and 68; see also Final Action 4 (citing Kalisz i-f 65) (referring to growth that results in forming "a new fungal colony of fungal mycelia").) This same mycelium growth is 5 Appeal2014-005918 Application 12/932,640 necessary to ultimately produce the fruiting body described in Angelini and Armstrong; this is implicit in Angelini' s assessment of mycelium growth inhibition to determine the efficacy of tea tree essential oil in preventing or controlling Trichoderma contamination of Pleurotus mushroom crops. (Angelini 198.) Thus, one of ordinary skill in the art would have considered Kalisz, Armstrong, and Angelini to be analogous to one another and the Examiner appropriately relied on them in rejecting the claims as obvious. See e.g., In re Oetiker, 977 F.2d 1443, 1447 (Fed. Cir. 1992). Furthermore, contrary to Appellants' argument (Appeal Br. 6), the Examiner provided a well-reasoned explanation concerning the motivation to combine the teaching of using a plant essential oil emulsion in the Kalisz fungal cultivation method-to avoid economic loss by getting rid of undesirable microbial growth that might otherwise result from contaminants present on the fungal growth substrate. (Final Action 10-11; Ans. 10.) One of ordinary skill in the art would have expected addition of the plant essential oils taught to be effective antimicrobials in Angelini and Armstrong also would be able to remove or reduce any deleterious microbes present on the Kalisz nutrient aggregate substrate (lignin or other cellulosic substrates) given that a) Angelini identified Trichoderma as present on lignocellulosic substrates and b) both Angelini and Armstrong identify Trichoderma as interfering with the same genera of fungus that Kalisz identifies for use in his mycelium growth method, i.e., Pleurotus ostreatus and Lentinula edodes. (Kalisz i-fi-161 and 63; Angelini (Introduction); Armstrong 4:28-37 and 5:40-46.) 6 Appeal2014-005918 Application 12/932,640 We also do not find persuasive Appellants' argument that the combination of Kalisz, Angelini, and Armstrong does not meet the limitation of claim 1 requiring "adding a plant essential oil emulsion to said substrate ... to effectively inhibit microbial growth on said substrate and to form a mixture therewith" because Kalisz uses a liquid aggregate as the nutrient substrate (Appeal Br. 7). According to Appellants, Kalisz's liquid substrate cannot be the claimed substrate, because it is not "composed of discrete particles" (Reply Br. 4), and as such, the addition of plant essential oil would not be added to the claimed substrate (Appeal Br. 7). Appellants' argument ignores that Kalisz teaches the liquid substrate is a "liquid aggregate" (Kalisz i-f 68), which Kalisz defines as "a mixture of finely ground aggregate 34 and a liquid 36" (Kalisz i-f 67). Appellants have not provided convincing argument or evidence that Kalisz's finely ground aggregate and liquid mix does not include discrete particles. The addition of plant essential oil to such a substrate, as taught by Angelini and Armstrong, would form a mixture with the substrate as required by claim 1 and would be expected to inhibit microbial growth on the substrate in light of the teachings of Angelini (Abstract) and Armstrong (Ex. 3). Appellants also argue that one of ordinary skill in the art would not be motivated by the teachings of Angelini or Armstrong to incorporate the tea tree essential oil of Angelini or the compound of Armstrong into the molded parts described in Kalisz because neither the tea tree essential oil of Angelini, nor the compound of Armstrong, is disclosed as being incorporated in the mushrooms. (Appeal Br. 7 (emphasis added).) As the Examiner pointed out, however, no claim requires incorporation of the plant 7 Appeal2014-005918 Application 12/932,640 essential oil emulsion into the grown mushrooms, i.e., the grown hyphae (Ans. 11 ). Claim 1 recites that the plant essential oil emulsion that is added "to said substrate" forms a "mixture therewith" and that hyphae form "a network of interconnected mycelia cells through and around the discrete particles .... " (Appeal Br. 11.) Neither of these limitations requires the plant essential oil emulsion to be on the discrete particles of the substrate. But even if required, such would be the inherent results of Kalisz as modified by Angelini and Armstrong in light of: a) Angelini and Armstrong's teaching to add the plant essential oil to the nutrient substrate (Angelini (Abstract); Armstrong 3:47-51) and b) Kalisz's explicit disclosure that the nutrient substrate "may also act as a binder dispersed throughout the slurry 37 as it grows into the live mycelium 45" (Kalisz i-f 68). Appellants argue in their Reply Brief, for the first time, that "[t]here is no evidence that Kalisz allows fungus to grow to form a network of mycelia cells thereby bonding the discrete particles together to form a self-supporting composite material." (Reply Br. 2.) Appellants contend that the Examiner's Answer raised the new issue That Kalisz teaches that the nutrient aggregate may act as a binder as the fungal inoculum grows into the aggregate forming live mycelium (.i.e. allowing fungus to grow to form a network of mycelia cells thereby bonding the discrete particles together to form a self-supporting composite material (citing paragraph [0068)) (Examiner's Answer, page 3) (Reply Br. 1-2.) The Examiner, however, presented this exact teaching in the Final Action stating: Kalisz teaches that the nutrient aggregate may act as a binder as the fungal inoculum grows into the aggregate forming live mycelium (i.e. allowing fungus to grow to form a network of mycelia cells thereby 8 Appeal2014-005918 Application 12/932,640 bonding the discrete particles together to form a self-supporting composite material) (paragraph [0068]). (Final Action at 8-9.) The Reply Brief is not an opportunity to make arguments that could have been made during prosecution, but were not. Nor is the Reply Brief an opportunity to make arguments that could have been made in the principal brief on appeal to rebut the Examiner's rejections, but were not. We find Appellants' attempt to introduce its belated argument in the Reply Brief to be improper. And in any event, we disagree with Appellants' interpretation of i-f 68 of Kalisz as not teaching the formation of a network of mycelia where discrete particles of the substrate are bonded within that network (Reply Br. 2). As already discussed, Kalisz teaches the nutrient substrate can be a liquid aggregate (nutrient that has finely ground aggregate, i.e., discrete particles, in a liquid) and specifically notes that the aggregate may act as a binder throughout the slurry as the live mycelium is grown in it. (Kalisz i-f 68.) That Kalisz contemplates this binding results in a composite material that incorporates particulates of the nutrient substrate particles into the mycelium is further evidenced by i-f 71, which discloses adding a nanoparticle into the aggregate and obtaining a "nanoparticle/mycelium composite material." For the reasons discussed, we sustain the Examiner's obviousness rejection of claim 1 based on the combination of Kalisz, Angelini, and Armstrong. Claims 2-5, 7-9, 11-13, and 14 have not been argued separately and therefore fall with claim 1. 37 C.F.R. § 41.37(c)(l)(iv). Claims 6 and 10 Appellants argue the Examiner's rejection of claims 6 and 10 is improper because "no evidence" was offered to support the position that it 9 Appeal2014-005918 Application 12/932,640 would have been obvious "to remove excess plant essential oil prior to fungal inoculation to prevent oversaturation and any inhibitory effects that the plant essential oil may have on the desired fungal inoculum." (Appeal Br. 7-8.) An express suggestion in a reference is not necessary to a conclusion of obviousness. KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007) ("The obviousness analysis cannot be confined by ... overemphasis on the importance of published articles and the explicit content of issued patents."). "Common sense has long been recognized to inform the analysis of obviousness if explained with sufficient reasoning .... [U]se of common sense does not require a 'specific hint or suggestion in a particular reference,' only a reasoned explanation that avoids conclusory generalizations." Peifect Web Techs., Inc. v. Info USA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009). The Examiner provided such common sense reasoning-preventing inhibitory effects on the desired inoculum by oversaturation with a plant essential oil known to inhibit fungal growth, which the Appellants do not challenge other than for its alleged lack of evidentiary footing. Appellants do not explain, nor do we discern, why the Examiner's reasoning is inconsistent with the common sense a person of ordinary skill in the art would bring to the teachings of the cited references. Thus, we sustain the Examiner's obviousness rejection of claims 6 and 10 based on the combination of Kalisz, Angelini, and Armstrong. Claims 15 and 16 were not argued separately and therefore fall with claims 6 and 10. SUMMARY We affirm the rejection of claims 1-10 and 14--16 under 35 U.S.C. § 103(a) as being unpatentable over Kalisz, Armstrong, and Angelini. 10 Appeal2014-005918 Application 12/932,640 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 11 Copy with citationCopy as parenthetical citation