Gavin McIntyre et al.

Patent Trials and Appeals Board

Jul 28, 2020

14510912 - (D) (P.T.A.B. Jul. 28, 2020)

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.
14/510,912 10/09/2014 Gavin R. McIntyre 225525.70 6475
27162 7590 07/28/2020
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
EXAMINER
PYLA, EVELYN Y
ART UNIT PAPER NUMBER
1633
MAIL DATE DELIVERY MODE
07/28/2020 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 R. MCINTYRE, JEFFREY D. BETTS,
GREGORY TUDRYN, and LIAM MOONEY1
________________

Appeal 2019-006398
Application 14/510,912
Technology Center 1600
________________

Before JEFFREY N. FREDMAN, JOHN G. NEW, and TAWEN CHANG,
Administrative Patent Judges.

NEW, Administrative Patent Judge.

DECISION ON APPEAL

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies Ecovative Design LLC as the real
party-in-interest. App. Br. 1.
Appeal 2019-006398
Application 14/510,912

2
SUMMARY

Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 1–9 and 29–37. Specifically, claims 1,
29, 36, and 37 stand rejected as unpatentable under 35 U.S.C. § 102(a)(1) as
being anticipated by Bayer et al. (US 2009/0307969 A1, December 17,
2009) (“Bayer”), Kalisz et al. (US 2011/0306107 A1, published December
15, 2011) (“Kalisz”), Ross (US 2012/0135504 A1, published May 31, 2012)
(“Ross”), 8 qt. Perlite Mix Product Information, available at:
http://www.homedepot.com/p/Miracle-Gro-8-qt-Perlite-Mix-
74278430/204502291 (last visited 2/6/2016), (“Perlite”) and The Mineral
Gypsum, available at: http://www.homedepot.com/p/Pennington-30-lb-Fast-
Acting-Gypsum-Plus-AST-Dry-Lawn (last visited 2/6/2016), (“Gypsum”).2
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
NATURE OF THE CLAIMED INVENTION
Appellant’s invention is directed to a method of making a compressed
biocomposite body includes compressing a mass of biocomposite material
comprised of discrete particles and a network of interconnected glucan-
containing mycelia cells in the presence of heat and moisture. Abstract.

REPRESENTATIVE CLAIM
Claim 1 is representative of the claims on appeal and recites:

2 A prior Appeal, 2017-006100, resulted in a Decision on Appeal, filed May
10, 2018 (the “Prior Decision”), affirming-in-part the Examiner’s rejection
and entering a New Ground of Rejection.
Appeal 2019-006398
Application 14/510,912

3
1. A method of making a composite body comprising the
steps of
obtaining a mass of material comprised of discrete
particles, glucan-containing mycelia cells and a moisture content
of from 45% to 70%;
placing the mass of material in a compression fixture;
heating the mass of material in the compression fixture
while compressing the material into a compressed body of a
desired density and shape within said compression fixture;
maintaining the compressed body under heat and
compression for a time sufficient to allow cross-linking between
the glucans in said mycelia cells to bind the discrete particles
together in the compressed body; and
removing the compressed body from the compression
fixture

Claims App’x 1.

ISSUES AND ANALYSES
We agree with, and adopt, the Examiner’s reasoning, findings, and
conclusion that the appealed claims are obvious over the cited prior art. We
address the arguments raised by Appellant below.

A. Rejection of claim 1

Issue
Appellant argues that the Examiner erred in finding that Bayer teaches
or suggests placing a mass of material comprised of discrete particles,
glucan-containing mycelia cells and a moisture content of from 45% to 70%
in a compression fixture. App. Br. 6.

Appeal 2019-006398
Application 14/510,912

4
Analysis
The Examiner finds that Bayer teaches methods for producing fungal
fruiting bodies and products made thereby by enclosing the growing fungus
in a mold enclosure of a designated shape, growing the fungus to fill the
mold enclosure, removing the molded product and drying the product. Final
Act 4 (citing Bayer Abstr. ¶¶ 21–22). The Examiner finds that Bayer
teaches that a fungal primordium is created by exposing the fungal
mycelium to conditions which induce fruiting. Id. (citing Bayer ¶ 24).
Specifically, the Examiner finds that Example 1 of Bayer teaches
growing the fruiting body by culturing Pleurotus ostreatus in culture bags
for 21 days at a temperature of 75°F, using a substrate comprising
rye grain, perlite, and gypsum substrate (i.e., discrete particles). Final Act. 4
(citing Perlite 2; Gypsum 2). The Examiner finds that Bayer teaches that the
substrate contained 63% water by weight, and that the fungi have cell walls
comprising chitin and beta-glucan, that the filamentous fungi comprise
hyphae (and its aggregative form, mycelia), and that the hyphae form
fruiting bodies. Id. (citing Bayer ¶¶ 6, 9). The Examiner therefore reasons
that culturing of fungi for 21 days necessarily produces a network of
interconnected, glucan-containing mycelia cells extending around the
discrete particles found in the culture substrate. Id.
The Examiner also finds that Example 8 of Bayer teaches placing
chipped fungal fruiting bodies in a 4x4 press and compacting (i.e.,
compressing) at 100 psi for two minutes, and thereafter subjecting to heating
for two hours at 300°F, with the heating step taking place after removal from
the 4 x 4 press. Final Act. 5.
Appeal 2019-006398
Application 14/510,912

5
The Examiner finds that Kalisz similarly teaches producing shaped
articles from the culture of beta-glucan-containing fungal mycelium using
growth cavities having a particular shape to result in a formed part. Final
Act. 5 (citing Kalisz ¶ 70). Specifically, the Examiner finds that Kalisz
teaches that moisture is applied to the mycelium structure, which is then
heated to at least 180°F to convert undigested lignin from a thermoplastic
condition to a thermoset, and also teaches heating the mycelium culture
within the growth cavity to approximately 125°F for one to 15 days to
terminate further growth. Id. (citing Kalisz ¶¶ 4, 70). However, the
Examiner acknowledges, although Kalisz teaches heating the mass within
the growth fixture, Kalisz neither teaches nor suggests the application of
external compression while heating the mycelium growth. Id.
The Examiner finds that Ross teaches methods for producing molded
building materials comprising fungal mycelium, wherein the cultivation is
subjected to mechanical compression within the growth mold during the
growth process. Final Act. 5 (citing Ross Abstr., ¶¶ 14, 15, 18, 19, Fig. 1).
The Examiner finds that Ross teaches application of a primary compressive
pressure of at least 100 psi, 500 psi, or 2000 psi, and further teaches that the
pressure may be physically applied using a mechanical press or roller. Id.
(citing Ross ¶¶ 43, 47). The Examiner further finds that Ross teaches that
the application of such pressure during the growth of the fungal product
results in increased strength (a 6x increase) of the material, increased its
durability characteristics, and improved the material’s ability to withstand
dynamic forces. Id. (citing Ross ¶¶ 14, 19). The Examiner also finds that
Ross teaches growing the fungal culture in the vessel in a growing room
having a temperature of between 55o and 90°F. Id. at 6 (citing Ross ¶ 50).
Appeal 2019-006398
Application 14/510,912

6
The Examiner concludes that it would have been prima facie obvious
to a person of ordinary skill in the art to prepare the molded fungal material,
as taught by Bayer and Kalisz, and to place the fungal growth in a
compression chamber, as taught by Ross, applying compression forces of at
least 100 psi, 500 psi, or 2000 psi. Final Act. 5–6. The Examiner reasons
that doing so would yield the predictable result of increasing the strength
and durability of the produced product. Id. at 6. The Examiner also
concludes that a skilled artisan would have been motivated to modify the
methods of Bayer and Kalisz by adding the compression taught by Ross to
produce a product with increased strength and durability. Id.
Appellant argues that Bayer teaches “placement of a mass of material
comprised of discrete particles, glucan-containing mycelia cells and a
moisture content of from 45% to 70% in a grain bag in order to grow
primordium that became a fruiting body.” App. Br. 6(quoting Bayer ¶¶ 87,
88). However, Appellant asserts, Bayer neither teaches nor suggests placing
the mass of material comprised of discrete particles, glucan-containing
mycelia cells and a moisture content of from 45% to 70% in a compression
fixture as required by claim 1. Id. Appellant contends that the “mass of
fungal growth” referenced by the Examiner as being subjected to
compression in Bayer’s Example 8 (Adv. Act. 2) is in fact the fruiting body
1 obtained from the primordium 4 that grew from the bag. Id.
Appellant notes further that Example 8 of Bayer teaches “Using
Fruiting Body Particles and a Resin to form a Ply” and, specifically, that
“[b]yproducts from the aforementioned fruiting body processing, entire fully
dried fruit, or any combination thereof can be chipped into either congruent
or variable particles. These particles can be bound into a composite board
Appeal 2019-006398
Application 14/510,912

7
using an organic (natural, example: mycelium) or synthetic resin.” Id.
(quoting Bayer ¶ 118). Appellant further points to Bayer’s teaching that:
FIG. 22 shows a ply board 1 that was created using chipped
fungal fruit 2 from the Ganoderma family. These fruiting bodies
were chipped into ¼"x½"x⅛" sections and then wetted. Starch
binder, applied at a concentration of 1% by weight, was used to
bind the fruiting body fragments together. The starch binder and
fruiting body chips were then placed in a 4x4' press and
compacted at 100 PSI for 2 minutes. After pressing, the board
was removed from the press and allowed to cure in a convection
oven for 2 hours at 300 degrees Fahrenheit.

Id. at 7 (quoting Bayer ¶ 120). Appellant consequently argues that the
Examiner has misinterpreted Bayer.
Appellant argues further that neither Bayer nor Ross teaches
maintaining a compressed body under heat and compression for a time
sufficient to allow cross-linking between the glucans in said mycelia cells to
bind the discrete particles together in the compressed body. App. Br. 7.
Appellant notes that Ross is silent with respect to the issue of cross-linking
glucans. Id. at 8.
Appellant points to the Board’s Prior Decision in this case, which
state that:
Appellants’ Specification … suggests that heat considerably in
excess of the 55–90°F range taught by Ross is required to achieve
cross-linking of the glucans of the mycelia. We consequently
find the Examiner’s findings are not persuasive on this point.
Furthermore, this is also dispositive of the third finding of the
Examiner, i.e. that “the method disclosed by Ross would
necessarily result in cross-linking between the mycelial
glucans.” We consequently find that the combination of Bayer
and Ross neither teaches nor suggests this limitation and we
reverse the Examiner’s rejection of claim [1] upon this ground.

Appeal 2019-006398
Application 14/510,912

8
App. Br. 8 (quoting Prior Dec. 14–15). Appellant argues that, having issued
the Prior Decision, the Board is a party to the previous Appeal in which that
Decision was issued, and that the Examiner is therefore collaterally estopped
from alleging that that the application of the disclosed temperatures and
pressures of Bayer and Ross would necessarily result in cross-linking
between the glucans in the mycelia cells of Bayer and Ross. Id. (citing In re
Trans Texas Holdings Corp., 498 F.3d 1290, 1297 (Fed. Cir. 2007) (holding
that issue preclusion did not apply to the Markman findings from a prior
infringement action because the PTO was not a party to that earlier
litigation)).
Appellant summarizes, arguing that there is no teaching or suggestion
by Ross of heating and compressing the lignocellulose-based medium or
colonized fungal mycelium for a time sufficient to allow cross-linking
between the glucans in the mycelia cells, particularly since heating to
150°F would terminate growth of the fungus and be contrary to the
requirement of Ross that, during the vegetative growth of the fungal
mycelium, it is important to maintain an environment and conditions that are
conducive to the organism’s growth patterns. App. Br. 10.
Appellant next argues that Ross does not teach heating “the mass of
material” in a compression fixture. App. Br. 10. According to Appellant,
Ross teaches introduction of a fungal inoculum to a lignocellulosebased
medium. Id. (citing Ross ¶ 42, Fig. 1). Appellant contends that Ross
teaches, after the fungal inoculum has penetrated the lignocellulose-based
medium, the fungal mycelium is placed in a mold so that the fungal
mycelium forms into a molded shape. Id. (citing Ross ¶¶ 43, 46 Fig. 1).
Appeal 2019-006398
Application 14/510,912

9
Appellant next points to P. Ross, Pure Culture, 1997-Present (2016)
http://billhoss.phpwebhosting.com/ross/index.php?kind (of record) (“Ross
II”). Appellant notes that Ross II teaches that:
To grow mushrooms requires packing sawdust into airtight bags,
and then steam cooking the packed bags for several hours. After
these pasteurized wood chips have cooled down, small pieces of
mushroom tissue are introduced into the bag, eagerly devouring
the wood like mold that grows across bread. The fungus digests
and transforms the contents of the bag into a solid mass of
interlocking cells, slowly getting denser and taking form, just
like plaster or cement. It takes about two to four weeks for the
fungus to eat the sawdust and solidify into what looks like a
decrepit cake….

App. Br. 11 (quoting Ross II at 2–3). Appellant contends that Ross II thus
teaches that the lignocellulose-based medium of Ross is consumed by the
fungus to form a solid mass of interlocking cells, i.e., a block of fungal
mycelium.
Appellant argues that Ross teaches that, when the fungal inoculum has
fully colonized the contents of the mold, the fungal molded shape is solid
enough to take out of the mold, and is dried. App. Br. 11 (citing Ross
¶¶ 51, 52, Fig. 4). However, Appellant asserts Ross does not teach or
suggest heating the “mass of material” (i.e., the inoculated lignocellulose-
based medium) in the mold 140 or compressing the “mass of material” into a
compressed body of a desired density and shape within a compression
fixture. Id. at 11–12.
We are not persuaded by Appellant’s arguments. Appellant argues
that the Examiner misinterprets the teachings of Bayer with respect to
Example 8, because Example 8 uses a fungal fruiting body in the production
of a ply. See App. Br. 7, 12–13. From this argument, we infer that
Appeal 2019-006398
Application 14/510,912

10
Appellant contends that a fungal fruiting body cannot constitute “a mass of
material comprised of discrete particles, glucan-containing mycelia cells and
a moisture content of from 45% to 70%,” as recited in claim 1. We disagree,
because this contention is directly contradicted by the teachings of Bayer.
Bayer teaches that:
A significant reduction in post processing can be accomplished
by growing the fungal fruiting body into the desired net or near
net shape of the final product. To accomplish this, the following
steps are taken. First, fungal primordium are created by
exposing mycelium of the desired organism type to the
environmental conditions which induce fruiting in that organism
type, including but not limited to light exposure, changes in
atmospheric gas concentrations and temperature changes.

Bayer ¶ 24. Bayer further teaches that “[c]ontrolling CO2(g) and O2(g)
concentrations in the growth enclosure will also influence the shape of the
pileus of the fruiting body, . . . includ[ing],” among other things:
Changing the physical structure of the fruiting body, increasing
the packing or density of mycelium within the pileus or stipe,
decreasing the packing or density of mycelium within the pileus
or stipe, changing the branch rate of mycelium within the pileus
or stipe, changing the density of the pileus or stipe, changing the
chemical composition of the pileus or stipe, changing the
orientation of mycelium within the fruiting body, changing the
type of mycelia structure within the fruiting body, modifying the
ratio between structural, binding, and generative hyphae.

Id. at ¶ 34. It is thus evident from the teachings of Bayer that the fungal
fruiting body consists, inter alia, of glucan-containing mycelial cells.3 The
fact that there may be additional cell types or structures present in the

3 See Spec. 3 (“The fungal cell wall is comprised of chitin and glucans”).
Appeal 2019-006398
Application 14/510,912

11
fruiting body is of no moment, as claim 1 recites “a mass of material
comprised of [sic].” Use of the transitional term “comprising” is indicative
that other unnamed materials may also be included within the scope of the
claim. See Crystal Semiconductor Corp. v. TriTech Microelectronics Int’l,
Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001) (holding that use of the transition
“‘comprising’ [in the language of a claim] creates a presumption ... that the
claim does not exclude additional, unrecited elements”).
Furthermore, Bayer teaches “a mass of material comprised of discrete
particles,” as recited in claim 1. Appellant’s Specification provides no
express definition of what constitutes a “discrete particle,” and we
consequently adopt the broadest reasonable interpretation of the term
consistent with the Specification. See In re ICON Health & Fitness, Inc.,
496 F.3d 1374, 1379 (Fed. Cir. 2007) (holding that claims under
examination before the PTO are given their broadest reasonable
interpretation consistent with the specification). We therefore interpret the
claim term “discrete particle” as meaning a defined particle that is not a
naturally-occurring part of the mycelium.
Bayer teaches that “[a]ggregates or particles may be placed in the path
of the growing fruiting body, becoming embedded within the material during
the growth process to change the product’s physical properties.” Bayer ¶ 41.
Furthermore, in Bayer’s Example 8:
FIG. 22 shows a ply board 1 that was created using chipped
fungal fruit 2 from the Ganoderma family. These fruiting bodies
were chipped into ¼"x½"x⅛" sections and then wetted. Starch
binder, applied at a concentration of 1% by weight, was used to
bind the fruiting body fragments together.

Appeal 2019-006398
Application 14/510,912

12
Id. at ¶ 120 (emphasis added). We find that each of these teachings would
suggest to a person of ordinary skill in the art the inclusion of “discrete
particles” in the “mass of material,” in addition to the “glucan-containing
mycelial cells.”
Claim 1 also requires that the “mass of material” have “a moisture
content of from 45% to 70%.” Example 8 of Bayer does not expressly teach
the moisture content of a fruiting body in that particular environment.
However, Bayer teaches that a mass of material, including mycelial cells and
discrete particles can be grown on a medium “comprised of [sic] 75% rye
grain and 24% perlite by dry weight. The substrate was buffered with 1%
gypsum by weight and contained 63% water by weight.” Bayer ¶ 87.
Furthermore, Ross teaches that “[t]he present invention discloses
obtaining a lignocellulose based medium that is conducive towards the
growth of fungal vegetative growth, mixing said lignocellulose based
medium with water until a desired hydration level is reached.” Ross ¶ 16.
Finally, Kalisz teaches that, in its method, “[t]he live mycelium is
cured to terminate further mycelium growth and form a mycelium structure.
Moisture is applied to the mycelium structure such that the mycelium
structure is nearly fully saturated.” Kalisz ¶ 3.
We can reasonably infer from these teachings that the claimed
moisture range is a result-effective variable, and that it would have been
obvious to a person of ordinary skill to modify the teachings of Bayer and
Ross to achieve the claimed range. See In re Boesch, 617 F.2d 272, 276
(C.C.P.A. 1980) (holding that “discovery of an optimum value of a result
effective variable … is ordinarily within the skill of the art”). We are
therefore persuaded that the combined cited prior art teaches the limitation
Appeal 2019-006398
Application 14/510,912

13
of claim 1 reciting “obtaining a mass of material comprised of discrete
particles, glucan-containing mycelia cells and a moisture content of from
45% to 70%.”
Claim 1 also requires:
[P]lacing the mass of material in a compression fixture;

heating the mass of material in the compression fixture while
compressing the material into a compressed body of a desired
density and shape within said compression fixture;

[and]

maintaining the compressed body under heat and compression
for a time sufficient to allow cross-linking between the glucans
in said mycelia cells to bind the discrete particles together in the
compressed body….

With respect to the latter limitation, Appellant’s Specification
discloses that the heat and compression required to effect cross-linking of
the glucans in the mycelial cells is between 200° and 650°F, while
compressing the biocomposite material at a pressure of from 10 to 1500 psi.
Spec. 4. Example 8 of Bayer teaches: “the starch binder and fruiting body
chips were then placed in a 4x4' press and compacted at 100 PSI for 2
minutes. After pressing, the board was removed from the press and allowed
to cure in a convection oven for 2 hours at 300 degrees Fahrenheit.” Bayer ¶
120. Bayer further notes that it was well known in the art that “[t]o convert
any fungal fruiting body, new or seasoned4, into a board or shape
conventional manufacturing processes, as described above, can be used.”
Bayer ¶ 21. Footnote 4 of paragraph [0021] of Bayer informs us that:
“Seasoned refers to the process wherein a fruiting body is dehydrated over a
Appeal 2019-006398
Application 14/510,912

14
period of time… in a high temperature (100 degrees F. through 1000 degrees
F.) drying process.” Id.
Ross teaches:
The Applicant has discovered that the application of compressive
pressure at points throughout the process, either to the
lignocellulose based medium or the growing fungal mycelium,
results in vastly increased strength, durability and adhesion
characteristics. This process additionally speeds production time
and allows for the creation of much larger fungal objects.

Ross ¶ 14. Specifically, Ross teaches that:
The lignocellulose-based medium may be placed into a mold so
that the colonized fungal substrate forms into a molded fungal
shape. In each case, a primary compressive pressure of at least
100 PSI and preferably at least 500 PSI is applied to the
lignocellulose-based medium or colonized fungal mycelium
before being reduced by a factor of at least 4 and preferably 20.

Id. at ¶ 18. We consequently agree with the Examiner that the combination
of Bayer and Ross teach the limitations reciting “placing the mass of
material in a compression fixture [and] heating the mass of material in the
compression fixture while compressing the material into a compressed body
of a desired density and shape within said compression fixture.”
Furthermore, Bayer teaches that, following compression, the “mass of
material” is heated “in a convection oven for 2 hours at 300 degrees
Fahrenheit” which falls within the temperature range disclosed by the
Specification as being “required to effect cross-linking of the glucans in the
mycelial cells.”
Appeal 2019-006398
Application 14/510,912

15
We do not need to reach Appellant’s questionable argument4 that the
Examiner is collaterally estopped by our Prior Decision from finding “that
the application of the disclosed temperatures and pressures of Bayer and
Ross would necessarily result in cross-linking between the glucans in the
mycelia cells of Bayer and Ross.” See App. Br. 8. Appellant points to the
portion of the Prior Decision stating that:

4 Collateral estoppel (or, more properly in this instance, issue preclusion)
“means simply that when an issue of ultimate fact has once been
determined by a valid and final judgment, that issue cannot again be
litigated between the same parties in any future lawsuit.” Ashe v. Swenson,
397 U.S. 436, 443 (1970). We find dubious Appellant’s argument that the
doctrine applies here for several reasons.
First, it is by no means clear that a Decision by the Board reversing
the Examiner upon this particular issue constitutes a “final judgment” upon
the issue, thus invoking issue preclusion in future appeals to the Board.
Indeed, Appellant and Examiner have continued the examination process
of this very application subsequent to the Board’s Prior Decision,
rendering it highly questionable whether the present appeal represents a
“subsequent action” or merely a continuation of the examination process.
Second, an appeal to the Board from the Examiner’s rejection is not,
strictly speaking, an inter partes litigation at all, but is an ex parte appeal
from the Examiner’s rejection and it is questionable whether res judicata
applies in such instances. The duty of the USPTO is to issue valid patents.
See Graham v. John Deere Co., 383 U.S. 1, 18 (1966) (“[T]he primary
responsibility for sifting out unpatentable material lies in the Patent
Office.”) The public policy of issuing valid patents outweighs the judicial
and public policy considerations of res judicata and collateral estoppel.
See Ex parte Craig, 411 F.2d 1333 1335–36 (C.C.P.A. 1969).
Third, issue preclusion does not generally apply to subsequent appeals
to the Board on identical or near-identical claims. See In re Herr, 377 F.2d
610, 612 (C.C.P.A. 1967). Nevertheless, and as we explain above, the
Examiner does not rely upon Ross as teaching this element of the claim, so
we need not reach Appellant’s argument in this respect.
Appeal 2019-006398
Application 14/510,912

16
Appellants’ Specification ... suggests that heat considerably in
excess of the 55–90°F range taught by Ross is required to achieve
cross-linking of the glucans of the mycelia. We consequently
find the Examiner’s findings are not persuasive [ ]on this point.
Furthermore, this is also dispositive of the third finding of the
Examiner, i.e., that “the method disclosed by Ross would
necessarily result in cross-linking between the mycelial
glucans.” We consequently find that the combination of Bayer
and Ross neither teaches nor suggests this limitation and we
reverse the Examiner’s rejection of claim upon this ground.

Prior Dec. 14–15. However, our Prior Decision also points out that the
Examiner relied solely upon the teachings of Ross with respect to the
limitation reciting “maintaining the compressed body under heat and
compression for a time sufficient to allow cross-linking between the glucans
in said mycelia cells to bind the discrete particles together in the compressed
body”:
The Examiner finds that Ross teaches the steps of heating and
compression as required of instant claim 1, thus the method
disclosed by Ross “would necessarily result in cross-linking
between the glucans.” Ans. 46. The Examiner provides no
evidence of record to support this finding of inherency. In
particular, Ross teaches maintaining the culture at temperatures
between 55° and 90°F, which are [sic] “are conducive to the
organism’s growth patterns.” Ross ¶ 50. Ross is silent with
respect to the issue of cross-linking glucans.

Id. at 14. However, the Examiner now points to Example 8 of Bayer,
combined with the teachings of Ross, as teaching this limitation. As we
have explained, Example 8 of Bayer teaches both heating and compression
steps that fall within the range disclosed by the Specification as being
sufficient to effect “cross-linking between the glucans in said mycelia cells.”
See Spec. 4.
Appeal 2019-006398
Application 14/510,912

17
The dispositive issue thus remaining before us is whether the
combined cited prior art would have taught or suggested to a person of
ordinary skill in the art, the limitation of claim 1 reciting “maintaining the
compressed body under heat and compression for a time sufficient to allow
cross-linking between the glucans.” The conjunction “and” in the language
of the claims requires that heat and compression be maintained at the same
time.
Example 8 of Bayer, upon which the Examiner relies, teaches that
compression is applied first, followed by heat: “The starch binder and
fruiting body chips were then placed in a 4x4' press and compacted at 100
PSI for 2 minutes. After pressing, the board was removed from the press
and allowed to cure in a convection oven for 2 hours at 300 degrees
Fahrenheit.” Bayer ¶ 120. The question before us then, is whether it would
have been obvious to a skilled artisan to combine the successive
compression and heating steps.
We conclude that it would have been obvious. Appellant makes no
argument or evidence of record that simultaneously compressing and heating
the claimed mass of material endows the subsequent composition with any
properties that would have not been present in the successive steps taught by
Example 8 of Bayer. Furthermore, Appellant provides no evidence of record
to demonstrate that the successive compression and heating steps taught by
Bayer, and within the effective ranges disclosed by Appellant’s
Specification, would not have produced the same glucan cross-linking as
would the simultaneous heating and compression recited in the claim. See
Application of Tatincloux, 228 F.2d 238, 726 (C.C.P.A. 1955) (stating that,
“[a]s a general rule, no invention is involved in . . . performing
Appeal 2019-006398
Application 14/510,912

18
simultaneously operations which have previously been performed in
sequence,” absent a showing of unexpected results).
Indeed, Appellant’s Specification expressly discloses that it is heat
alone (and not the combined heat and compression) that is necessary and
sufficient to cause cross-linking of the glucans:
The heating of the mycelium matrix actually provides value in
two places, which makes this process distinctly different from
the prior art. The fungal cell wall is comprised of chitin and
glucans. The glucans, when heated and saturated with the
moisture embedded within the composite, begin to flow like a
traditional resin and when dried stick the particles together
beyond the traditional mycelium matrix.

Spec. 3.
We further conclude that a person of ordinary skill in the art would
have been motivated to combine the heating and compression steps taught
by Bayer as a time-saving step in the ply production process.
Finally, Appellant points to Bayer’s teaching that “[b]yproducts from
the aforementioned fruiting body processing, entire fully dried fruit, or any
combination thereof can be chipped into either congruent or variable
particles. These particles can be bound into a composite board using an
organic (natural, example: mycelium) or synthetic resin.” App Br. 6
(quoting Bayer ¶ 118). Appellant appears to argue that a synthetic resin is
necessary to this process.
We disagree. The passage of Appellant’s Specification quoted
immediately supra discloses that “[t]he glucans, when heated and saturated
with the moisture embedded within the composite, begin to flow like a
traditional resin….” Spec. 3. Consequently, the heating process described
Appeal 2019-006398
Application 14/510,912

19
in Example 8 would inherently produce an organic, natural resin, as taught
by paragraph [0118] of Bayer.
We consequently conclude that a person of ordinary skill in the art
would have found the process recited in claim 1 to be obvious over the
combined cited prior art, and we affirm the Examiner’s rejection of the
claim. Furthermore, because Appellant relies upon the same arguments with
respect to claims 36 and 37, we similarly affirm the rejection of those
claims. See App. Br. 20.

B. Rejection of claim 2
Issue
Appellant argues that the Examiner erred in finding that the combined
cited prior art teaches or suggests the limitation of claim 2 reciting:
“wherein said step of heating the mass of material in the compression fixture
reduces said moisture content to a range of from 6% to 30% to impart
electrical conductivity to the removed compressed body.” App. Br. 14.

Analysis
Appellant acknowledges that Bayer teaches heating to terminate the
growth of mycelium, and that Ross teaches keeping a vessel containing
fungal mycelium in a growing room at a temperature between 55 and 90
degrees Fahrenheit conducive to the organism’s growth patterns but does not
disclose heating to reduce moisture content to impart electrical conductivity.
App. Br. 14–15.
Appellant also acknowledges that Kalisz teaches:
Appeal 2019-006398
Application 14/510,912

20
After the mycelium 95 has grown into secure connection with the
engagement side 98 of the coverstock 94, heat is applied to the
mold cavity 92 to terminate further growth of the mycelium 95
(step 99). The finished part 100 is then removed from the mold
cavity 92 and is ready for further finishing (step 102) or
installation into a vehicle (FIGS. 9 and 9A).

App. Br. 15 (quoting Kalisz ¶ 755). However, Appellant argues, there is no
teaching or suggestion in Kalisz to heat a mycelium substrate “to dehydrate
the mycelia cells.” Id.
We disagree. Appellant’s Specification discloses:
The biocomposite material can be dried to a moisture content of
between 6% and 30% during the heated compression stage to
retain enough moisture to impart electrical conductivity such that
the resultant compressed monolithic body can be powder coated
since a powder coating process requires the material to be
electrically conductive and moisture, rather than metals salts, is
used to impart this characteristic.

Spec. 9.
Bayer teaches that “[a]fter removing from the enclosure 4, the fruiting
body 7 was dried for 45 minutes in a high capacity convection drying unit at
140 degrees [F]ahrenheit until moisture content was below 7%.” Bayer
¶ 98; see also ¶¶ 104, 111, 117. Bayer also teaches that:
If a certain moisture content is desired, to reach a desired elastic
modulus for example, the sample could be removed from the
dryer sooner, and laminated in a waterproof resin, locking the
moisture inside the part and preserving the physical properties
that exist at that moisture level. In such a way, composite parts
can be formed with varying stiffnesses using the same tissue with
differing moisture contents. Moisture content and elastic

5 Appellant mistakenly cites this quotation as being from paragraph [0076]
of Kalisz.
Appeal 2019-006398
Application 14/510,912

21
modulus are directly correlated, and this correlation can be used
to determine anticipated tensile strength, elastic
modulus/strength, shear strength/modulus, and compressive
strength, on a sample of known geometries by modifying the
moisture fraction of the samples total mass.

Bayer ¶ 138.
Kalisz teaches:
The cured mycelium mat may be super-dried by
dehumidification, kiln drying, or any other procedure for
removing moisture, strengthening, and hardening the subject
material. The superdrying process lasts for at least one day in
which the mycelium mat is subjected to temperatures of at least
150 degrees Fahrenheit. The super-dried mycelium mat achieves
a greater hardness as a result of a low moisture content of
between 5 and 25 percent. In another embodiment, the moisture
content is lowered to less than one percent.

Kalisz ¶ 84; see also claims 3, 12.
Both Bayer and Kalisz thus teach that it was known in the art to
decrease the moisture content of the composite mycelial mass to the range
recited in claim 2. Although we agree with Appellant that none of the
references expressly discuss the electrical properties of the dried mass of
matter, claim 2’s recitation of “reduces said moisture content to a range of
from 6% to 30% to impart electrical conductivity to the removed
compressed body” directly implies that reducing the moisture content to the
claimed range results in electrical conductivity being imparted to the
mycelium, and therefore, the mass of material, when reduced in moisture
content between 6% and 30% would necessarily, and thus inherently, impart
such a property. We consequently affirm the Examiner’s rejection of claim
2.
Appeal 2019-006398
Application 14/510,912

22
C. Rejection of claim 4
Issue
Appellant argues that the Examiner erred in finding that the combined
cited prior art teaches or suggests the limitation of claim 4 reciting: “wherein
said step of heating the mass of material includes heating the material to a
temperature of from 250°F. to and 650°F. while compressing the material at
a pressure of from 10 to 1500 psi.” App. Br. 15.

Analysis
Appellant argues that none of the cited references teaches or suggests
the parameters of claim 4. App. Br. 15. Appellant argues further that the
Examiner has not adduced any evidence that the parameters of claim 4 are
result-effective variables that could be determined via routine
experimentation by an artisan of ordinary skill, particularly, where the
general conditions (as in claim 1) are not disclosed in the prior art. Id. at 16.
We do not find Appellant’s arguments persuasive. We have explained
that Bayer teaches: “The starch binder and fruiting body chips were then
placed in a 4x4' press and compacted at 100PSI for 2 minutes. After
pressing, the board was removed from the press and allowed to cure in a
convection oven for 2 hours at 300 degrees Fahrenheit.” Bayer ¶ 120.
These values fall within the ranges recited in claim 4.
We have also explained why we conclude that it would have been
obvious to a person of ordinary skill in the art to combine the heating and
compression steps taught by Bayer. Because Bayer teaches values within
the ranges recited in claim 4, and because we conclude that it would have
been obvious to combine the compression and heating steps of Bayer, we
Appeal 2019-006398
Application 14/510,912

23
conclude that claim 4 is obvious over the combined cited prior art and we
affirm the Examiner’s rejection. Furthermore, because Appellant relies upon
the same arguments with respect to claims 5, 6, and 33 (see App. Br. 16, 20),
we similarly affirm the Examiner’s rejection of those claims.

D. Rejection of Claim 7
Issue
Appellant argues that the Examiner erred in finding that the combined
cited prior art references teach or suggest “placing a lamination on a surface
of the material in the compression fixture prior to said step of heating the
material whereby the lamination is integrated into the compressed body,” as
recited in claim 7. App. Br. 16.

Analysis
Appellant argues that the Examiner relies upon paragraph [0075] of
Kalisz, which teaches:
[A]nother method of making a formed part includes providing an
aggregate (step 34) and mixing the aggregate with a fluid (step
36) to create a liquid aggregate (step 32). A fungal inoculum is
provided (step 38) and mixed with the liquid aggregate (step 39)
to create a mixed slurry 90. The slurry 90 is placed into a mold
cavity 92 (step 93) and a coverstock 94 is placed over the mold
cavity 92 (step 95), as disclosed above in similar processes. It is
contemplated that a top mold 96 may be placed over the mold
cavity 92 (FIG. 8A), wherein the top mold 96 holds the
coverstock 94 in place over the mold cavity 92 during cellular
growth of the fungal inoculum into live mycelium 95. As shown
in FIG. 8B, the mycelium 95 is allowed to grow over a
predetermined length of time until the mycelium has physically
engaged with an underside of the coverstock 94 (step 96) ....
After the mycelium 95 has grown into secure connection with the
Appeal 2019-006398
Application 14/510,912

24
engagement side 98 of the coverstock 94, heat is applied to the
mold cavity 92 to terminate further growth of the mycelium 95
(step 99). The finished part 100 is then removed from the mold
cavity 92 and is ready for further finishing (step 102) or
installation into a vehicle (FIGS. 9 and 9A).

Appellant contends that there is no teaching in paragraph [0075] of Kalisz
that the slurry 90 is compressed. Id. (citing Prior Dec. 10).
The Examiner responds that the limitation directed to placing the mass
of material in a compression fixture is taught by Ross. Ans. 25. Ross
teaches placing the growing fungal culture in a compression fixture, at
pressures of at least 100 psi, 500 psi or at least 2000 psi. Id. (citing Ross
¶ 43).
We are not persuaded by Appellant’s argument. As an initial matter,
“one cannot show non-obviousness by attacking references individually
where … the rejections are based on combinations of references.” In re
Keller, 642 F.2d 413, 426 (C.C.P.A. 1981) (citing In re Young, 403 F.2d
754, 757 (Fed. Cir. 1968).
We agree with the Examiner’s reasoning that the combination of Ross
and Kalisz teaches the disputed limitation. Kalisz teaches a mycelial mass
placed in a mold with a coverstock (i.e., a ply). See Kalisz Fig. 8. Ross
teaches compression of a mycelial mass in a mold. See Ross ¶ 43. We also
agree with the Examiner’s reasoning that it would have been obvious to
combine the teachings of Ross and Kalisz to provide the limitation recited in
claim 7 (see Final Act. 10–11), and we consequently affirm the Examiner’s
rejection.

Appeal 2019-006398
Application 14/510,912

25
E. Rejection of claim 8
Issue
Appellant argues the Examiner erred in finding that the combined
cited prior art teaches or suggests the limitation of claim 8 reciting “at least
one insert for pressing into the material during said step of heating the
material to emboss a surface of the compressed body.” App. Br. 17.
Analysis
Appellant contends that none of cited prior art references teach or
suggest the disputed limitation. App. Br. 17. According to Appellant, Bayer
teaches, in Figure 21, a fruiting body with a projection formed by an
additional conduit 9c. Id. (citing Bayer Figs. 20, 21; Prior Dec. 6).
Appellant argues that Ross teaches several molded shapes formed by molds.
Id. However, asserts Appellant, there is no teaching of an insert in the molds
for embossing the surface of a molded shape in any of the references. Id.
The Examiner responds that Kalisz teaches the insertion of a pin into
the mold cavity. Ans. 25 (citing Kalisz ¶ 78, Figs. 13–14C). The Examiner
finds that Kalisz teaches that, during the fungal growth in the mold cavity,
the mycelium hyphae grow into, and bond with, the pin that has been
inserted into the mold cavity. Id. Therefore, the Examiner finds, the
inserted pin presses into the biocomposite material during the cultivation of
the fungal product: the mycelium growth fills the mold cavity, thus
incorporating the pin within the final product. Id. at 15–26.
We are not persuaded by Appellant’s arguments. Appellant’s
Specification discloses, with respect to the limitation of claim 8:
Press the flat blank board into the predetermined curved shape,
such as a shape for a chair back, along with surface features under
a compressive force…. The surface feature may be obtained by
Appeal 2019-006398
Application 14/510,912

26
embossing at least one face of the board with a predetermined
sculptured feature using an embossing surface on the face of the
press that is pressed against the board.

Spec. 15–16. Consequently, any feature can be embossed into the
compressed mycelial mass by “a predetermined sculptured feature using an
embossing surface on the face of the press.”
We agree with the Examiner that Kalisz teaches using a pin to emboss
a feature (an impression conforming to the contours of the pin) into the
mycelial mass. Furthermore, as we have explained supra, Kalisz also
teaches a mycelial mass placed in a mold with a coverstock (i.e., a ply). See
Kalisz ¶ 75, Fig. 8. Ross teaches compression of a mycelial mass in a press.
See, e.g., Ross ¶ 18. We conclude that, given the combined teachings of
Kalisz and Ross, and given that embossing techniques in compressive molds
are generally very well known in the art, claim 8 is obvious over the prior
art, and we consequently affirm the Examiner’s rejection.

F. Rejection of claim 9
Issue
Appellant argues that none of the combined references teach a “pinch
press” as recited in claim 9. App. Br. 17 (citing Prior Dec. 16).

Analysis
Appellant’s Specification provides no express definition of a pinch
press. We consequently adopt the broadest reasonable interpretation
consistent with Appellant’s Specification. ICON, 496 F.3d at 1379.
Appellant’s Specification discloses:
Appeal 2019-006398
Application 14/510,912

27
[T]he engineered substrate 10 containing some residual moisture
and, for example in the form of a flat rectangular plate or tile, is
placed in a compression fixture 11, for example, a pinch press
11. As illustrated, the pinch press 11 has a bottom platen 12 that
can be heated and that is formed with a mold body 13 of
predetermined shape, for example, of semi-cylindrical shape.
The pinch press 11 also has a top platen 14 for engaging on the
bottom platen 12 with a cavity 15 within the platen 14 for mating
about the mold body 13. Typically, when the platens 12, 14 are
closed together, a semi-cylindrical gap exists between the mold
body 13 and the cavity 15.

Spec. 6.
The Examiner responds that given that Ross teaches that pressure may
be physically applied using a mechanical press, which may be considered a
pinch press, meeting the limitation of claim 9. Ans. 26 (citing Ross ¶ 47).
We are not persuaded by Appellant’s argument. As an initial matter:
“[W]e hold that the Board reasonably interpreted Rule 41.37 to require more
substantive arguments in an appeal brief than a mere recitation of the claim
elements and a naked assertion that the corresponding elements were not
found in the prior art.” In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011).
Appellant’s argument is consequently deficient.
Furthermore, Appellant’s Specification discloses an exemplary pinch
press as a kind of mechanical press. See Spec. 6. Ross teaches that
“[p]ressure may be applied through a mechanical press, roller, or other
suitable compressing means used in continuous feed systems.” Ross ¶ 47.
We agree with the Examiner that a person of ordinary skill in the art, being
conversant with the different types of mechanical press taught by Ross, and
in view of the disclosures of the Specification, would understand that a pinch
Appeal 2019-006398
Application 14/510,912

28
press would have been an obvious type of mechanical press. We
consequently affirm the Examiner’s rejection of claim 9.

G. Rejection of claim 29
Issue
Appellant argues that the Examiner erred in finding that the combined
cited prior art teaches or suggests the limitation of claim 29 reciting that the:
“mass of material is placed in at least one enclosure prior to said step of
placing the material in the compression fixture to allow said mycelia cells to
form a network of interconnected glucan-containing mycelia cells extending
around said discrete particles.” App. Br. 17.

Analysis
Appellant argues that Bayer teaches growing a fruiting body in an
enclosure 4 without any disclosure of placing the fruiting body in a
compression fixture. App. Br. 18. According to Appellant, Ross teaches
introduction of a fungal inoculum to a lignocellulose-based medium and,
after permeation of the fungal inoculum in the medium, the fungal mycelium
may be placed in a mold so that the fungal mycelium forms into a molded
shape. Id. (citing Ross ¶¶ 42, 43, Fig. 1). Appellant contends that Ross also
teaches allowing time for the inoculated lignocellulose-based medium to
become colonized to the extent that said inoculated lignocellulose-based
medium is transformed into a fungal mycelium. Id. (citing Ross ¶ 46).
However, Appellant contends, Ross neither teaches nor suggests that the
fungal mycelium in the vessel contains discrete particles prior to being
placed in the mold 140. Id. (citing Ross ¶ 43).
Appeal 2019-006398
Application 14/510,912

29
Appellant asserts that Kalisz has no disclosure of placing the slurry of
fungal inoculum and a liquid aggregate in an enclosure prior to placement in
the molds. App. Br. 18.
We are not persuaded by Appellant’s arguments. As an initial matter:
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill in
the art.

In re Keller, 642 F.2d at 425. Appellant attacks each of the references
individually, but does not address the Examiner’s findings concerning the
teachings of the combined references. See Keller, 642 F.2d at 426.
Moreover, we disagree with the premise of Appellant’s argument
concerning Bayer. Bayer teaches growing the mycelial mass in a container
so that the mass can “form a network of interconnected glucan-containing
mycelia cells extending around said discrete particles,” as recited in claim 1:
In this invention, the enclosure that surrounds the primordia
controls the above listed conditions either actively or passively.
Aggregates or particles may be placed in the path of the growing
fruiting body, becoming embedded within the material during the
growth process to change the product’s physical properties.

Bayer ¶ 41. Bayer subsequently teaches that:
Starch binder, applied at a concentration of 1% by weight, was
used to bind the fruiting body fragments together. The starch
binder and fruiting body chips were then placed in a 4x4' press
and compacted at 100PSI for 2 minutes. After pressing, the
board was removed from the press and allowed to cure in a
convection oven for 2 hours at 300 degrees Fahrenheit.

Appeal 2019-006398
Application 14/510,912

30
Id. at ¶ 120. Finally, and as we have expressed, Ross also teaches
compressing the mycelial mass in a mechanical press. See Ross ¶ 47. We
consequently affirm the Examiner’s rejection of claim 29. Furthermore,
because Appellant relies upon essentially the same argument with respect to
claim 30, we similarly affirm the Examiner’s rejection of that claim.

H. Rejection of claim 31
Issue
Appellant argues that the Examiner erred in finding that the combined
cited prior art references teach or suggest the limitations of claim 31
reciting: “allow said mycelia cells to form a network of interconnected
glucan-containing mycelia cells extending around said discrete particles” (as
in claim 29 from which it indirectly depends) and to then be “molded into a
sheet” before being placed in a compression fixture and “pressed into a
deformed geometric shape during said step of heating and compressing.”
App. Br. 19.

Analysis
Appellant argues that Ross teaches that the inoculated lignocellulose-
based medium is transformed into fungal mycelium and, as such, the
mycelia cells cannot “form a network of interconnected glucan-containing
mycelia cells extending around said discrete particles,” as required by claim
31. App. Br. 19. Appellant contends that there is no teaching or suggestion
in Ross that the lignocellulose-based medium could be placed in an
enclosure to form a network of interconnected glucan-containing mycelium
extending around discrete particles and then molded into a sheet prior to
Appeal 2019-006398
Application 14/510,912

31
being placed in the mold 140 as required by claim 31. Id. (citing Ross ¶ 51).
Similarly, argues Appellant, there is no teaching in Kalisz that would
motivate one of ordinary skill in the art to do so. Id.
Appellant argues further that neither Ross nor Kalisz teaches or
suggests that a sheet of the fungal mycelium is “pressed into a deformed
geometric shape” during compression. App. Br. 19.
We are not persuaded. As we have explained supra, Bayer expressly
teaches culturing mycelia in a container and “allow[ing] said mycelia cells to
form a network of interconnected glucan-containing mycelia cells extending
around said discrete particles.” See Bayer ¶ 41.
With respect to the limitation requiring that the fungal mycelium is
“pressed into a deformed geometric shape” during compression, we agree
with the Examiner that Kalisz teaches that a fungal mycelium product can be
grown in the mold cavity as a mat, i.e., a sheet, and then rolled (i.e., a semi-
cylindrical shape) into a tube-like structure (i.e., a deformed geometric
shape) during the growth cycle and allowed to further grow to produce a
structure having different densities on the outside and inside of the final
product. See Ans. 28, Figs. 15A–B.
Furthermore, Bayer teaches the use of compression and heat on a
mycelial mass. See Bayer ¶ 120. Ross teaches that a mycelial product can
be pressed using a mechanical press. Ross ¶ 47. Ross further teaches that:
The lignocellulose-based medium may be placed into a mold so
that the colonized fungal substrate forms into a molded fungal
shape. In each case, a primary compressive pressure of at least
100 PSI and preferably at least 500 PSI is applied to the
lignocellulose-based medium or colonized fungal mycelium
before being reduced by a factor of at least 4 and preferably 20.

Appeal 2019-006398
Application 14/510,912

32
Ross ¶ 18. We consequently agree with the Examiner that Ross teaches the
limitations in question and we affirm the rejection of claim 31. Furthermore,
because Appellant relies upon the same arguments with respect to claim 32,
we similarly affirm the rejection of that claim. See App. Br. 20.

I. Rejection of claim 34
Issue
Appellant argues that the Examiner has erred in finding that the
combined cited prior art teaches or suggests the requirements of claim 34
that the compressed composite body of claim 33 have “a density of 34
lbs/ft3, a modulus of elasticity around 132 ksi, a modulus of rupture around
1698 psi, and a screw hold strength around 24 lbf at half an inch thickness.”
App. Br. 20.

Analysis
Appellant contends that the Examiner has not provided any evidence
of record to show that the combination of methods taught by the cited prior
art necessarily possesses the physical properties recited in the claim. App.
Br. 20 (citing Prior Dec. 23).
The Examiner responds that the combined references teach
drying/dehydration to the same moisture content as disclosed in Appellant’s
Specification. Ans. 28 (citing Spec. 9, 13, 14). Therefore, reasons the
Examiner, “absent evidence to the contrary, the method disclosed by the
combined references would necessarily result in imparting a density ranging
between 18 and 60 lbs/ft3, to the compressed fungal mycelium product, thus
Appeal 2019-006398
Application 14/510,912

33
resulting in the recited parameters regarding modulus of elasticity, modulus
of rupture and screw hold strength.” Id.
We are not persuaded by Appellant’s arguments. As we have
explained, the combined references teach the elements of claim 1 (from
which claim 34 indirectly depends).
Where, as here, the claimed and prior art products are identical
or substantially identical, or are produced by identical or
substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily
or inherently possess the characteristics of his claimed
product.… Whether the rejection is based on “inherency” under
35 U.S.C. § 102, or “prima facie obviousness” under 35 U.S.C.
§ 103, jointly or alternatively, the burden of proof is the same,
and its fairness is evidenced by the PTO’s inability to
manufacture products or to obtain and compare prior art
products.

In re Best, 562 F.2d 1252, 1255 (C.C.P.A. 1977). In the appeal before us,
we have concluded that the Examiner has made a prima facie case that
Appellant’s claimed invention is obvious over the combined cited prior art.
Under Best, therefore, the burden shifts to Appellant to prove that the
products rendered obvious by the prior art do not necessarily or inherently
possess the functional characteristics of the claimed invention. Appellant
has not met this burden, and we consequently affirm the Examiner’s
rejection of claim 34. Furthermore, Appellant makes an essentially identical
argument with respect to dependent claim 35 and, for the same reasons, we
affirm the Examiner’s rejection of that claim.

Appeal 2019-006398
Application 14/510,912

34
DECISION
The Examiner’s rejection of claims 1–9 and 29–37 as unpatentable
under 35 U.S.C. § 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED

Claims
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–9, 29–37 103 Bayer, Kalisz, Ross,
Perlite, Gypsum
1–9, 29–37