DETAILED ACTION
Response to Arguments
Applicant’s arguments filed 12/08/2025 have been fully considered but they are not persuasive.
In response to applicant’s argument regarding the Bonesteel and Price references, the examiner disagrees. It appears that applicant is arguing about how Bonesteel and Price operate (e.g., the method of growing/method of use). However, it is noted that apparatus claims cover what a device is, not what a device does or how it is to be used. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114. Thus, a method of operation does not patentably distinguish an apparatus from the prior art.
In response to applicant’s argument that the Price reference is non-analogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. In this case, the instant claims are drawn towards a device for providing a controlled environment for subsequent use (i.e., an incubator to promote biological processes). Both Bonesteel and Price disclose environmental control chambers that promote biological processes. Therefore, it is the position of the office that the Bonesteel and Price references are analogous art.
In response to applicant’s argument regarding the mean deposition rate or mean mist deposition rate, Bonesteel discloses a mist distribution system 21 that controls the deposition of mist within the incubation chamber 20 of Fig. 5A. Price discloses a master control system 800 of which further comprises at least one of: a software module 801 comprising stored algorithms 811; a software module configured to regulate a humidity; a software module configured to regulate a gaseous or an aqueous CO2 and/or O2 content; a software module configured to regulate an airflow; a software module configured to regulate a flow of water and nutrients; a software module configured to regulate an aqueous nutrient/microbe concentration of an aqueous nutrient/microbe solution; in response to the instructions. as discussed in paragraphs 187 and 326-329. The examiner maintains that the combination of Bonesteel and Price discloses a device that can provide mist distribution, similar to the mist deposition rate and mean mist deposition rate of the instant claims. The mist distribution is regulated by the software module 801 that is capable of storing various algorithms, algorithms that can be used to control the mist deposition rate and mean mist deposition rate, effectively controlling the biological process.
In response to applicant’s argument regarding an electronic controller, it is noted that the claimed “misting apparatus” provides function. That is, providing and controlling the mist deposition rate over a period of time. It is the position of the Office that, in order for the misting apparatus to function such that a specific mist deposition rate is achieved over a specific period of time, the misting apparatus must be configured to do so. Applicant is reminded that apparatus claims cover what a device is, not what a device does or how it is to be used. A claim containing a recitation with respect to the manner in which a claimed apparatus (misting apparatus) is intended to be employed (introducing an aqueous mist at a mist deposition rate and a mean mist deposition rate, wherein the mist deposition rate is less than or equal to about 150 microliter/cm2/hour, and the mean mist deposition rate is less than or equal to about 3 microliter/cm2/hour.) does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114. Thus, in the absence of further positively recited structure the mist distribution system of Bonesteel in view Price is capable of providing the operating conditions as listed in claim 213.
In response to applicant’s argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant’s disclosure, such a reconstruction is proper. See MPEP §2145 X(A).
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) are: misting apparatus in claim 213.
Because this claim limitation(s) is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph limitation: the “misting apparatus” according to the Applicant’s specification may comprises a high pressure misting pump, a nebulizer, an aerosol generator or aerosolizer, a mist generator, an ultrasonic nebulizer, an ultrasonic aerosol generator or aerosolizer, an ultrasonic mist generator, a dry fog humidifier, an ultrasonic humidifier or an atomizer misting system (including but not limited to a “misting puck”) (see Applicant’s specification page 34).
If Applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, Applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 213-235 are rejected under 35 U.S.C. 103 as being unpatentable over Bonesteel et al. (hereinafter Bonesteel) WO 2019/099474 in view of Price US 2019/0218153.
Regarding claim 213, Bonesteel discloses a system for growing an edible aerial mycelium, comprising: a growth matrix (a growth media 15 comprised of nutritive substrate and a fungus) comprising a substrate and a fungal inoculum, wherein the fungal inoculum comprises a fungus as discussed on page 13; a growth environment (incubation chamber 20) configured to incubate the growth matrix as a solid-state culture for an incubation time period as discussed on page 14; a misting apparatus (mist distribution system 21) as discussed on page 14.
Bonesteel discusses maintaining the incubation chamber with a predetermined environment of humidity, temperature, carbon dioxide and oxygen sufficient to produce a mycelium biopolymer, see pages 2-3 and controlling the deposition of mist, see pages 16-17. However, Bonesteel does not explicitly disclose wherein the growth environment comprises a carbon dioxide (CO2) level between at least about 0.02% (v/v) and less than about 8% (v/v) and an aqueous mist at a mist deposition rate and a mean mist deposition rate, wherein the mist deposition rate is less than or equal to about 150 microliter/cm2/hour, and the mean mist deposition rate is less than or equal to about 3 microliter/cm2/hour.
Price discloses a temperature control system 225 and a master control system 800 further comprises at least one of: a software module 801 comprising stored algorithms 811, configured to regulate a temperature; a software module configured to regulate a humidity; a software module configured to regulate a gaseous or an aqueous CO2 and/or O2 content; a software module configured to regulate an airflow; a software module configured to regulate a flow of water and nutrients; a software module configured to regulate an aqueous nutrient/microbe concentration of an aqueous nutrient/microbe solution; a software module configured to regulate an aqueous pH; a software module configured to regulate a water oxidation reduction potential (ORP); a software module configured to regulate an aqueous electrical conductivity (EC); in response to the instructions. as discussed in paragraphs 187 and 326-329.
Since Bonesteel discloses that it is necessary to maintain the incubation chamber with a predetermined environment of humidity, temperature, carbon dioxide and oxygen sufficient to produce a mycelium biopolymer while preventing full differentiation of said fungus into a mushroom, it would have been obvious to one of ordinary skill in the art to modify Bonesteel to include a temperature control system and a master control system similar to that taught by Price in order to achieve optimal output while preventing full differentiation of said fungus into a mushroom. That is, Bonesteel as modified is capable of providing a growth environment that comprises a carbon dioxide (CO2) level between at least about 0.02% (v/v) and less than about 8% (v/v) and an aqueous mist at a mist deposition rate and a mean mist deposition rate, wherein the mist deposition rate is less than or equal to about 150 microliter/cm2/hour, and the mean mist deposition rate is less than or equal to about 3 microliter/cm2/hour.
It is noted that apparatus claims cover what a device is, not what a device does or how it is to be used. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114.
Regarding claims 214-216 and 221-222, the device disclosed by Bonesteel in view of Price is structurally the same as the instantly claimed. Thus, in the absence of further positively recited structure the device of Bonesteel in view of Price is capable of providing the operating conditions as listed in the intended use section of the claim.
It is noted that apparatus claims cover what a device is, not what a device does or how it is to be used. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114.
Regarding claim 217, Bonesteel discloses wherein the aqueous mist comprises one or more solutes as discussed on at least page 14.
Regarding claim 218, Bonesteel discloses wherein the misting apparatus is configured to deposit the aqueous mist onto the growth matrix, an extra-particle aerial mycelial growth that is growing from the matrix, or both as discussed on at least page 14.
Regarding claim 219, Bonesteel discloses wherein the growth environment comprises a substantially horizontal airflow (via fan 12) across the growth matrix as shown in Fig. 5A and discussed on at least pages 8 and 9.
Regarding claim 220, Bonesteel discloses wherein the substantially horizontal airflow has a velocity of no greater than about 275 linear feet per minute discussed on at least pages 12 and 13.
Regarding claim 223, Bonesteel does not explicitly disclose that the fungus is a filamentous fungus.
However, absent unexpected results, it would have been obvious to one having ordinary skill in the art to select a filamentous fungus, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP §2144.07.
Regarding claim 224, Bonesteel does not explicitly disclose that wherein the growth environment is a dark environment.
In the absence of further positively recited structure the device of Bonesteel in view of Price is capable of providing a dark growth environment. It is noted that apparatus claims cover what a device is, not what a device does or how it is to be used. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114.
Regarding claims 225-230, Bonesteel is silent towards the type of material used for composing the substrate.
However, absent unexpected results, it would have been obvious to one having ordinary skill in the art to a substrate type as listed in claims 225-230, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice. See MPEP §2144.07.
Regarding claims 231-235, as to the production steps, the device disclosed by Bonesteel in view of Price is structurally the same as the instantly claimed. Thus, in the absence of further positively recited structure the device of Bonesteel in view of Price is capable of producing the products as listed in the product section of the claim. It is noted that apparatus claims cover what a device is, not what a device does or how it is to be used. A claim containing a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus if the prior art apparatus teaches all the structural limitations of the claim. See MPEP § 2114.
Additionally, it is also noted that material or article worked upon does not further limit an apparatus claim. Said limitations do not differentiate apparatus claims from prior art. Further, it has been held that inclusion of the material or article worked upon by a structure being claimed does not impart patentability to the claims. See MPEP § 2115.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LYDIA EDWARDS whose telephone number is (571)270-3242. The examiner can normally be reached on Monday-Thursday 6:30-5:30 EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Elizabeth Robinson can be reached on 571-272-7129. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/LYDIA EDWARDS/Primary Examiner, Art Unit 1796