Ex Parte Winiski et al

Patent Trial and Appeal Board

Jun 22, 2017

14099416 (P.T.A.B. Jun. 22, 2017)

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.
14/099,416 12/06/2013 Jacob Michael Winiski 225525.59 4540
27162 7590 06/23/2017
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
EXAMINER
CORDAS, EMILY ANN
ART UNIT PAPER NUMBER
1651
MAIL DATE DELIVERY MODE
06/23/2017 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 JACOB MICHAEL WINISKI, SUE SWEET VAN HOOK, and
GAVIN MCINTYRE1
__________

Appeal 2016-007861
Application 14/099,416
Technology Center 1600
__________

Before ERIC B. GRIMES, ROBERT A. POLLOCK, and
JOHN E. SCHNEIDER, Administrative Patent Judges.

SCHNEIDER, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims methods for
producing a slurry containing chlamydospores, which have been rejected as
obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
STATEMENT OF THE CASE
Chlamydospores are asexual resting spores produced by many fungi.
Spec. 1. Chlamydospores can be produced as part of normal vegetative

1 Appellants identifies the Real Party in Interest as Ecovative Design LLC.
Appeal Br. 2.
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growth or they can be produced in response to certain environmental
conditions such as desiccation, heat, cold, or water shock. Id.
Certain species of fungi within the order Polyporales are of economic
importance. Spec. 2. The Specification describes a method for enhancing
the production of chlamydospores particularly by the fungus Basidiomycete
which is a member of the order Polyporales. Spec. 3–4.
Claims 1–17 and 22–26 are on appeal. Claim 1 is illustrative of the
rejected claims and reads as follows:
1. A process for the production of a chlamydospore rich slurry
inoculum comprising the steps of
obtaining spawn consisting of a substrate colonized with
a desired Basidiomycete fungus capable of producing
chlamydospores during vegetative growth;
increasing the chlamydospore production and content in
said spawn; and
thereafter adding water to the spawn at rate of at least 1:6
spawn: water to obtain a slurry inoculum.

The claims stand rejected as follows:
Claims 1, 2, 4–17 and 22–26 have been rejected under 35 U.S.C.
§ 103(a) as unpatentable over Lamar2 in view of Sasaki3 and Stamets.4
Claim 3 has been rejected under 35 U.S.C. § 103(a) as unpatentable
over Lamar in view of Sasaki and Stamets in further view of Hiromoto.5

2 Lamar et al., US 5,786,188, issued July 28, 1998 (“Lamar”).
3 Sasaki et al., US 2003/0092166 A1, published May 15, 2003 (“Sasaki”).
4 Stamets, US 2004/0211721 A1, published Oct. 28, 2004.
5 Hiromoto, US 5,123,203, issued June 23, 1992 (“Hiromoto”).
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LAMAR COMBINED WITH SASAKI AND STAMETS
Issue
The issue with respect to the first rejection is whether a preponderance
of the evidence supports the Examiner’s conclusion that claims 1, 2, 4–17,
and 22–26 would have been obvious over Lamar combined with Sasaki and
Stamets.
The Examiner finds that Lamar teaches a method for forming an
inoculum containing chlamydospores comprising growing the fungus on an
appropriate medium and then separating and preparing the propagules
(which includes chlamydospores). Final Act. 4. The Examiner finds that
while Lamar does not teach increasing the spore content, Sasaki teaches a
method for increasing spore content by placing fungi under nutritive stress.
Final Act. 4. The Examiner concludes that
it would have been obvious to one of ordinary skill in the art to
modify the method of Lamar and to include the step of
increasing chlamydospore production and content, since similar
methods of producing chlamydospore rich inoculums from
fungi which are capable of producing chlamydospores include a
step of increasing chlamydospore production were known as
taught by Sasaki. In addition, it would it would [sic] have been
obvious to one of ordinary skill in the art to modify the method
of Lamar to include the step of increasing chlamydospore
production by applying a stress to the spawn, since similar
methods of producing chlamydospore inoculums use nutritive
stress to increase chlamydospore production were known as
taught by Sasaki. Furthermore, one of ordinary skill in the art
would have been motivated to include a step of increasing
chlamydospore production [for] the benefit of increasing the
amount of chlamydospores in the inoculum and to provide more
of a product and a more enriched product.

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Final Act. 5.
The Examiner finds that neither Lamar not Sasaki teaches preparing a
slurry as recited in the independent claims. The Examiner finds that this
limitation is taught by Stamets. Final Act. 5. The Examiner concludes that
at the time of the claimed invention, it would have been
obvious to one of ordinary skill in the art to modify the method
of Lamar to include the step of adding water to the spawn to
generate a chlamydospore rich slurry, since similar methods of
producing chlamydospore slurry inoculums by adding water to
the spawn to collect the spores was known as taught by
Stamets. Furthermore, it would be obvious to one of ordinary
skill in the art to use known methods of collecting
chlamydospores and producing slurry inoculums in a method of
producing a chlamydospore inoculum as taught by Lamar. In
addition, one of ordinary skill in the art would be motivated to
produce a chlamydospore rich slurry inoculum when applying
the inoculum to the landscape.

Final Act. 6.
Appellants contend that Lamar does not teach preparing a slurry
inoculum. Appeal Br. 4. Appellants also argue that modifying the teachings
of Lamar with the teachings of Sasaki and Stamets would not result in a
process for producing a chlamydospore rich inoculum in that Sasaki does not
teach increasing chlamydospore content in a spawn. Appeal Br. 6.
Appellants also contend that the Examiner has not provided a rationale for
modifying the teachings of Lamar to include increasing chlamydospore
content. Appeal Br. 8. Appellants argue that adding water to Lamar would
be counter to the teachings of Lamar and would not result in producing a
chlamydospore rich inoculum. Appeal Br. 9.
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With respect to claims 6 and 12, Appellants contend that Sasaki does
not teach agitation of the medium containing a fungus of interest. Appeal
Br. 10–12.
With respect to claim 15, Appellants contend that none of the
references teach or suggest mechanically macerating the slurry. Appeal Br.
12.
Findings of Fact
We adopt the Examiner’s findings as our own, including with regard
to the scope and content of, and motivation to modify or combine, the prior
art. The following findings are included for emphasis and reference
purposes.
FF1. Lamar teaches the preparation of fungal inoculums which
contain fungal propagules such as conida, spores, chlamydospores and the
like. Lamar col. 4, ll. 4–13.
FF2. Lamar teaches “growing the fungus of interest on an appropriate
growth medium and then separating and preparing fungal propagules from
that medium.” Lamar col. 5, ll. 44–47.
FF3. Lamar teaches the use of mushroom as the fungus of interest.
Lamar col. 6, ll. 17–46. Mushrooms are Basidiomycetes. Stamets ¶ 6.
FF4. Lamar teaches
A deionized water solution of medium viscosity Na-
alginate (Sigma. St. Louis. Mo.) was sterilized by autoclaving
for 10 minutes at 120° C. . . . Known amounts of fungal
biological material which consisted either of conidia,
chlamydospores and mycelial fragments, or only mycelial
fragments of tested fungi were added to the cooled Na-alginate
to form a 2% Na-alginate hydrogel solution. Different
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concentrations of fungal biological material in Na-alginate
hydrogel including 0.10-fold, 100-fold, 1000-fold, and 10,000-
fold dilutions of the original conidia suspensions or mycelial
fragment homogenates were tested for coating.

Lamar col. 8, ll. 14–25.
FF5. Sasaki discloses a method to efficiently produce a large amount
of chlamydospores. Sasaki Abstract.
FF6. Sasaki teaches that
In the present invention, the reason of agitation speed
(frequency of shaking) is increased about two days after the
beginning of cultivation is that the difficulty of propagation of
mycelia is rise [sic] and then the formation of chlamydospores
is accelerated. We deemed that SK-5-5 mycelia would be
converted into chlamydospores for self-defense, if the agitation
speed is increased synchronously with depletion of glucose in
the medium (two days after the beginning of cultivation), and,
in fact, the chlamydospore formation was facilitated.

Sasaki ¶ 14.
FF7. Sasaki teaches that the inoculum containing the chlamydospores
is homogenized. Sasaki ¶¶ 58 and 60.
FF8. The Specification teaches maceration to “homogenously
distribute chlamydospores, other fungal biomass, and nutrition provided by
spawn into water fraction slurry.” Spec. 6.
FF9. Stamets teaches the preparation of a fungal inoculum by
immersion of mushrooms in water to create a spore slurry mass. Stamets
¶ 14.
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Analysis
We find the Examiner has established that the claims are unpatentable
over Lamar combined with Sasaki and Stamets. Appellants have not
produced evidence showing, or persuasively argued, that the Examiner’s
determinations on obviousness are incorrect. Only those arguments made by
Appellants in the Briefs have been considered in this Decision. Arguments
not presented in the Briefs are waived. See 37 C.F.R. § 41.37(c)(1)(iv)
(2015). and We focus below on Appellants arguments with respect to claim
1. Appellants have not argued claims 2, 4, 5, 7–11, 13, 14, 16, 17, and 22–
26 separately from that claim, which therefore stand or fall with claim 1.
We also address Appellants arguments with respect to claims 6, 12, and 15,
which depend from claim 1.
Appellants contend that Lamar does not teach a method for forming a
slurry inoculum. Appeal Br. 4. We are unpersuaded. Appellants are
attacking the teachings of the individual reference and not the teaching of
the combined references. “Non-obviousness cannot be established by
attacking references individually where the rejection is based upon the
teachings of a combination of references. . . . [The reference] must be read,
not in isolation, but for what it fairly teaches in combination with the prior
art as a whole.” In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986).
The Examiner relied on Stamets for teaching preparation of a slurry
inoculum. Ans. 5. Moreover, Lamar teaches the preparation of an inoculum
comprising a suspension of propagules. FF4.
Appellants next argue that Sasaki does not teach increasing
chlamydospore contents in a spawn. Appeal Br. 6. We are unpersuaded.
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Sasaki specifically teaches that the disclosed method results in increasing the
chlamydospore content of the inoculum. FF5 and FF6.
Appellants contend that the Examiner has failed to state a rationale for
modifying the method of Lamar to increase the chlamydospore content.
Appeal Br. 8. We remain unpersuaded. The Examiner has clearly set forth
the motivation to modify the method of Lamar by stating
one of ordinary skill in the art would have been motivated to
include a step of increasing chlamydospore production for the
benefits of producing an inoculum with a higher concentration
of chlamydospores in the inoculum (a more enriched product)
and/or to increase the production of the desired product, the
chlamydospores, to generate a greater amount of the desired
product.

Ans. 13–14.
Appellants next argue that one skilled in the art would not add water
to the method of Lamar as it would be contrary to the teachings of Lamar.
Again, we are unpersuaded. As noted above, Lamar specifically teaches
forming a water-containing suspension of the propagules. FF4. Thus,
Lamar does not lead one skilled in the art away from using water.
Appellants argue that merely adding water to Lamar would not result
in a chlamydospore rich slurry. Appeal Br. 9–10. Again, Appellants are
looking only at the teachings of the individual references and not the
combined teachings of all the references. Sasaki clearly teaches preparing a
chlamydospore rich composition. FF5 and FF6. The combination of the
references results in a chlamydospore rich slurry.
With respect to claims 6 and 12, Appellants argue that Sasaki does not
teach agitating a medium containing a spawn. We are unpersuaded. Sasaki
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teaches agitating a medium containing mycelia (spawn) to stimulate the
formation of chlamydospores. FF6.
Turning to claim 15, Appellants contend that none of the references
teach macerating the slurry to homogenously distribute the chlamydospores.
We are unpersuaded. Sasaki teaches homogenizing the spore slurry. FF7.
Appellants’ Specification describes macerating a spawn:water slurry with a
homogenizer. Spec. 15:2. We agree with the Examiner that claim 15 would
have been obvious to one skilled in the art. Ans. 20–21.

Conclusion of Law
We conclude that a preponderance of the evidence supports the
Examiner’s conclusion that claims 1, 6, 12, and 15 would have been obvious
over Lamar combined with Sasaki and Stamets.
Claims 2, 4, 5, 7–11, 13, 14, 16, 17, and 22–26 have not been argued
separately and therefore fall with claims 1, 6, 12, and 15. 37 C.F.R.
§ 41.37(c)(1)(iv).
LAMAR COMBINED WITH SASAKI, STAMETS AND HIROMOTO

Appellants have not presented any arguments with respect to this
rejection, waiving their appeal of this rejection. We summarily affirm this
rejection.
SUMMARY
We affirm the rejections under 35 U.S.C. § 103(a).
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Application 14/099,416

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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