Ex Parte McIntyre et al

Patent Trial and Appeal Board

Aug 16, 2016

13617611 (P.T.A.B. Aug. 16, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/617,611 09/14/2012 Gavin Mcintyre
27162 7590 08/16/2016
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.
225525.28 8315
EXAMINER
FAN,LYNNY
ART UNIT PAPER NUMBER
1651
MAILDATE DELIVERY MODE
08/16/2016 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, EBEN BA YER, and
CHRISTOPHER SCULLY
Appeal2015-003435
Application 13/617 ,611 1
Technology Center 1600
Before ELIZABETH A. LA VIER, RY ANH. FLAX, and
KRISTI L. R. SA WERT, Administrative Patent Judges.
LA VIER, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellants seek reversal of the
Examiner's rejections of claims 1, 2, 5, 6, 9, and 10. We have jurisdiction
under 35 U.S.C. § 6(b). For the reasons set forth below, we AFFIRM-IN-
PART.
1 Appellants state the real party in interest is Ecovative Design LLC. Appeal
Br. 2.
Appeal2015-003435
Application 13/617,611
BACKGROUND
The Specification relates to composite materials comprising
saphrophytic fungi and particulate materials. See Spec. 1-2. Claims 1 and
10 are representative:
1. A composite material comprising
a saprophytic fungi strain characterized in producing an enzyme
capable of breaking down polycyclic aromatic hydrocarbons
and
a mass of particles wherein said fungi forms a plurality of
hyphae enveloping and surrounding said particles to form a thin
dehydrated self-supporting mat of a thickness of less than one
inch.
10. A composite material comprising a mass of pellets, each
said pellet composed of a saprophytic fungi strain characterized
in producing an enzyme capable of breaking down animal
waste and a particulate material wherein said fungi forms a
plurality of hyphae bonded to said particulate material.
Substitute Claims Appendix 1.
REJECTIONS MAINTAINED ON APPEAL
1. Claim 10 stands rejected under 35 U.S.C. § 102, as anticipated
by Bayer,2 as evidenced by Norvell. 3 Ans. 4.
2 Bayer et al., US 2008/0145577 Al, published June 19, 2008.
3 Lorelei L. Norvell, Fungi, Encyclopedia.com (2002).
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Appeal2015-003435
Application 13/617,611
2. Claims 1, 2, 5, 6, and 9 stand rejected under 35 U.S.C. § 103, as
unpatentable over Bayer, Kamzolkina,4 and Novoselova,5 as
evidenced by Chaudhary6 and Peng.7 Ans. 5.
DISCUSSION
A. Section 102 Rejection
Appellants argue, inter alia, that Bayer fails to disclose the "mass of
pellets" of claim 10, insofar as claim 10 requires each pellet to comprise
both a saprophytic fungi strain and a particulate material. See Appeal Br. 5;
Reply Br. 2-3. In response, the Examiner states:
Bayer does teach a self-supporting composite material
comprising a fungus and a substrate of discrete particles
wherein said fungus grows hyphae and allows the hyphae to
form a network of interconnected mycelia cells through and
around the discrete particles thereby bonding the discrete
particles together, thereby the self-supporting composite
material of Bayer comprises a mass of pellets as instantly
claimed.
Ans. 7-8. However, as indicated in the Examiner's first sentence quoted
above, it is Bayer's entire composite material that comprises a fungus and
4 Kamzolkina et al., Micromorphological Features of Pleurotus pulmonarius
(Fr.) Que!. and P. ostrreatus (Jacq.) P. Kumm. Strains in Pure and Binary
Culture with Yeasts, 48 TSITOLOGIIA 153---60 (2006) (English language
abstract only, available at http://www.ncbi.nlm.nih.gov/pubmed/16737183
(last visited July 17, 2013)).
5 Novosel ova et al., Cocultivation of Pleurotus ostreatus (Jacq.) P. Kumm.
with Yeasts, 66 Moscow UNIV. BIO. SCI. BULLETIN 102-105 (2011).
6 Chaudhary et al., Understanding Rice Hull Ash as Fillers in Polymers: A
Review, 1 SILICON CHEM.281-289 (2002).
7 Peng et al., Microbial Biodegradation of Polyaromatic Hydrocarbons, 32
FEMS MICROBIOL. REV.927-955 (2008).
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Appeal2015-003435
Application 13/617,611
discrete particles, not the discrete particles themselves. The Examiner does
not direct us to any disclosure in Bayer that Bayer's "discrete particles" may
themselves contain fungi, and we are aware of none. Nor does the Examiner
suggest that Bayer's "composite material" reads on the "each said pellet"
language of claim 10. The examples of "discrete particles" provided in
Bayer include various materials, including perlite, rice hulls, recycled
sawdust, and synthetic polymers, see Bayer ,-r 23, but not fungi. Therefore,
the claim is not anticipated by the reference.
Accordingly, we reverse the rejection of claim 10.
B. Section 103 Rejection
Appellants proffer two arguments in regard to the non-obviousness of
claim 1, neither of which is persuasive. First, Appellants acknowledge that
Peng teaches that living fungi metabolize polycyclic aromatic hydrocarbons,
but assert that "[t]here is no teaching in Peng that dead fungi can release an
enzyme capable of breaking down polycyclic aromatic hydrocarbons."
Appeal Br. 6. As claim 1 does not specify whether the fungi are living or
dead, this argument is unpersuasive. Second, Appellants take issue with the
Examiner's reasoning that the recited thickness (less than one inch) of the
dehydrated mat of claim 1 would have been obvious given the disclosures in
Bayer. Id. The Examiner finds:
However, Bayer does teach a grid based mycelium wherein grid
squares have an edge length of 1 mm and mycelium is growing
through the grids to form mycelia mat (Example 9). Thus, at
the time of the claimed invention, it would have been obvious
to one of ordinary skill in the art to optimize the dimension of
the mat since Bayer discloses that the composite materials can
have various size and shape (0073).
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Appeal2015-003435
Application 13/617,611
Final Action 5. We discern no error in the Examiner's analysis. CJ: KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007) ("A person of ordinary
skill is also a person of ordinary creativity, not an automaton.").
Accordingly, we affirm the rejection of claim 1.
Appellants offer no separate arguments for claims 2, 5, 6, and 9,8 see
Appeal Br. 7, which depend from claim 1. These claims fall with claim 1.
See 37 C.F.R. § 41.37(c)(l)(iv).
CONCLUSION
The rejection of claim 10 under 35 U.S.C. § 102 is reversed. The
rejection of claims 1, 2, 5, 6, and 9 under 35 U.S.C. § 103(a) is affirmed for
the reasons of record and as explained herein.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
8 As to claim 9, Appellants recite part of the claim and then describe a
statement from the Specification. See Appeal Br. 7. This statement does not
amount to an argument on the merits because "[a] statement which merely
points out what a claim recites will not be considered an argument for
separate patentability of the claim." 37 C.F.R. § 41.37(c)(l)(iv).
5