Ex Parte McIntyre et al

Patent Trial and Appeal Board

Sep 20, 2017

13411877 (P.T.A.B. Sep. 20, 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.
13/411,877 03/05/2012 Gavin McIntyre 225525.23 3573
7590 09/21/2017
Francis C. Hand, Esq.
c/o Carella, Byrne, Cecchi, Olstein,
Brody and Agnello, P.C.
5 Becker Farm Road
Roseland, NJ 07068
EXAMINER
WHITE, DOUGLAS F
ART UNIT PAPER NUMBER
1653
MAIL DATE DELIVERY MODE
09/21/2017 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 GAVIN McINTYRE, EBEN BAYER, and DANIEL FLAGG1
__________

Appeal 2016-008190
Application 13/411,877
Technology Center 1600
__________

Before ERIC B. GRIMES, JEFFREY N. FREDMAN, and
DEVON ZASTROW NEWMAN, Administrative Patent Judges.

GRIMES, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134 involving claims to a method
of making a homogeneous polymer matrix, which have been rejected as
anticipated or obvious. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.
STATEMENT OF THE CASE
The Specification discloses “methods of growing a homogenous
polymer matrix that is comprised predominately of fungal chitin and trace
residues (beta-glucan, proteins). The resultant material is a rigid, high-

1 Appellants identify the Real Party in Interest as Ecovative Design LLC.
(Appeal Br. 2.)
Appeal 2016-008196
Application 13/411,877

2
density amorphous polymer that can serve in applications that are currently
served by synthetic plastics.” (Spec. 1.)
Claims 1–9, 12, 15, 17, 18, and 20 are on appeal. Claim 1 is
illustrative and reads as follows:
1. A process of producing a homogeneous polymer matrix comprising
the steps of
growing a viable mycelium in a liquid suspension;
extracting mycelium from the liquid suspension;
thereafter incubating the mycelium for a period of time
sufficient to induce mycelium cohesion and to form a solid
homogeneous mass of mycelial chitin; and
thereafter drying the solid material to remove moisture and to
inactivate the mycelium.

Claims 17 and 20, the only other independent claims, also require
growing mycelium in a liquid suspension, extracting mycelium from the
liquid suspension, and incubating the mycelium to form a solid
homogeneous mass of mycelial chitin.
The claims stand rejected as follows:
Claims 1–3, 12, 17, and 20 under 35 U.S.C. § 102(b) as anticipated by
Bayer2 (Ans. 3);
Claims 4–7, 9, 15, and 18 under 35 U.S.C. § 103(a) as obvious based
on Bayer and Sundari3 (Ans. 6); and

2 US 2008/0145577 A1, pub. June 19, 2008.
3 S. Krishna Sundari and Alok Adholeya, “Freeze-drying vegetative
mycelium of Laccaria fraternal and its subsequent regeneration.” 13
BIOTECHNOLOGY TECHNIQUES 491–495 (1999).
Appeal 2016-008196
Application 13/411,877

3
Claim 8 under 35 U.S.C. § 103(a) as obvious based on Bayer,
Sundari, and Molinet4 (Ans. 9).
DISCUSSION
The Examiner has rejected all of the claims on appeal as either
anticipated by Bayer, or obvious based on Bayer and Sundari, by themselves
or combined with Molinet. The same issue is dispositive for all of the
rejections.
The Examiner finds that Bayer discloses a method meeting all of the
limitations of independent claims 1, 17, and 20, among others. (Ans. 3–4.)
Appellants argue that Bayer does not anticipate because it does not
disclose growing mycelium in a liquid suspension, extracting mycelium
from the liquid suspension, or forming a solid homogeneous mass of
mycelial chitin. (Appeal Br. 5–9.)
We agree with Appellants that Bayer’s method does not meet the
limitations of the claims on appeal. Bayer discloses “composite material
[that] is made by inoculating a substrate of discrete particles and a nutrient
material with a preselected fungus.” (Bayer, abstract.) “The fungus digests
the nutrient material over a period of time sufficient to grow hyphae and to
allow the hyphae to form a network of interconnected mycelia cells through
and around the discrete particles thereby bonding the discrete particles
together to form a self-supporting composite material.” (Id.)
Bayer’s method involves combining substrate constituents—
specifically, bulking particles, a nutrient source, fibrous materials, and

4 US 3,317,375, pat. May 2, 1967.
Appeal 2016-008196
Application 13/411,877

4
water—“to obtain a solid media while [an] inoculum is applied during or
following the mixing process,” then applying the growth media to an
enclosure, growing the mycelia through the substrate, and “removing the
composite and rendering the composite biologically inert.” (Id. ¶¶ 46–51.)
Bayer states that “[t]he hyphae digest the nutrients and form a
network of interconnected mycelia cells growing through and around the
nutrients and through and around the non-nutrient particles, fibers, or
elements.” (Id. ¶ 57.) Bayer states that the growth of the hyphae “provides
structure to the once loose particles, fibers, elements, and nutrients,
effectively bonding them in place while bonding the hyphae to each other as
well.” (Id.)
Bayer’s process is therefore based on growing fungi on a medium
comprising bulking particles and fibrous materials in order to bond the solid
particles together to create a solid composite material. At a minimum,
therefore, Bayer’s process lacks a step of incubating mycelium “to form a
solid homogeneous mass of mycelial chitin,” as required by each of
independent claims 1, 17, and 20.
The Examiner reasons that “because Bayer discloses that a solid
material is formed, the reference is reasonably interpreted to read on
‘incubating for a sufficient time to induce mycelium cohesion and to form a
solid homogenous mass of mycelial chitin’ because Bayer meets the
limitation of ‘sufficient’ time.” (Ans. 11.)
We do not find this reasoning persuasive, because the claims do not
require simply incubating to form a solid material, but incubating mycelium
“for a period of time sufficient . . . to form a solid homogeneous mass of
Appeal 2016-008196
Application 13/411,877

5
mycelial chitin.” We interpret “homogeneous” as requiring the solid mass to
be composed solely of mycelial chitin, and not include particles, fibers,
elements or nutrients as disclosed in Bayer’s process. The solid material
formed in Bayer’s process is not a homogeneous mass of mycelial chitin,
and Bayer’s process therefore does not meet all the limitations of claims 1,
17, or 20, or those of dependent claims 2, 3, or 12. We therefore reverse the
rejection under 35 U.S.C. § 102(b).
The Examiner rejected claims 4–7, 9, 15, and 18 as obvious based on
Bayer and Sundari, and rejected claim 8 as obvious based on Bayer, Sundari,
and Molinet. These rejections, however, are based on the Examiner’s
finding that Bayer anticipates each of the independent claims. (See Ans. 6–
10.) The obviousness rejections therefore suffer from the same deficiency
discussed above with respect to anticipation, and are reversed for the same
reason.
SUMMARY
We reverse all of the rejections on appeal.

REVERSED