Ex Parte McIntyre et alDownload PDFPatent Trial and Appeal BoardMay 9, 201814336385 (P.T.A.B. May. 9, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/336,385 07/21/2014 Gavin R. McIntyre 27162 7590 05/10/2018 CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO 5 BECKER FARM ROAD ROSELAND, NJ 07068 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. 225525.66 4671 EXAMINER PYLA, EVELYN Y ART UNIT PAPER NUMBER 1651 MAIL DATE DELIVERY MODE 05/10/2018 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 R. MCINTYRE, GREG TUDRYN, JEFF BETTS, and JACOB WINISKI 1 Appeal2017-006088 Application 14/336,385 Technology Center 1600 Before DONALD E. ADAMS, JOHN G. NEW, and TA WEN CHANG, Administrative Patent Judges. NEW, Administrative Patent Judge. DECISION ON APPEAL 1 Appellants identify Ecovative Design LLC., as the real party-in-interest. App. Br. 1. Appeal2017-006088 Application 14/336,385 SUMMARY Appellant files this appeal under 35 U.S.C. § I34(a) from the Examiner's Final Rejection of claims 1-3, 19, and 20. Specifically, claims 1-3 and 20 stand rejected as unpatentable under 35 U.S.C. § I03(a)(l) as being anticipated by Bayer et al. (US 2009/0307969 Al, December 17, 2009) ("Bayer"). Claim 19 stands rejected as unpatentable under 35 U.S.C. § I03(a) as being obvious over Bayer. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM-IN-PART. NATURE OF THE CLAIMED INVENTION Appellant's invention is directed to a self-supporting composite body comprising a substrate of discrete particles and a network of interconnected mycelia cells extending through and around the discrete particles and bonding the discrete particles together. Abstract. REPRESENTATIVE CLAIM Claim 1 is representative of the claims on appeal and recites: 1. A self-supporting composite body comprising a substrate of discrete particles and a network of interconnected mycelia cells extending through and around the discrete particles and bonding the discrete particles together, said composite body being characterized in being stiff and in having a density of greater than 18 pounds per cubic foot (pcf). Claim App'x. 2 Appeal2017-006088 Application 14/336,385 ISSUES AND ANALYSES We agree in part with the Examiner's findings and conclusion that the appealed claims are anticipated or obvious over the cited prior art, and we adopt the Examiner's conclusions for those claims we affirm. We address the arguments raised by Appellant below. A. Claim 1 Issue 1 Appellant argues that the Examiner erred because Bayer is not directed to methods of preparing self-supporting 3-D fungal composites. App. Br. 2. Analysis The Examiner finds that Bayer discloses methods of preparing self- supporting 3-D fungal composites of various controlled shapes that leverages the fungi's ability to self-assemble into complex 3-D structures having dense, strong tissue that is found in the fruiting body's stipe structure. Final Act. 3 ( citing Bayer ,r 60). The Examiner finds the stipe comprises mycelium which is the network or hyphae that support the fruiting body. Id. (citing Bayer ,r,r 34, 121). The Examiner further finds that Bayer discloses that aggregates or particles may be placed in the path of the growing fruiting body (comprising the network ofhyphae), by which the particles or aggregates become embedded within the produced material during the growth process to change the product's physical properties. Id. (citing Bayer ,r 41, claim 7). 3 Appeal2017-006088 Application 14/336,385 Appellants argue that Bayer is not directed to a method of preparing self-supporting 3-D fungal composites as posited by the Examiner but is directed to a method of preparing only mycelial structures. App. Br. 3 ( citing Bayer ,r,r 14--16). Furthermore, Appellants argue, and notwithstanding the Examiner's findings to the contrary, the self-supporting mycelia structures of Bayer are not composites but instead are structures with a tissue type found in the stipe of a fruiting body (mushroom) that is free of discrete particles. Id. at 4 ( citing Bayer ,r 60). Appellants next point to N.A.R. Grow and G.M Gadd, THE GROWING FUNGUS, 436-37 (1995) ("Grow") as disclosing that the stipe of a mushroom has hyphae that grow in substantially parallel relation and do not form interconnected mycelia cells. Id. (also citing Fig. 20.7(d)). Appellants also argue that the Examiner's finding that Bayer's disclosure of growing the primordia through particles in the path of the growing fruiting body (mushroom) would result in the hyphae extending about the particles while remaining parallel and would not result in a network of interconnected mycelia cells extending through and around the discrete particles and bonding the discrete particles together. App. Br. 4. Appellants also point to Figure 21 of Bayer, which the Examiner finds illustrates a self-supporting 3-D composite, depicts only a finished fungal part that not a composite. Appellants point next to Example 6 of Bayer, which they argue the Examiner relies upon as disclosing steps used in preparing a self-supporting composite. App. Br. 5 (citing Bayer ,r,r 112-17). Appellants contend that the cited portions of Bayer, to the contrary, disclose steps in producing a 4 Appeal2017-006088 Application 14/336,385 fruiting body without particles and not a composite body, as required by claim 1. Id. Finally, Appellants argue that the Examiner finds the fungal features 10 and 1 Oa of Bayer to be a composite material with waste cotton burrs and cottonseed hulls. App. Br. 5. Appellants assert, to the contrary, that the waste cotton burrs and cottonseed hulls of Bayer remain in the incubation bag 1 from which the fungal features are grown. Id. We are not persuaded by Appellants' arguments. As an initial matter, Appellants' claims are directed, not to a method of making the claimed self- supporting, mycelia-based, composite structure, but rather to the structure itself (i.e., "A self-supporting composite body comprising .... "). Consequently, Appellants' arguments that Bayer does not teach a method of making the claimed composition are not relevant to our anticipation analysis. Rather, we look to whether the Examiner's findings and conclusions establish a prima facie case that Bayer teaches all of the limitations of the composition recited in the claims. See Adv. Display Sys., Inc. v. Kent State Univ., 212 F.3d 1272, 1282 (Fed. Cir. 2000) (To show anticipation, the proponent must show "that the four comers of a single, prior art document describe every element of the claimed invention"). Bayer discloses that: Our method differs from other methods focussed [sic] on harnessing mycelia products, [ ... ] because it leverages the fungi's ability to self[ -]assemble its modular cells into complex self[-]supporting 3-D structure. This results in self[-]supporting mycelia structures with have a controlled 3-D shape .... pulp. In our embodiments, this mycelia tissue is allowed to self-assemble under the environmental conditions which produce dense strong tissue, such as the tissue type which is found in a fruiting bodies stipe in nature. Furthermore, the mycelia tissue contemplated in 5 Appeal2017-006088 Application 14/336,385 our embodiments is formed into a 3-d structure with dimensions controlled along each of the shapes surfaces. Finally, in our process the final product is a self-supporting 3-d structure .... Bayer ,r 60. Bayer also discloses that: "Mycelium is the network ofhyphae that support the fruiting body and are typically hygroscopic." Id. at ,r 121. Bayer further discloses: In this invention, the enclosure that surrounds the primord[i]a controls the above listed conditions either actively or passively. Aggregates or particles may be placed in the path of the growing fruiting body, becoming embedded within the material during the growth process to change the product's physical properties. Bayer ,r,r 41 ( emphasis added). Finally Bayer discloses another embodiment in which: Dryad's Saddle (P. squamosus) was cultured on a substrate comprised of 75% waste cotton burrs from the USDA located in Lubbock Tex. and 25% cottonseed hulls from Planters Cotton Mill in Arkansas. The substrate was buffered with 1 % gypsum and was mixed at a 100% moisture content. The cottonseed hulls and cotton burrs were sterilized by soaking in a 35% hydrogen peroxide solution for 25 minutes. The gypsum, cotton burrs, and cotton seed hulls, were than [sic] poured into 5 cubic foot flexible opaque bags with breathable membranes and inoculated using 2 liters of liquid inoculum. Bags were incubated for 45 days at 21 degrees Celsius. When then fungal stipe tissue has fully filled enclosure 4 and has reached both orifices, the fruiting body formed by fungal feature 10a and fungal feature 10 was cut away from the flexible bag 1 using a sterile scalpel and removed from enclosure 4 by opening enclosure 4 in a clamshell fashion along separation line 12 as pictured in FIG. 20. 6 Appeal2017-006088 Application 14/336,385 Id. at ,r,r 112, 116. We therefore agree with the Examiner that Bayer discloses: "a self-supporting body comprising ... a network of interconnected mycelia." Furthermore, Bayer teaches that the self-supporting body is a composite structure, including discrete particles. Appellants' Specification provides no express definition of the claim term "particle" and we consequently afford that claim term its broadest reasonable interpretation consistent with the Specification. See In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). Appellants' Specification discloses, by way of example, that: "The production requires very little energy as the fungus does most of the work by growing and binding particles and fibers together with energy the fungus has gained metabolizing the particles and fibers and any nutritional supplements without any active inputs." Spec. 10. We agree with the Examiner that Bayer's disclosure in paragraph [0041] that: "[ a ]ggregates or particles may be placed in the path of the growing fruiting body, becoming embedded within the material during the growth process to change the product's physical properties" teaches a composite composition of hyphae and discrete particles in which mycelial cells extend through and around the discrete particles and bond the discrete particles together, as recited in claim 1. Similarly, Example 6 discloses a composite consisting of mycelia, waste cotton burrs and cottonseed hulls forming a self-supporting structure in which the mycelial cells extend through and around the discrete particles and bond the discrete particles together, as recited in claim 1. We consequently affirm the Examiner's rejection of claim 1. B. Claims 2 and 3 7 Appeal2017-006088 Application 14/336,385 Issue Appellants argue the Examiner erred because Bayer does not disclose the self-supporting composite body having a modulus of elasticity of at least 6640 psi ( claim 2) or 8430 psi ( claim 3) and a flexural strength of at least 172 psi (claim 2) or 222 psi (claim 3). App. Br. 6-7. Analysis Appellants argue that Bayer is devoid of any teaching of the modulus of elasticity and a flexural strength of the disclosed fruiting bodies. App. Br. 6. Furthermore, Appellants argue, the Examiner has not provided any extrinsic evidence to make clear that the missing limitations (i.e., that the fungal features 10 and 1 Oa of Bayer have the recited moduli of elasticity and flexural strengths) is necessarily present in the embodiments disclosed Bayer. Id. at 7. The Examiner responds that Bayer discloses the tensile (i.e., flexural strength), compressive and shear strengths of the produced products and how the moisture content effects the elastic nature of the product. Ans. 8. The Examiner points to paragraph [0123] of Bayer, which the Examiner finds specifically addresses the elastic modulus. Id. The Examiner also points to paragraph [0020] of Bayer, which discloses: Density calculations of solid sections of formed and processed fruiting bodies have yielded a higher density for stipe ( stalk) fibers of up to 3 50 kg/m3, while the pelius (cap) had a mean density of 180 kg/m3• Spore tube densities on formed and processed sections of G. appalantum and F. famentarius are 390 kg/m3 and 340 kg/m3 respectively. These densities are comparable to the bulk densities of marine balsa wood, which 8 Appeal2017-006088 Application 14/336,385 ranges from 80 kg/m3 upwards to 350 kg/m3, and the densities of synthetic plastic foams. Ans. 8. Finally, the Examiner finds that the claims are reciting the intended result of a fungal self-supporting composite having a density of greater than 18 lbs/ft3• Ans. 8. The Examiner finds Bayer's self-supporting composite is substantially identical to an embodiment of the composite disclosed in Appellants' Specification. Id. (citing Spec. 3). The Examiner finds Bayer discloses employing the same method steps, to incorporate the particles into the composition, and therefore the recited properties are inherent in the compositions disclosed by Bayer. Id. at 8-9. We do not find the Examiner's findings persuasive of anticipation. Paragraph [0020] of Bayer relates to densities, and the Examiner makes no explicit evidence-supported finding that the disclosed densities correspond to the properties recited in claims 2 and 3. Paragraphs [0122]-[0124] of Bayer recite merely that: "As moisture content increases: elasticity increases, while elastic modulus decreases, tensile strength increases." However, Bayer discloses no values for these properties, disclosing only an unquantified relationship between moisture content, elastic modulus, and tensile strength. Nor are we persuaded that the methods disclosed by Bayer and Appellants' Specification are identical such that the recited properties are necessarily inherent in the disclosures of Bayer. The "very essence of inherency is that one of ordinary skill in the art would recognize that a reference unavoidably teaches the property in question." Agilent Techs., Inc. v. Affymetrix, Inc., 567 F.3d 1366, 1383 (Fed. Cir. 2009). Paragraph [0094] of Bayer recites: 9 Appeal2017-006088 Application 14/336,385 Dryad's Saddle (Polyporus squamosus) was cultured on a substrate comprised of 75% waste cotton burrs from the USDA located in Lubbock Tex. and 24% cottonseed hulls from Planters Cotton Mill in Arkansas. The substrate was buffered with 1 % gypsum and was mixed at a 100% moisture content. The cottonseed hulls and cotton burrs were sterilized by soaking in a 35% hydrogen peroxide solution for 25 minutes. The gypsum, cotton burrs, and cotton seed hulls, were than [sic] poured into 5 cubic foot flexible opaque bags with breathable membranes and inoculated using 2 liters of liquid inoculum. Bags were incubated for 45 days at 21 degrees Celsius. The disclosure of Appellants' Specification upon which the Examiner relies states: In accordance with the invention, the basic steps of the method include: 1. Obtain substrate constituents, including fungal inoculum, a bulking collection of particles and/or fibers, a nutrient source or variety of nutrient sources, and water. 2. Combine the substrate constituents by m1xmg together in volumetric or mass ratios to obtain a solid media with the inoculum ( cell and/ or tissue culture) added during or following the mixing process. 3. Place the growth media in an enclosure or series of enclosures of the desired geometry. 4. Allow the mycelia to grow through the substrate, creating a composite with a geometry matching the enclosure. a. Repeat steps 1-3 for applications where materials are layered or embedded to create the desired final composite media 10 Appeal2017-006088 Application 14/336,385 and adds: "Alternatively to steps 3 and 4, the growth media may be grown as a solid mass, and then ground up for later steps or placed in an enclosure of the desired shape and then be allowed to regrow into that shape." Spec. 3--4. We do not find that the methods disclosed by Bayer and the Specification are identical or substantially identical such that the methods disclosed by Bayer would necessarily have the properties recited by the claims. We therefore find the Examiner has not established a prima facie case of anticipation and we reverse the Examiner's rejection of claims 2 and 3. C. Claim 20 Issue Appellants argue the Examiner erred because Bayer does not disclose: "having a metal salt therein to modulate the electrical conductivity thereof," as recited in claim 20. App. Br. 7. Analysis Appellants argue that the gypsum in the substrate in the inoculation bag 1 of Bayer is not disclosed as being in the fungal features 10 and 1 Oa grown from the bag 1. App. Br. 8. Appellants also argue that there is no disclosure in Bayer that the gypsum therein is a mineral gypsum. Id. Finally Appellants argue that there is no disclosure in Bayer that the 1 % gypsum in the substrate in the inoculation bag 1 modulates the electrical conductivity of the substrate or the fungal features 10 and 1 Oa grown from the bag 1. Id. We are not persuaded by Appellants' arguments. Paragraph [0094] of Bayer, quoted in full, supra, discloses in relevant part that: "[t]he substrate 11 Appeal2017-006088 Application 14/336,385 was buffered with 1 % gypsum" and that: "[t]he gypsum, cotton burrs, and cotton seed hulls, were than [sic] poured into 5 cubic foot flexible opaque bags with breathable membranes and inoculated." Gypsum is commonly known in the art as calcium sulfate dihydrate (Ca2S04·2H20) and is indisputably a metallic salt. See, e.g., https://geology.com/minerals/gypsum.shtml (last visited April 25, 2018). Appellants adduce no evidence to demonstrate that a skilled artisan would not understand the gypsum disclosed in Bayer as the mineral gypsum. Furthermore, although Bayer does not expressly teach that gypsum was added to "to modulate the electrical conductivity" of the composition, we agree with the Examiner that a person of ordinary skill in the art would understand that the addition of a metallic salt to a moisture-containing composition would necessarily modulate the electrical conductivity of the solution. We affirm the Examiner's rejection of claim 20. D. Claim 19 Issue Appellants argue that the Examiner erred because Bayer neither teaches nor suggests a self-supporting composite body "having at least one other material selected from one of wooden veneers, woven or nonwoven fibers, metal sheets, porous stone, and plastics embedded into at least one exterior surface," as recited in claim 19. App. Br. 8. Analysis Appellants note that the Examiner relies upon Figure 6 of Bayer as disclosing a finished fungal portion laminated between two sheets of stiff 12 Appeal2017-006088 Application 14/336,385 plywood veneer. App. Br. 8. Appellants argue the Examiner does not distinguish between a plywood sheet laminated to a fungal part and a plywood sheet embedded in a fungal part. Id. According to Appellants, in the case of a laminated plywood sheet, the plywood sheet and the fungal part are in surface-to-surface contact whereas in the case of an embedded plywood sheet, the plywood sheet in pressed into (and below) the surface of the fungal part. Id. at 9. Appellants contend that there is no teaching or suggestion of Bayer that would motivate one pf ordinary skill in the art to modify the fungal part of Figure 6 so as to embed a plywood sheet into and below the surface of the fungal portion. Id. The Examiner responds that Example 4 of Bayer discloses a finished fungal part laminated between two sheets of stiff plywood veneer Ans. 11 ( citing Bayer ,r 105). The Examiner finds that, based on Figure 22 of Bayer, and because lamination is an adhesive process, the lamination disclosed by Bayer is considered to result in embedding of the plywood veneer into the exterior surface of the fungal composite. Id. The Examiner states that Appellants have not provided any probative evidence of any significant differences between being laminated and embedded. Id. We are not persuaded by Appellants' arguments. Paragraph [0105] of Bayer discloses: "FIG. 14 shows the mass of fungal tissue from example 3, i.e.[,] a finished fungal part 8, laminated between two sheets of a stiff veneer 9 comprised of 1/8" thick plywood .... " Appellants' Specification discloses: VIII. Materials such as wooden veneers, woven or nonwoven fibers, metal sheets (solid or expanded), porous stone, and/or plastics may be embedded into the material by adding them prior to compression. This may improve properties such as flexibility, stiffness, strength, or screw withdrawal load. 13 Appeal2017-006088 Application 14/336,385 a. These materials can be added to an external surface, an interface between layers, or be driven into the composite. Spec. 9. We agree with the Examiner that whether the laminated wood depicted in Figure 14 is merely adhered to the outer surface of the composition or pressed into it (i.e., embedded) would have been an obvious design choice to a person of ordinary skill in the art and is determined solely by the amount of pressure applied to the outer surface of the wood laminate. Appellants have pointed to no functional or unexpected differences between the laminated composition taught by Bayer and their composition, in which the laminated wood is pressed into the surface. See In re Rice, 341 F.2d 309, 144 USPQ 4 7 6 ( CCP A 1965) ("Appellants have failed to show that the change [in the claimed invention] as compared to [the reference], result in a difference in function or give unexpected results"). We consequently affirm the Examiner's rejection of claim 19. DECISION The Examiner's rejection of claims 1 and 20 as unpatentable under 35 U.S.C. § 102(a)(l) is affirmed. The Examiner's rejection of claims 2 and 3 as unpatentable under 35 U.S.C. § 102(a)(l) is reversed. The Examiner's rejection of claims 19 as unpatentable under 35 U.S.C. § 103(a) is affirmed. 14 Appeal2017-006088 Application 14/336,385 No time period for taking any subsequent action in connection with this appeal maybe extended under 37 C.F.R. § 1.136(a)(l). See 37 C.F.R. § 1.136(a)(l )(iv). AFFIRMED-IN-PART 15 Copy with citationCopy as parenthetical citation