Ex Parte McIntyre et al

Patent Trial and Appeal Board

May 9, 2018

14336385 (P.T.A.B. May. 9, 2018)

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.
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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).
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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
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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
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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.
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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
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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
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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:
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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
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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
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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
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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.
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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.
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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
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