null

Patent Trials and Appeals Board

Nov 19, 2019

15266640 - (D) (P.T.A.B. Nov. 19, 2019)

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.
15/266,640 09/15/2016 Eben Bayer 225525.99 1858
27162 7590 11/19/2019
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
EXAMINER
ARIANI, KADE
ART UNIT PAPER NUMBER
1651
MAIL DATE DELIVERY MODE
11/19/2019 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 EBEN BAYER and GAVIN McINTYRE
__________

Appeal 2019-005168
Application 15/ 266,640
Technology Center 1600
__________

Before ERIC B. GRIMES, ULRIKE W. JENKS, and
ROBERT A. POLLOCK, Administrative Patent Judges.

POLLOCK, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejections of claims 1–11. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
Appellant’s invention relates to methods of making self-supporting
composite materials comprising discrete particles bonded together with a
network of fungal mycelia. Claim 1 is representative:

1We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. According to Appellant, the Real Party in Interest is Ecovative
Design LLC. Appeal Br. 1.
Appeal 2019-005168
Application 15/ 266,640

2
1. A method of making a composite material comprising the
steps of
forming an inoculum including a preselected fungus;
forming a mixture of a substrate of discrete particles and a
nutrient material, said nutrient material being capable of
being digested by said fungi;
adding said inoculum to said mixture; and
allowing said fungus to digest said nutrient material in said
mixture over a period sufficient to grow hyphae and to
allow said hyphae to form a network of interconnected
mycelia cells through and around all of said discrete
particles thereby bonding all of said discrete particles
together with said network to form a self-supporting
composite material.
Claims 1–11 stand rejected for non-statutory double patenting over
claims 3, 4, 6, and 11 of Bayer2 in view of Rai.3
ANALYSIS
Claim 3 of Bayer recites:
3. A method of making a composite material comprising
the steps of
forming an inoculum including a preselected fungus;
forming a mixture of a substrate of discrete particles and a
nutrient material, said nutrient material being capable of
being digested by said fungi;
adding said inoculum to said mixture;

2 Bayer et al., U.S. 9,485,917 B2, issued Nov. 8, 2016.
3 (Chapter 21, “Production of Edible Fungi” of “Fungal Biotechnology in
Agricultural, Food, and Environmental Applications” Edited by Dilip K.
Arora, Publisher Marcel Dekker, Inc., 2004, pp. 383-404.
Appeal 2019-005168
Application 15/ 266,640

3
allowing said fungus to digest said nutrient material in said
mixture over a period sufficient to grow hyphae and to,
allow said hyphae to form a network of interconnected
mycelia cells through and around said discrete particles
thereby bonding said discrete particles together to form a
self-supporting composite material;
and wherein said fungus is selected from the group
consisting of at least one of Pleurotus ostreatus, Agaricus
arvensis, Ganoderma tsugae and Inonotus obliquus.
Bayer 22:43–49. Bayer claims 4, 6, and 11 recite similar methods but
do not specify the species of fungal inoculum. See id. at 22:43–23:11,
23:28–43, 24:31–39.
Rai teaches methods for the commercial mushroom cultivation.
According to the Examiner:
Rai teaches the technique of placing the mixture in a cavity of
predetermined shape in a molding form defining a cavity with
an open top prior to adding said inoculum to said mixture in
said cavity (substrate ... filled into polybags aka “breathing
bags” which have an opening and a particular shape/a molding
form) (see for example, p.387 last paragraph line 11, p. 388 1st
paragraph, and p. 398 2nd paragraph lines 1-4), (containers
including glass bottles and polypropylene bags (p. 388 1st
paragraph), and allowing passage of carbon dioxide from within
said cavity through a filter disk in said lid and allowing passage
of oxygen through said filter disc from without said lid into said
cavity, incubating in dark area, and regulating the temperature
within said cavity and also discloses regulating the temperature
within said cavity (substrate and nutrients are placed in
polybags having a special breather patch) (p. 395 2nd paragraph
lines 6-8), and further teaches bags are incubated in dark area
(see for example. P. 398 2nd paragraph lines 8-9). Rai also
discloses regulating the temperature within said cavity
(maintaining temperature for mycelium to colonize) (see for
example, p. 391 1st paragraph lines 19-21).
Appeal 2019-005168
Application 15/ 266,640

4
Final Rej. 5–6.
According to the Examiner, one of ordinary skill in the art
would have found it obvious
to apply the known technique of placing the mixture [of
substrate and nutrient material] in a cavity of predetermined
shape in a molding form defining a cavity with an open top
prior to adding said inoculum to said mixture in said cavity,
allowing passage of carbon dioxide from within said cavity
through a filter disk in said lid and allowing passage of oxygen
through said filter disc from without said lid into said cavity,
incubating in dark area, and regulating the temperature within
said cavity taught by Rai et al. during the method(s) of making
a composite material taught by claims 3, 4, 6 and 11 of [Bayer].
Id. at 6.
Appellant responds, inter alia, that “claim 1 differs from each of
claims 3, 4, 6 and 11 of [Bayer] at least in requiring a network of
interconnected mycelia cells through and around all of the discrete particles
and bonding all of said particles together.” Appeal Br. 4. Likewise, Rai
lacks
any teaching of allowing a fungus to grow hyphae and to allow
said hyphae to form a network of interconnected mycelia cells
through and around all of the discrete particles in a substrate in
order to bond all of said discrete particles together with said
network to form a self-supporting composite material,
as required by the instant claims. Id. Moreover, Appellant contends,
the Examiner fails to present any evidence that a person of
ordinary skill in the art would conclude that the methods of
making a composite material recited by independent claims 1, 5
and 9 ... of the instant application would have been obvious
over claims 3, 4, 6 and 11 of [Bayer] in view of Rai.
Appeal 2019-005168
Application 15/ 266,640

5
Id. at 4–5. On the present record, we agree with Appellant that the
Examiner does not sufficiently establish that the claims on appeal are invalid
for obviousness type double patenting over Bayer claims 3, 4, 6, and 11 in
view of Rai.
In an earlier appeal, we addressed claim language reciting a method in
which fungal hyphae “form a network of interconnected mycelia cells
through and around [a substrate of] discrete particles thereby bonding said
discrete particles together to form a self-supporting composite material.”
See Appeal 2016-000561, Decision dated February 29, 2016 at 2, 5.
Focusing on “said discrete particles,” we interpreted this language as “not
requiring that all substrate particles be bound together.” See Appeal 2016-
000561 Decision on Rehearing dated April 12, 2016 at 2. In light of this
construction, we affirmed a rejection over Mushroom Growers’4 because
Appellant’s declaration evidence5 indicated that a culture prepared according
to that reference formed a self-supporting block with a friable interior—
which we interpreted as evidence that the method taught by Mushroom
Growers’ does not result in “a network of interconnected mycelia cells
through and around all of said discrete particles thereby bonding all of said
discrete particles together,” as presently set forth in claim 1 on appeal. See,
generally, Appeal 2016-000561, Decision and Decision on Rehearing.
The Examiner bears an initial burden of factually supporting an
articulated rejection (In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)),

4 Mushroom Growers’ Handbook 2: Shiitake Cultivation, MushWorld, pp.
73–90 (2005).
5 Declaration under 37 CFR § 1.132 of Gavin McIntyre filed March 2, 2015.
Appeal 2019-005168
Application 15/ 266,640

6
the particular posture of this case, however, requires a fuller explanation
than that presently provided by the Examiner. Given Appellant’s evidence
that the method of Mushroom Growers’ failed to result in the invention as
presently claimed, it was incumbent on the Examiner to, for example, point
to critical differences in the presently cited references as compared to Bayer,
or otherwise explain why—despite the apparently contrary evidence relating
to Mushroom Growers’—one of ordinary skill in the art would have
expected the methods of Bayer claims 3, 4, 6, and 11 in combination with
the methods of Rai would have resulted in the claimed invention. As the
Examiner has not sufficiently explained the reasons for the instant rejection
in light of the countervailing evidence of record, we reverse.
SUMMARY
“The PTO carries its procedural burden of establishing a prima facie
case when its rejection satisfies 35 U.S.C. § 132, in ‘notify[ing] the applicant
. . . [by] stating the reasons for [its] rejection, or objection or requirement,
together with such information and references as may be useful in judging of
the propriety of continuing the prosecution of [the] application.’” In re
Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). On the record before us, and
for the reasons set forth above, the Examiner has not satisfied the burden to
show that the challenged claims are unpatentable by a preponderance of the
evidence.
Appeal 2019-005168
Application 15/ 266,640

7
DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–11 Non-statutory double patenting
Bayer as evidenced
by Rai 1–11

REVERSED