Gavin McIntyre et al.

Patent Trials and Appeals Board

Oct 30, 2020

2019006935 (P.T.A.B. Oct. 30, 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.
15/258,685 09/07/2016 Gavin R. McIntyre 225525.70 7264
27162 7590 10/30/2020
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
EXAMINER
ROSEBACH, CHRISTINA H.W.
ART UNIT PAPER NUMBER
1766
MAIL DATE DELIVERY MODE
10/30/2020 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 2019-006935
Application 15/258,685
Technology Center 1700
________________

Before DONALD E. ADAMS, 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.
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SUMMARY
Appellant files this appeal under 35 U.S.C. § 134(a) from the
Examiner’s Final Rejection of claims 17, 22, 24, and 25 as unpatentable
under 35 U.S.C. § 103(a) as being obvious over the combination of Bayer et
al. (US 2009/0307969 A1, December 17, 2009) (“Bayer”), G. Newaz et al.,
Characterization of Balsa Wood Mechanical Properties Required for
Continuum Damage Mechanics Analysis, 230(1) J. MATERIALS: DESIGN AND
APPLICATIONS, 206-18 (2016) (“Newaz”), and N.J. Kotlarewski et al.,
Mechanical Properties of Papua New Guinea Balsa Wood, 74 EUR. J. WOOD
PROD. 83–89 (2016) (“Kotlarewski”).2
Claims 17 and 18 stand provisionally rejected as unpatentable under
the nonstatutory doctrine of obviousness-type double patenting over claims
27 and 28 of US Appl. Ser. No. 14/510,912 (the “’912 application”).
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

NATURE OF THE CLAIMED INVENTION
Appellant’s claimed invention is directed to a method of making a
compressed biocomposite body comprising discrete particles and a network
of interconnected glucan-containing mycelia cells. Abstr.

2 Claims 19–21 and 23 are objected to by the Examiner. See Final Act. 1.
Because they have not been rejected by the Examiner, we do not reach
these claims. 37 C.F.R. §41.31(a)(1).
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REPRESENTATIVE CLAIM
Claim 17 is representative of the claims on appeal and recites:
17. A self-supporting composite body comprising a substrate
of discrete particles and a network of interconnected mycelia
cells extending through and around the discrete particles and
bonding the discrete particles together, said composite body
being characterized in being stiff and in having a density between
18 and 60 pounds per cubic foot (pcf), a modulus of elasticity of
up to 250 ksi and a modulus of rupture of up to 2500 psi.

App. Br. Claims App’x 1.

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

A. Claims 17, 22, 24, and 25 under 35 U.S.C. §103(a)

Issue 1
Appellant argues that the Examiner erred because the “primordia”
taught by Bayer is not a “network of interconnected mycelial cells,” as
recited in claim 17. App. Br. 5.

Analysis
The Examiner finds that Bayer teaches a method for producing rapidly
renewable chitinous material. Final Act. 3. The Examiner finds that Bayer
teaches embedding particles in the mycelium. Id. at 4 (citing Bayer ¶ 41).
The Examiner also finds that Bayer states that if the material is compressed
while moist, and then dried, the density increases, the shear strength
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increases, and the compressive strength increases. Id. (citing Bayer ¶¶ 130–
133). The Examiner finds that Bayer teaches that the compositions
described therein can be used to replace balsa wood, which Bayer teaches as
having a density of 80 kg/m3 to 350 kg/m3, equivalent to 5–22 pcf. Id.
(citing Bayer ¶¶ 16, 20).
The Examiner finds that Bayer is silent as to the modulus of elasticity
and modulus of rupture. Final Act. 4. However, the Examiner finds that
Newaz teaches that the modulus of elasticity of balsa wood, for which Bayer
states its compositions can be substituted (citing Bayer ¶ 16), is 372 MPa in
its strongest direction, which is equivalent to 54 ksi. Id. at 5 (citing Newaz
208). The Examiner also finds that Kotlarewski teaches that the modulus of
rupture of balsa wood is between 8.5–21.6 MPa (equivalent to 1232–3133
psi). Id. (citing Kotlarewski 85, Table 1). The Examiner finds that these
values fall significantly within the ranges recited in the claims. Id.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to arrive at values for density, modulus of elasticity
and modulus of rupture within the claimed ranges, because Bayer suggests a
method for altering the properties of its composition and teaches that its
compositions may be used as a substitute for balsa wood, which has a
density of 5–22 pcf. Final Act. 4. The Examiner further concludes that,
given that (a) Bayer describes the mycelia and particles as instantly claimed
(b) the instant specification arrives at its composition via compression while
moist, and Bayer describes compression while moist (c) Bayer describes his
composition as a suitable substitution for balsa wood, which has physical
properties in the claimed ranges and (d) the claimed ranges for modulus of
elasticity and modulus of rupture are large, one of ordinary skill would
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reasonably expect the compressed product of Bayer to exhibit values in the
ranges of the three properties claimed. Id. at 5.
Appellant points to paragraphs [0041]–[0046] of Bayer which teach:
[0041] In this invention, the enclosure that surrounds the
primord[i]a 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.

[0042] To produce a shaped fruiting body the following steps are
taken:

[0043] 1) A substrate capable of supporting growth of the desired
fungal specie is created and inoculated with said specie.

[0044] 2) Said substrate is incubated at environmental conditions
optimal for the mycelia of said fungal specie to fully colonize the
substrate and mature to such a point as to support fruiting body
growth.

[0045] 3) Pinning is induced in said substrate through any
methods suitable for inducing pinning in said species.

[0046] 4) One or more of the resulting primordium [sic] are then
enclosed in a mold which represents the net shape of the desired
final product.

App. Br. 3–4. Appellant argues that a primordium is not a network of
interconnected mycelial cells. Id. at 4. Appellant contends, rather, that
Bayer teaches that a primordium is a growing fruiting body that is produced
by pinning. Id. Appellant points to allaboutmushrooms.com, Fruit Body
Structure & Mushroom Lifecycle, available at:
http://allaboutmushrooms.com/generalinfo.htm (last visited October 22,
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2020) (“allaboutmushrooms”), as teaching: “When two compatible hyphae
meet, they fuse together to form a network or threads called a mycelium.
This mycelium eventually forms what is known as a hyphal knot which
grows and develops into a pinhead which in turn grows and develops into a
mushroom….” Appellant contends that allaboutmushrooms teaches that the
hyphal knot and pinhead are distinct and separate from the hyphae and the
stem. Id.
Appellant next points to Mushrooms, What is a Mushroom?
Mushroom Facts, available at: https://www.gmushrooms.com/info.htm (last
visited October 22, 2020) (“Mushrooms”) as teaching that:
The mushroom body also grows by cell division. However, the
mushroom fruit does not grow by cell division. Just about as soon
as it starts to develop, a mushroom has almost the same number
of cells that the mature mushroom will have. The mushroom
increases in size through cell ENLARGEMENT! This means
that the cells can balloon up very rapidly. Very little energy is
required, basically the cells just enlarge with water. So a
mushroom can increase in size as fast as water can be pumped
into its cells. Almost overnight a mushroom can go from a pin
head to a large mushroom.

App. Br. 4 (emphasis added). Appellant argues further that the Key, Life
Cycle and General Anatomy of a Basidiomycete, (of record) (“Life Cycle”)
attached to Mushrooms illustrates “13. Primordia” as separate and distinct
from the “9a. Dikaryotic hyphae” and “14. Stipe/stem.” Id.
Finally, Appellant points to N.A.R. Gow et al., THE GROWING
FUNGUS, 436–437 (Chapman and Hall, 1995) (“Gow”) as teaching that in
the stipe of a mushroom that has hyphae that grow in substantially parallel
relation and do not form interconnected mycelia cells. App. Br. 5 (citing
Gow Fig. 20.7 (d)).
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Appellant summarizes that the primordium of Bayer is not a network
of interconnected mycelia cells, but is instead a mass of mycelium akin to a
hyphal knot or a pinhead produced by pinning. App. Br. 5. Appellant also
contends that the Examiner’s position that “a primordium that is knot of
mycelia reads on a ‘network’ [of interconnected mycelia cells]” is not
supported by any evidence of record. Id. To the contrary, argues Appellant,
Life Cycle illustrates the primordium as separate and distinct from any
network of hyphae. Id.
We do not find Appellant’s arguments persuasive. Bayer teaches:
Accordingly, it is an object of the invention to provide a method
for the culturing and fruiting of filamentous fungi specifically for
the production of materials and composites composed in part, or
entirely of, hyphae and its aggregative form, mycelia and
mycelium, when such hyphae are formed into a fruiting body.
….

Briefly, the invention provides a method for producing grown
materials and, in particular, provides a method of using the
growth of an organism to produce materials and composites.

In accordance with the invention, a fungus is cultured for the
production of a material using the vegetative phase of the fungus,
mycelium. This fungus is typically a Basidiomycete.

Bayer ¶¶ 9, 13–14 (emphasis added). More specifically, Bayer teaches:
1) A substrate capable of supporting growth of the desired fungal
specie is created and inoculated with said specie [sic]. 2) Said
substrate is incubated at environmental conditions optimal for
the mycelia of said fungal specie [sic] to fully colonize the
substrate and mature to such a point as to support fruiting body
growth.
Id. at ¶¶ 43–44. Bayer also teaches that: “In this invention, the enclosure
that surrounds the primordia [sic] controls the above listed conditions either
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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.”
Id. at ¶ 41; see also id. at ¶ 118–119:
Byproducts 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. The material properties of the
composite are adjustable based on resin type, particle
composition and size.

The particles can be comprised of a single fungal species or a
mixture of multiple species/strains, hence the waste streams from
commercial mushroom cultivation can be implemented.
Furthermore, other synthetic (example: plastics) or natural
(example: rice husks) particles can be implemented to yield
various material properties.

Bayer thus teaches that a mycelial network is cultured in a medium
that promotes hyphal growth and the development of fruiting bodies that
eventually fully colonize the substrate. Furthermore, Bayer expressly
teaches the use of neutral particles added to the growing mycelium substrate,
such that the eventual fruiting body grows around the particles, imparting
various material properties.
In short, Bayer teaches a network of interconnected mycelia cells
extending through and around substrate of discrete particles. To be sure,
Bayer further teaches that the culture conditions are such that the mycelium
eventually develops into a fruiting body incorporating within the discrete
particles (see Bayer ¶¶ 41, 118–119). However, product-by-process claim
17 recites: “A self-supporting composite body comprising….” The use of
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the transitional term “comprising” does not preclude the inclusion of
additional steps (e.g., the formation of fruiting bodies) in the process of
forming the claimed composition. See Crystal Semiconductor Corp. v.
TriTech Microelectronics Int’l, Inc., 246 F.3d 1336, 1348 (Fed. Cir. 2001).
“In the parlance of patent law, the transition “comprising” creates a
presumption that the recited elements are only a part of the device, that the
claim does not exclude additional, unrecited elements. Consequently, the
claims do not preclude the development of a fruiting body from the
mycelium.
Appellant argues that the primordium (i.e., the developing fruiting
body) of Bayer is not a network of interconnected mycelia cells, but is
instead a mass of mycelium akin to a hyphal knot or a pinhead produced by
pinning. We find this contention to be biologically questionable, because
the primordium is derived from the interconnected hyphae of the mycelium
(via development of the primordium), and Gow explicitly depicts that the
fruit body is composed of arrangements of hyphal cells, derived from the
mycelium.
However, we need not rely upon this evidence, in that the
“comprising” language of the claim may include additional steps, including
the development of the fruiting body, as taught by Bayer, which is derived
from the interconnected network of hyphae constituting the mycelium.

Issue 2
Appellant argues that the Examiner erred in finding that the combined
cited prior art teaches that the self-supporting composite body is stiff and has
a density between 18 and 60 pounds per cubic foot (pcf), a modulus of
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elasticity of up to 250 ksi and a modulus of rupture of up to 2500 psi. App.
Br. 5.

Analysis
Appellant notes that the Examiner acknowledges that Bayer is silent
with respect to the modulus of elasticity and a flexural strength of its
disclosed fruiting bodies, as well as the modulus of rupture. App. Br. 5.
Appellant points to paragraph [0020] of Bayer, which teaches:
Density calculations of solid sections of formed and processed
fruiting bodies have yielded a higher density for stipe (stalk)
fibers of up to 350 kg/m3, while the pelius (cap) had a mean
density of 180 kg/m3. Spore tube densities on formed and
processed sections of G. appalantum and F. fomentarius are 390
kg/m3 and 340 kg/m3 respectively. These densities are
comparable to the bulk densities of marine balsa wood, which
ranges from 80 kg/m3 upwards to 350 kg/m3 and the densities of
synthetic plastic foams.

App. Br. 6. Appellant contends that, because Bayer does not teach the
modulus of elasticity and flexural strength of its disclosed fruiting
bodies, one of ordinary skill in the art would not reasonably expect the
compressed product of Bayer to exhibit values in the ranges of the
three properties claimed. Id.
Appellant argues that Newaz teaches a species of balsa wood with an
elastic modulus of 372 MPa (54 ksi) as having a density of 90.98 kg/m3 (5.6
pcf), but does not disclose the modulus of rupture. Id. Appellant contends
that Kotlarewski discloses the physical properties of diverse internationally
sourced balsa wood, with the highest density being 410 kg/m3 (25.59 pcf).
App. Br. 6. Appellant contends that Kotlarewski teaches a balsa wood
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(Francis) having a density between 50 and 410 kg/m3 28, a modulus of
elasticity of between 2942 and 5884 MPa (42.67 and 85.34 ksi) and a
modulus of rupture of between 14.5 and 36.5 MPa (2103 and 5293 psi). Id.
at 6–7. However, Appellant asserts, Kotlarewski does not disclose a balsa
wood with a modulus of elasticity of up to 250 ksi and a modulus of rupture
of up to 2500 psi. Id. at 7.
We do not find Appellant’s arguments persuasive. Bayer teaches the
densities of various fruiting body components as ranging from 180–390
kg/m3. However, Bayer also teaches densities within that range, and other
properties, including the modulus of elasticity, and tensile and compressive
strengths, of its compositions can be manipulated by a skilled artisan. For
example, Bayer teaches that:
Mycelium is the network of hyphae that support the fruiting body
and are typically hygroscopic. This material property is highly
advantageous for forming the processed material into structural
forms using low energy processes. When moistened, the myco-
material can be formed into any number of shapes, theses shapes
will be later maintained after water extraction or submersion in a
hydrophobic solution. The moisture content of the board is
directly related to the elastic nature or plasticity of the material,
with an effect on the tensile, compressive, and shear strengths.
For example:

As moisture content increases:

elasticity increases, while elastic modulus decreases

tensile strength increases

compressive strength decreases

As moisture content decreases:

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rigidity increases, thus as does the elastic modulus

tensile strength decreases

compressive strength increases

If the material is compressed while moist, and then dried:

density increases

shear strength increase[s]

compressive strength increase[s]

Bayer ¶¶ 121–133 (internal citation omitted).
Newaz teaches that the density of dry balsa wood ranges from
40 to 340 kg/m3 (2.5-21 lb/ft3), a range which substantially overlaps the
densities taught by Bayer (180–390 kg/m3) and those claimed by Appellant
(288–960 kg/m3 (16–80 pcf)). Newaz 207. More specifically, Newaz
teaches that, for a balsa wood sample with a density of 90.98kg/m3, the
elastic modulus was 372 mPa (54 ksi): both of these values are below the
range claimed in claim 17. Id. at 208.
Kotlarewski, accumulating studies, teaches that balsa woods with a
range of densities between 40–410 kg/m3 (2.5–25.6 pcf) had a modulus of
elasticity of between 1155–5884 MPa (168–853 ksi) and a modulus of
rupture of between 8.5–36.5 MPa (1200–5300 psi). Kotlarewski Table 1.
This overlaps, at its lower range, the claimed density values of 18–60 pcf,
overlaps the claimed rang of modulus of elasticity of “up to 250 ksi,” and
falls within the claimed range of modulus of rupture of “up to 2500 psi.” Id.
We consequently agree with the Examiner that the claimed ranges of
the composition recited in claim 17 are obvious over the teachings of the
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prior art. First, Bayer expressly teaches that its composite compositions are
comparable to the bulk densities of marine balsa and Appellant’s claimed
densities. Kotlarewski teaches ranges of density, modulus of elasticity, and
modulus of rupture that also overlap Appellant’s claimed ranges. We
conclude that these overlapping ranges are sufficient to establish that the
physical properties recited in the claims are prima facie obvious over the
prior art. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir. 2003) (holding
that “[i]n cases involving overlapping ranges, we and our predecessor court
have consistently held that even a slight overlap in range establishes a prima
facie case of obviousness”).
Perhaps more importantly, Bayer expressly teaches that the physical
properties of its compositions, including density and the modulus of
elasticity, may be manipulated by altering the moisture content of the
compositions and/or by compressing them. Bayer ¶¶ 122–133. Because we
find that the physical properties of the claimed compositions are result-
effective variables, directly affecting the way the claimed composition may
be used for its intended purposes, we also conclude that a person of ordinary
skill in the art would have been able to optimize the composition to reflect
the claimed ranges. 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”).
Appellant states that the dependent claims stand or fall with claim 17.
App. Br. 7. We consequently conclude that the claims are obvious over the
combined cited prior art, and we affirm the Examiner’s rejection of the
claims.

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B. Claims 17 and 18 under the nonstatutory doctrine of obviousness-type
double patenting

In the Appeal Brief, Appellant does not argue the Examiner’s
sustained provisional rejection of claims 17 and 18 as unpatentable under
the nonstatutory doctrine of obviousness-type double patenting over claims
27 and 28 of the ’912 application. See Ans. 7 (“[Appellant] does not set
forth any arguments over this rejection”). Furthermore, Appellant has not
filed a terminal disclaimer to moot these rejections. We consequently
summarily affirm the rejection of claims 17 and 18 on this ground. See 37
C.F.R. § 41.37(c)(iv) (“[A]ny arguments or authorities not included in the
appeal brief will be refused consideration by the Board for purposes of the
present appeal”).

CONCLUSION
The Examiner’s rejection of claims 17, 22, 24, and 25 under 35 U.S.C.
§ 103(a) is affirmed.
The Examiner’s provisional rejection of claims 17 and 18 under the
nonstatutory doctrine of obviousness-type double patenting 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).

AFFIRMED

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Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
17, 22, 24,
25
103(a) Bayer, Newaz,
Kotlarewski

17, 22, 24,
25

17, 18 Nonstatutory
obviousness-
type double
patenting
’912 application 17, 18
Overall
Outcome
17, 18, 22,
24, 25