Ex Parte McIntyre et alDownload PDFPatent Trial and Appeal BoardSep 1, 201613617611 (P.T.A.B. Sep. 1, 2016) Copy Citation 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. 13/617,611 09/14/2012 Gavin McIntyre 225525.28 8315 27162 7590 09/02/2016 CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO 5 BECKER FARM ROAD ROSELAND, NJ 07068 EXAMINER FAN, LYNN Y ART UNIT PAPER NUMBER 1651 MAIL DATE DELIVERY MODE 09/02/2016 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 GAVIN MCINTYRE, EBEN BAYER, and CHRISTOPHER SCULLY ____________ Appeal 2015-003435 Application 13/617,6111 Technology Center 1600 ____________ Before ELIZABETH A. LAVIER, RYAN H. FLAX, and KRISTI L. R. SAWERT, Administrative Patent Judges. LAVIER, Administrative Patent Judge. DECISION ON REHEARING Pursuant to 37 C.F.R. § 41.52(a), Appellants request rehearing of a Decision on Appeal dated August 16, 2016,2 affirming the Examiner’s decision that claims 1, 2, 5, 6, and 9 are unpatentable over the prior art of record and reversing the Examiner’s decision that claim 10 is unpatentable over the prior art of record. 1 Appellants state the real party in interest is Ecovative Design LLC. Appeal Br. 2. 2 Hereinafter “Decision.” Appeal 2015-003435 Application 13/617,611 2 The Board’s Decision affirmed the Examiner’s rejection of claims 1, 2, 5, 6, and 9 under 35 U.S.C. § 103(a) as unpatentable over Bayer, Kamzolkina, and Novoselova, as evidenced by Chaudhary and Peng. Dec. 4–5. As to Appellants’ argument regarding Peng, we stated: 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. Dec. 4 (emphasis added). In the Request for Rehearing, Appellants argue that the emphasized sentence quoted above “is an error as a matter of fact.” Req. 2. According to Appellants, claim 1 “requires the fungi to be alive” (Req. 1), insofar as claim 1 recites “a saprophytic fungi strain characterized in producing an enzyme capable of breaking down polycyclic aromatic hydrocarbons” (Substitute Claim Appendix 1). The above-emphasized statement from our Decision merely echoes the Examiner’s point that Appellants’ arguments from the Appeal Brief were not persuasive “because the rejected claims do not require a ‘dead fungi.’” Ans. 8. To reiterate, in the Appeal Brief, Appellants attempted to distinguish Peng from claim 1 by arguing that “the fungi of Peng are alive. There is no teaching that dead fungi can release an enzyme capable of breaking down polycyclic aromatic hydrocarbons.” Appeal Br. 6.3 This argument appears to rest on the assumption that claim 1 excludes living 3 Appellants offered no other arguments regarding Peng. See Appeal Br. 6. Appeal 2015-003435 Application 13/617,611 3 fungi, in contrast to Appellants’ proposition in the Request for Rehearing that claim 1 is limited to living fungi. However, as Appellants now take the position that claim 1 “requires the fungi to be alive,” Req. 1, Appellants are in agreement with the Examiner and the Board that claim 1 encompasses living fungi. Thus, it is unnecessary to decide whether claim 1 also encompasses dead fungi, as Appellants acknowledge that Peng teaches living fungi (see Appeal Br. 6), and Appellants have presented no other arguments regarding other references (or the combination thereof) turning on whether the fungi are living or dead. Accordingly, we grant Appellants’ Request for Rehearing to the extent that the following sentence, on page 4 of the Decision, “As claim 1 does not specify whether the fungi are living or dead, this argument is unpersuasive.” is replaced with: “As claim 1 includes living fungi, this argument is unpersuasive.” However, we deny Appellants’ Request for Rehearing in all other respects, as the above-identified modification to our Decision does not affect the final disposition of the rejections therein. CONCLUSION The Request for Rehearing is granted to the limited extent that the language of the Decision is modified as indicated above; the Request is otherwise denied. 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)(iv). Appeal 2015-003435 Application 13/617,611 4 REHEARING DENIED Copy with citationCopy as parenthetical citation