Ex Parte Bayer et al

Patent Trial and Appeal Board

Feb 28, 2018

13454856 (P.T.A.B. Feb. 28, 2018)

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.
225525.25 4211
EXAMINER
WHITE, DOUGLAS F
ART UNIT PAPER NUMBER
1653
MAIL DATE DELIVERY MODE
13/454,856 04/24/2012
7590 02/28/2018
Francis C. Hand, Esq.,
c/o Carella, Byrne,
Cecchi, Olstein, Brody & Agnello
5 Becker Farm Road
Roseland, NJ 07068
Eben Bayer
02/28/2018 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 EBEN BAYER and GAVIN McINTYRE
Appeal 2016-003441
Application 13/454,856
Technology Center 1600
Before RICHARD M. LEBOVITZ, RICHARD J. SMITH,
and JOHN E. SCHNEIDER, Administrative Patent Judges.
SCHNEIDER, Administrative Patent Judge.
DECISION ON REQUEST FOR REHARING
Pursuant to 3 C.F.R. § 41.52, Appellants have submitted a Request for
Rehearing dated November 13, 2017 (“Request”), requesting rehearing of
the October 31, 2017 Decision (“Decision”) affirming the Examiner’s
rejection of claims 14—19 under 35 U.S.C. § 101.
Appellants assert the decision was in error because the Board
misapprehended or overlooked certain arguments and factual evidence
presented in the Appeal and Reply Brief. Req. Reh’g 1. We have
considered the arguments presented by Appellants and are persuaded that we
may have overlooked or misapprehended certain arguments. As such, we
grant Appellants’ Request for Rehearing and modify our opinion to reflect
Appeal 2016-003441
Application 13/454,856
consideration of Appellants’ arguments. Our consideration of the arguments
does not change our decision to affirm the Examiner’s rejection based on 35
U.S.C. § 101.
Appellants begin by arguing that a fabricated section does not occur in
nature and thus, the claims present patentable subject matter. Req. Reh’g 1—
4. Similarly, Appellants contend that we overlooked the limitation calling
for a plurality of blocks forming a fabricated section. Id. at 4—5. Appellants
also argue that the limitation calling for the blocks to bond together is a
feature not found in nature. Id at 5.
These arguments were addressed in the Decision (Decision 3—4) and
are further addressed below
The Supreme Court articulated a two-step test for patent eligibility
under § 101 that “distinguish[es] patents that claim laws of nature, natural
phenomena, and abstract ideas from those that claim patent-eligible
applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Banklnt 7, 134
5. Ct. 2347, 2355 (2014) (citing Mayo, 132 S. Ct.at 1296-97) (“the
Alice/Mayo test”). “First, we determine whether the claims at issue are
directed to one of those patent-ineligible concepts. If so, we then ask,
‘[wjhat else is there in the claims before us?”’ Id. (citation and quotations
omitted). Second, we “search for an inventive concept—i.e., an element or
combination of elements that is sufficient to ensure that the patent in practice
amounts to significantly more than a patent upon the [ineligible concept]
itself.” Id. (quotations and alterations omitted).
As the Examiner points out, the present invention embraces a
combination of natural products. Ans. 7—8. As such, the combination is not
patent eligible. See, Funk Bros Seed Co. Kalo Inoculant Co., 333 U.S. 127,
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Application 13/454,856
132 (1948) (Mixture of naturally occurring bacteria not patentable subject
matter).
Turning to the second step of the Alice /Mayo test, we next look to see
if the claims recite something significantly more than the natural
combination. We find that they do not. Growing fungi or parts thereof into
various shapes is known in the art. See Bayer et al., US 2009/0307969 Al,
issued Dec. 17, 2009. Similarly, the ability of the mycelium to grow into an
adjacent block does not represent something significantly more. As the
Examiner points out, this would embrace fungal colonies growing in
compact soil. Ans. 8. The colonies would be sufficiently close to each other
to have the mycelium of one grow into the mycelium on the adjacent colony.
While our decision may have been unclear in that we indicated that
the mycelium was formed into particles, when it was the mycelium
composite which was formed into particles or fibers, this does not alter our
conclusion for the following reasons.
Appellants do not specifically define either the term particle or the
term fiber in the Specification. However, the Specification contains
instances where the terms are used to describe materials combined with the
mycelium, e.g. Spec 1,11. 22—23 (“a living hydrated mycelium composite
containing at least one of a combination of mycelium and fibers, mycelium
and particles, and mycelium, particles and fibers”), as well as the
composition itself. See, e.g. Spec. 2,11. 5-6. (“The dehydrated mycelium
composite may be processed into a plurality of discrete particles or coated
fibers for storage.”) and Spec. 4,11. 11—13 (“In accordance with step 5, the
dehydrated mycellium composite from step 4 is mechanically processed into
a plurality of particles or fibers in a mechanical processing stage”). Because
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Application 13/454,856
the Specification does not define “particle,” nor restrict its scope in any way,
under the broadest reasonable interpretation, we agree with the Examiner
that the term can embrace naturally occurring particles such as those found
in soil. Answer 8.
Appellants contend that we misstated the Examiner’s findings by
using the word “would” instead of the word “could” in connection with the
formation of block and H shapes by mycelium growing in nature. Req.
Reh’g. 6. We disagree. The sentence in the Decision that Appellants
contest also cites to page 8 of the Answer, which states in part “mycelium
growing in soil. . . would read upon the broadest reasonable interpretation.
The shape of the block and plurality of blocks do not add significantly more
or add to the markedly different characteristic . . . mycelia growing in nature
can form block shapes and H shapes.” Ans. 8. Moreover, the rejection at
issue is not a prior art rejection, but rather a rejection under Section 101.
Thus, whether the claimed shapes could or would form from mycelium
growing in nature does not change the conclusion that the claims fail to
recite patentable subject matter. Appellants reiterate their argument that
natural products, especially combinations of natural products are patentable.
Req. Reh’g 10—12. We remain unpersuaded. As noted above, the Supreme
Court’s holding in Funk Bros, supports the conclusion that, absent a
showing of something significantly more, a combination of natural products,
by itself, does not constitute patentable subject matter.
With respect to Appellants’ contention that it is error to find that a
preponderance of evidence supports the Examiner’s conclusion, we disagree.
As demonstrated above, Applying the Alice/Mayo test and in light of the
Supreme Court’s decision in Funk Bros., the Examiner’s rejection under 35
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Appeal 2016-003441
Application 13/454,856
U.S.C. § 101 is correct. We therefore maintain our affirmance of the
rejection.
Finally, Appellants contend that we improperly referred to
“compacted mycelium” in our opinion. Req. Reh’g. 7. To clarity, we are
referring to mycelium in compacted soil, but this does not change our
conclusion that the claims are directed to patent ineligible subject matter. As
the examiner points out, mycelium and soil would adhere to form a mass.
Ans. 8. This combination of two natural products does not constitute patent
eligible subject matter.
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).
GRANTED
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