Ex Parte McIntyre et al

Patent Trial and Appeal Board

Jul 23, 2018

13857403 (P.T.A.B. Jul. 23, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/857,403 04/05/2013 Gavin McIntyre
27162 7590 07/24/2018
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.
225525.42 1018
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
MAIL DATE DELIVERY MODE
07/24/2018 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 MCINTYRE, EBEN BA YER, and
AMANDA PALAZZOLO
Appeal2017-009455
Application 13/857 ,403
Technology Center 3600
Before: MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.
Opinion for the Board filed by Administrative Patent Judge OSINSKI.
Opinion Dissenting filed by Administrative Patent Judge HOELTER.
OSINSKI, Administrative Patent Judge.
DECISION ON APPEAL 1
STATEMENT OF THE CASE
This is a decision on appeal, under 35 U.S.C. § 134(a), from the
Examiner's Final rejection of claims 1-5 and 10. App. Br. 2. Claims 6-9
are withdrawn. App. Br. 2; see also Response to Restriction Requirement
dated October 17, 2014; Final Act. 1 (Office Action Summary).
1 The Appellants state that Ecovative Design LLC is the real party in
interest. App. Br. 2.
Appeal2017-009455
Application 13/857 ,403
We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE.
THE CLAIMED SUBJECT MATTER
The disclosed subject matter "relates to a method of growing
mycological biomaterials." Spec. 1. 2 Process claim 1 is the sole
independent claim, is illustrative of the claims on appeal, and is reproduced
below.
1. A process of growing a mycological biomaterial
comprising the steps of
forming a growth medium including discrete particles, an
inoculum including a preselected fungus and a nutrient material
capable of being digested by said fungus;
placing said growth medium in a tool formed of a material
capable of being consumed by said fungus and defining a cavity
of predetermined shape for said growth medium; and
growing said fungus on and through said growth medium
in said cavity of said tool to form a product corresponding to said
predetermined shape of said cavity with said fungus consuming
at least some of said tool.
Miller
Joaquin
Rasanen et al.
REFERENCES
US 2004/0000090 Al
US 2011/0094154 Al
US 9,079,978 B2
THE REJECTIONS ON APPEAL
Jan. 1,2004
Apr. 28, 2011
July 14, 2015
I. Claim 1 is rejected under 35 U.S.C. § I02(b) as anticipated by or, in
the alternative, under 35 U.S.C. I03(a) as obvious over Miller.
2 Appellants' Specification does not provide line or paragraph numbering.
We reference Appellants' Specification by page number only.
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Application 13/857 ,403
II. Claims 2--4 are rejected under 35 U.S.C. § 103(a) as unpatentable over
Miller.
III. Claim 5 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Miller and Joaquin.
IV. Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Miller and Rasanen.
ANALYSIS
Rejection I
The Examiner takes the position that Miller discloses the claimed
process step of "growing said fungus on and through said growth medium in
said cavity of said tool to form a product corresponding to said
predetermined shape of said cavity" because the interior of Miller's
container 8, where spores 3 are placed to develop a network of mycelium 5,
"creates a boundary to shape the fungus as it grows." Final Act. 3. The
Examiner further explains that "the mass of mycelium 5 spreads and
occupie[ s] the cavity of the container" and that "the mycelium mass will
spread and grow in the space(s) or cavity that is allow[ed] to grow." Ans. 4.
According to the Examiner, "because the fungus can only grow within the
boundary of the container[,] ... the fungus has to take the shape of the
container" and "[i]t cannot take [the] shape of anything else because it is
bounded by the container [and] if the container were not there, the fungus
would spread outwardly without taking any shape." Id.
The Examiner relies on Miller as expressly disclosing the process step
of "growing [a] fungus ... to form a product corresponding to [a] shape of
[a] cavity." The Examiner does not assert that limitation is inherent in
Miller or propose that this particular step of the claimed process would have
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been obvious. The only articulated obviousness rationale relates to
"hav[ing] the fungus of Miller consmn[ e] at least some of said tool of
Miller" (Final Act. 4), not to growing Miller's fungus to form a product
corresponding to the shape of the cavity (i.e., growing Miller's fungus to
such an extent that it engages the boundary of the interior cavity of Miller's
container). More particularly, the Examiner concludes only that it would
have been obvious to have Miller's fungus consume at least some of the tool
"depending on the time period the user wishes to leave the fungus in the
tool, the type of fungus being grown, and the environment that the tool and
fungus are placed because the environment can influence decomposition."
Id. In our view, the Examiner's statement merely points out that variations
to a number of variables in Miller's process are possible, rather than
adequately explaining whether employing such variations would have been
obvious to one of ordinary skill in the art.
Appellants argue that "[t]here is no disclosure in Miller that the
Morchella mycelium is grown to form a product corresponding to a
predetermined shape of a cavity of the container 8 of Figs. 1-2 [or] the
container 16 of Fig. 3." Appeal Br. 8 (boldface omitted). Appellants further
argue that "Miller does not grow the mycelium 5 on and through the culture
medium 4 to form a product much less a product corresponding to the shape
of the container 8." Id. at 9 (boldface omitted). Appellants assert that "[t]he
Examiner posits that the fungus of Miller has to take the shape of the
container[, but] the Examiner has not cited to any such disclosure in Miller."
Id. at 10 (boldface omitted).
The Examiner's finding that Miller discloses "growing said fungus on
and through said growth medium in said cavity of said tool to form a product
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corresponding to said predetermined shape of said cavity," as claimed (Final
Act. 3), is not supported by a preponderance of the evidence. Miller
discloses that "mycelium 5 [is] incubated in the culture medium 4 until the
root system 7 [ of tree seedling 6] is adequately infected with the mycelium
5." Miller ,r 38. Miller also discloses that adequate infection "usually
occurs within about 1 to 20 days." Id. We understand this 1 to 20 days of
incubation to cause adequate infection of the root system of the tree seedling
can be after an initial incubation of one to two weeks during which the
mycelium is initially developed ( although "[ m ]ycelium can develop after as
little as 24 hours of incubation."). Id. ,r 36. Although we agree with the
Examiner's finding that Miller's mycelium grows and spreads within the
interior of Miller's container (compare Miller Fig. la with Fig. lb), the
Examiner has not supported by a preponderance of the evidence that Miller
discloses the step of growing mycelium to such an extent that the shape it
takes is limited by the bounds of container 8.
Even assuming arguendo that given enough time, mycelium 5 would
eventually grow to such an extent that the shape it takes will be limited by
the bounds of container 8, as the dissent suggests, there is no indication that
Miller's process contemplates such a length of time so as to result in the
claimed process step at issue. Although we appreciate that Appellants
"failed to claim a time line or period" (Final Act. 9), the relevant inquiry is
whether any time line or period for fungus growth disclosed in Miller results
in the growing fungus being limited by the bounds of its container. There is
no indication that Miller utilizes a time period in which Miller's fungus will
grow to such an extent that it is bounded by the container. Moreover, the
Examiner's position that "if the container is left long enough or endlessly,
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certainly the fungus would consume the container eventually because the
container is made of consumable material" (Final Act. 9) further calls into
question whether, over time, the fungus of Miller will indeed be bounded by
the container or whether consumption of the container will preclude the
container from being a boundary by which growth of the fungus is limited.
In the absence of any explicit description of Miller's mycelium 5
engaging the boundary of the interior cavity of container 8 and in the
absence of any indication that Miller's process would necessarily result in
Miller's mycelium 5 engaging the boundary of the interior cavity of
container 8 (for example, due to a particular disclosed growth rate of
mycelium and a particular container size coupled with the disclosed time
periods of incubation), it appears equally probable that Miller's mycelium 5
never actually grows to such an extent that its shape is limited by the shape
of the container in which it grows, so as to form a product corresponding to
the shape of the cavity. The failure of mycelium 5 to grow to such an extent
that its shape is limited by the shape of the container in which it grows, in
Miller's process, could be due, for example, to a lack of sufficient time for
such growth or due to a decreased growth rate by the mycelium over time or
possibly due to consumption of the container over time. In our view, we
must speculate as to whether, in Miller's process, the mycelium reaches the
bounds of the container so as to be forced to take the shape of the container.
Consequently, we must speculate as to whether Miller discloses the step of
"growing said fungus on and through said growth medium in said cavity of
said tool to form a product corresponding to said predetermined shape of
said cavity," as claimed, as opposed to the Examiner showing by a
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preponderance of the evidence that, as set forth in the rejection (Final Act.
3), such step is performed in Miller.
For these reasons, we reverse the Examiner's rejection of claim 1
under 35 U.S.C. § 102(b) as anticipated by, or in the alternative under 35
U.S.C. § 103(a) as unpatentable over, Miller.
Re} ections II-IV
We also reverse the Examiner's rejections, under 35 U.S.C. § 103(a),
of: claims 2--4 as unpatentable over Miller; claim 5 as unpatentable over
Miller and Joaquin; and claim 10 as unpatentable over Miller and Rasanen.
The rejections of these claims rely on the Examiner's erroneous finding as to
Miller disclosing the step of "growing said fungus on and through said
growth medium in said cavity of said tool to form a product corresponding
to said predetermined shape of said cavity" and/or the same inadequate
reasoning to explain what would have led one of ordinary skill in the art to
grow Miller's mycelium to such an extent that it engages the boundary of the
interior cavity of container to necessarily result in said step occurring. See
Final Act. 4--6.
DECISION
The Examiner's decision to reject claims 1-5 and 10 is reversed.
REVERSED
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UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GA VIN MCINTYRE, EBEN BA YER, and
AMANDA PALAZZOLO
Appeal2017-009455
Application 13/857 ,403
Technology Center 3600
Before: MICHAEL L. HOELTER, MICHELLE R. OSINSKI, and
JEREMY M. PLENZLER, Administrative Patent Judges.
HOELTER, Administrative Patent Judge, dissenting.
I respectfully dissent as to the rejections of claims 1-5 and 10 whether
under 35 U.S.C. § 102(b) or under 35 U.S.C. § 103(a).
First, as the Examiner notes, the claims do not impose a time limit for
the recited "process of growing a mycological biomaterial." Final 3; Ans. 5.
When cultivating plant life (see Miller Title), one skilled in the art would
understand that, as evidenced by Paragraphs 36 and 38 of Miller, the passage
of time exists. Such an understanding of the passage of time is also
consistent with Appellants' Specification describing their invention as
relating "to a method of growing mycological biomaterials." Spec. 1.
However, the majority seems not to fully appreciate this ongoing nature of
plant growth ( which the Examiner understands, see Ans. 4, 5), and instead
appears to address Miller as teaching only certain static 'snap-shots' of
Appeal2017-009455
Application 13/857 ,403
growth. Thus, as per the majority, since other images of Miller's mycelium
growth are not expressly disclosed, they are not contemplated. Instead, it is
"speculation" that growth beyond that which is explicitly illustrated in
Miller actually occurs. Such a limited appreciation of the teachings of
Miller is improper, and we have been warned to avoid such situations by
being instructed that a "person of ordinary skill is also a person of ordinary
creativity, not an automaton." KSR Int 'l Co. v. Teleflex Inc., 550 U.S. 398,
421 (2007). In a nutshell, I am of the opinion that the above decision fails to
acknowledge the full scope and ongoing understanding that a person skilled
in the art would appreciate from reading Miller's discussion of the
cultivation of mycelium 5.
As is known, the Patent Office may not "resort to speculation [or]
unfounded assumptions" in reaching a decision. In re Warner, 379 F.2d
1011, 1017 (CCPA 1967). However, by disregarding Miller's express
teachings that mycelium 5 is readily ( and quickly) grown, the decision above
seems to rely on just that. See Miller ,r 36.
In particular is Miller's teaching that spores 3 (from which mycelium
5 develop) can be "stirred into the culture medium." Miller ,r 3 5. This
would suggest that such spores are spread throughout the medium, including
near its edges. Such an understanding is also consistent with the purpose of
Miller, i.e., "to inoculate the tree seedlings" (Miller ,r 38) since it is not
known exactly where, within the culture medium, the tree seedling may be
placed or where its root system might extend. See Miller Figs. 1 a-1 c.
Consider, for example, only those spores disposed/spread along the
perimeter of the container, it is my belief that one skilled in the art would
contemplate that the resulting mycelium growth would naturally follow the
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contours of the container. I thus concur with the Examiner's logic that the
container's "cavity creates a boundary to shape the fungus as it grows."
Final Act. 3. I also would agree with the Examiner's statement that the
fungus can only grow within the boundary of the container, and thus the
fungus takes the shape of the container. "It cannot take shape of anything
else because it is bounded by the container." Ans. 4.
It is noted that MPEP § 2112 provides guidance that "[t]he express,
implicit, and inherent disclosures of a prior art reference may be relied upon
in the rejection of claims under 35 U.S.C. §§ 102 or 103." Case law
provides additional guidance to the effect that in assessing the propriety of
an anticipation rejection, "it is proper to take into account not only specific
teachings of the reference but also the inferences which one skilled in the art
would reasonably be expected to draw therefrom." In re Preda, 401 F.2d
825, 826 (CCPA 1968). Further, in an obviousness analysis, prior art should
be viewed as a whole. See Takeda Chem. Indus., Ltd. v. Alphapharm Pty.,
Ltd., 492 F.3d 1350, 1358 (Fed. Cir. 2007).
In short, Appellants argue that "[t]here is no disclosure in Miller that
the Morchella Mycelium is grown to form a product corresponding to a
predetermined shape of a cavity of the container 8 of Figs. 1-2." App. Br. 8.
Thus, Appellants focus on Miller's silence on this point ("the Examiner has
not cited to any such disclosure in Miller" (App. Br. 10)). In my opinion,
Appellants do not address Miller's teachings of the mycelium growing
throughout the medium, or what one skilled in the art would understand
from such teachings.
In closing, it is my conclusion that one skilled in the art would
understand that Miller discloses the mycelium ( and especially the mycelium
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near the container's boundary) growing and taking the shape of the
container, consistent with the claim limitation.
I would affirm the Examiner's rejections.
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