Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This Office Action is in response to the papers filed on 29 December 2025.
CLAIMS UNDER EXAMINATION
Clams 14-36 are pending and have been examine on their merits.
PRIORITY
Provisional Application 62/707,704, filed on 14 November 2017. The Provisional Application does not provide support for a reinforced biopolymer that comprises at least a portion of a non-substrate reinforcement matrix.
WITHDRAWN REJECTIONS
The rejection of claims 14-36 under 35 U.S.C. 101 has been withdrawn due to claim amendment.
REJECTIONS
New grounds of rejection have been necessitated by claim amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 14-36 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 14 has been amended to recite “wherein the reinforced mycelium comprises at least a portion of the non-substrate matrix”. The arguments filed on 29 December 2025 states support for this limitation is found at [0120] of the PG Pub.:
In another embodiment, the mycological biopolymer may be grown through a scrim or lofted non-substrate matrix. In this embodiment, the scrim or lofted non-substrate matrix is either organic or inorganic in nature and offers sufficient porosity such that the mycelium can infiltrate the material. The scrim or lofted non-substrate matrix is positioned on or above the nutritive substrate and the entire assembly is incubated in one of the configurations above. The scrim or lofted material serves as reinforcement to the mycelium, a means of oriented and directing tissue growth, a method for consistently removing the grown tissue from the nutritive substrate, or a combination thereof
The section of the specification disclosed above states the mycelium infiltrates (enters) the pores of the non-substrate matrix. Therefore the non-substrate matrix comprises part of the mycelium (i.e., in its pores).The mycelium is a tissue (page 20, second paragraph from bottom of specification as filed). The claim amendment is interpreted to mean the tissue contains part, or all, of a reinforcement matrix. The specification does not disclose mycelium tissue that comprises a portion, or all of, a reinforcement matrix. This is new matter.
An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed. In re Wright, 866 F.2d 422, 9 USPQ2d 1649 (Fed. Cir. 1989). Applicant is required to cancel the new matter in the reply to this Office Action.
Claim Rejections - 35 USC § 102
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 14-15, 18-20, 22-24 and 30-33 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Greetham et al. (Mycological Biopolymers Grown in Void Space Tooling. US 20150033620 A1).
Greetham teaches a mycological biopolymer product consisting entirely of fungal mycelium is made by inoculating a nutritive substrate with a selected fungus in a sealed environment except for a void space, which space is subsequently filled with a network of undifferentiated fungal mycelium. The environmental conditions for producing the mycological biopolymer product, i.e. a high carbon dioxide (CO2) content (from 5% to 7% by volume) and an elevated temperature (from 85° F to 95° F), prevent full differentiation of the fungus into a mushroom. There are no stipe, cap, or spores produced. The biopolymer product grows into the void space of the tool, filling the space with an undifferentiated mycelium chitin-polymer, which is subsequently extracted from the substrate and dried. (See Abstract; [0012] [0043]). The art teaches “incubation” (supra; Figure 1). Therefore an incubation chamber is inherently present.
Greetham teaches the following at [0018]:
Additionally, the product can be grown through the reinforcement layer of traditional composites. This reinforcement layer can be composed of any material that mycelium can grow through (pore size larger than 1 microns). These layers can be suspended in the void space created by the tooling that is filled with biopolymer during incubation. These reinforcement layers are then incorporated into the biopolymer producing a pre-form of the composite core and reinforcement layers.
The suspended reinforcement layer is interpreted to read on a non-substrate reinforcement matrix positioned above the upper surface of the nutritive substrate. The art teaches the mycelium grows through and infiltrates the reinforcement. The art teaches the reinforced layer is “incorporated” into the biopolymer (supra). Therefore claim 14 is anticipated.
Greetham teaches the reinforcement layer is made of woven or non-woven mats ([0068]). This is interpreted to read on a scrim. Claim 15 is included in this rejection.
Greetham teaches the biopolymer can be degraded away from any synthetic reinforcement layer or laminates, and the synthetic reinforcement layer or laminates can be recycled ([0020]). Therefore claim 18 is included in this rejection.
The environmental conditions taught by Greetham are reiterated. The art teaches incubation to produce an undifferentiated biopolymer. Therefore it has been incubated for a time period sufficient for the fungus to digest the nutritive substrate and produce a mycelium biopolymer consisting essentially of undifferentiated fungal mycelium. Claim 19 is included in this rejection.
The art teaches a tool (container) containing nutritive substrate ([0011]). Therefore claim 20 is included in this rejection.
The art teaches a downward flow of air ([0095]). Therefore claim 22 is included in this rejection.
Greetham teaches incubation for 5 to 14 days ([0058]). Therefore claims 23-24 are included in this rejection.
Greetham teaches spraying a mist in the incubation environment ([0058]). Therefore claim 30 is included in this rejection.
Greetham teaches minerals, vitamins, and the like are nutritional supplements for mycological biopolymer production (see [0008]). Therefore claims 31-33 are included in this rejection.
Therefore Applicant’s invention is anticipated as claimed.
Claims 14-24, 30 and 36 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Ross et al. (Method of producing fungal materials and objects made therefrom US Patent No. 10687482 B2) as evidenced by Merriam Webster (definition of scrim).
Ross teaches a method of forming fungal materials (Abstract). The art teaches providing a nutritive vehicle having a mixture of discrete particle and nutrients in an enclosure (column 10, lines 40-42). The nutritive vehicle has a fungal material distributed throughout (see claim 1 of Ross). The nutritive vehicle reads on a nutritive substrate and a fungus.
An intermediate layer is planted on a surface of the nutritive vehicle providing a medium through which fungal hyphae can grow (column 10, lines 51-53). Live fungal material is grown through the intermediate layer (a porous material) and away from the nutritive vehicle (column 10, lines 56-59; see claim 1 of Ross).
Figure 5 discloses the intermediate layer (element 204) is above the nutritive vehicle (element 202).
Figure 8 discloses hyphae (element 210) grow through the intermediate layer (204). . The Brittanica Dictionary defines “combine” as “to bring into such close relationship as to cause two things to work together. Therefore the fungus is interpreted to grow into and through the intermediate layer.
Regarding the enclosure: Ross teaches a growth enclosure (hence, an incubation chamber). Ross teaches “A growth enclosure can be any type of container adapted for culturing mycelia and that can contain the nutritive vehicle while minimizing opportunities for infection and allowing for the control of environmental factors such as temperature, humidity, light levels, and CO2 and O2 concentrations. Fundamental is that the enclosure controls air exchange and O2, directing the growth to only specific areas through access to atmosphere, e.g. through the intermediate layer” (see col. 11, lines 53-58).
Ross teaches the living tissue that extends through the intermediate layer are manipulated to achieve a material having a desired thickness, shape, size, and qualities. Further, Ross discloses that a substrate colonized with fungal hyphae under adequate enclosure and environmental controls will expand in an undifferentiated manner (see col. 2, lines 9-18; col. 18, lines 47-55; FIG. 8).
Ross teaches the claimed method of growing a mycelium. The art teaches conditions to produce an undifferentiated fungal mycelium. The art teaches the claimed non-substrate reinforcement matrix. The art teaches the living tissue extends through the intermediate layer. Because the art performs the active claimed method steps, the mycelium would be expected to comprise at least a portion of the reinforcement matrix. See MPEP 2112.02. Therefore claim 14 is rejected.
Claim 15 recites a scrim. The specification does not define a scrim. A scrim is defined as a woven fabric (Merriam-Webster dictionary). Ross discloses that a cellulose-based, synthetic or other organic fibers including various textile forms (e.g. woven, knit, fulled, felted) of a preferred length and structural characteristics can be deposited on the exposed surface of the growing fungal tissue (see col. 14, lines 44-65) and that the method includes porous material defining an intermediate layer that does not readily bind with fungal tissue wherein the porous material is micro-perforated or woven and selected from a group consisting of metal, plastic, and ceramic plates (see claim 1).
The non-substrate reinforcement matrix as defined in the claim is structurally the same as the reinforcement layer and intermediate layer of Ross. Therefore claim 15 is rejected.
Ross teaches an organic material (supra). Therefore claim 16 is rejected.
Ross teaches metal, plastic and ceramic (supra). These read on inorganic materials. Therefore claim 17 is included in this rejection.
Ross discloses that the method includes an intermediate layer or non-substrate reinforcement matrix that prevents the fungal material from permanently adhering to the substrate and which prevents damaging or tearing of the substrate when the fungal material is removed therefrom (see col. 3, lines 44-48). Therefore claim 18 is included in this rejection.
Ross discloses a growth enclosure or incubation chamber adapted for culturing mycelia that can contain the nutritive substrate or growth media while allowing for control of environmental factors, such as temperature, humidity, light levels, and CO2 and O2 concentrations (see col. 11, lines 53-58). Therefore claims 19-20 are included in this rejection.
Ross discloses an exposed surface in the growth enclosure (see col. 12, lines 4-5). Therefore, Ross discloses growing without a lid or with an exposed surface. Therefore claim 21 is included in this rejection.
Ross discloses controlling air exchange and O2, directing the growth to only specific through access to atmosphere, e.g. through the intermediate layer (see col. 11, lines 59-61). Therefore claim 22 is included in this rejection.
Ross discloses the mycelium will be incubated until the components fuse into a cohesive structure and/or until the components compose a uniform object or fuse together in a desired way (see col. 15, lines 30-38). Therefore, incubation occurs for a time period sufficient for the fungus to digest nutritive substrate and produce a substantially homogeneous or uniform mycelium biopolymer. Therefore claim 23 is included in this rejection.
Ross discloses growing for 4 days to 2 weeks (see col. 21, line 22; col. 19, lines 19-22). Therefore claim 24 is included in this rejection.
Ross discloses that chemical supplements may be misted onto the surface of the growing fungus materials (see col. 13, lines 18-21). Therefore claim 30 is included in this rejection.
Ross discloses a reinforcement layer may be pressed onto or near the upper surface of the nutritive substrate (see col. 14, lines 44-65). Therefore claim 36 is included in this rejection.
Therefore Applicant’s Invention is anticipated as claimed.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Claims 25 and 31-35 are rejected under 35 U.S.C. 103 as being unpatentable over Ross as applied to claim 14, 19, 22, and 30 above, in further view of Greetham (previously cited; Mycological Biopolymers Grown in Void Space Tooling.
US Pub No. 2015/0033620 A1).
The teachings of Ross as set forth above are reiterated.
Ross discloses the relative concentrations of gaseous CO-2 and O2 can be used to create desired growth habits (see col. 13, lines 51-53) and aspirated air applied to areas of the growing surface can be used to prevent or promote certain developments of the growing fungus. However, Ross does not explicitly teach the content of carbon dioxide in the air (claim 25) and use of mineral as solute in mist (claim 32-34).
Greetham teaches an undifferentiated mycological biopolymer product consisting entirely of fungal mycelium made by inoculating a nutritive substrate with a selected fungus in an environment with a void space (see Abstract).
Regarding claim 25, Greetham teaches that the environmental conditions for producing the biopolymer product includes a high carbon dioxide content from 5% to 7% by volume (see Abstract). It is noted that where the claimed ranges “overlap or lie inside the ranges disclosed by the prior art” and even when the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have similar properties, a prima facie case of obviousness exists (See MPEP 2144.05 I). It is noted that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (See MPEP 2144.05 II).
Regarding claims 31-34, Greetham teaches minerals, vitamins, and the like are nutritional supplements for mycological biopolymer production (see [0008]).
Regarding claim 35, Greetham teaches processes for producing a desired density and/or processes to increase the strength and density of the biopolymer material (see [0065]). It is reiterated that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (See MPEP 2144.05 II).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to select the optimal growing conditions to form an undifferentiated mycelium biopolymer as taught by Greetham for the method taught by Ross. The ordinary artisan would have been motivated to do so because Greetham teaches that high carbon dioxide content and elevated temperatures prevent full differentiation of the fungus (see Abstract). Therefore, Greetham teaches the environmental conditions for a desired result. The selection for high carbon dioxide content would be considered advantageous to the desired product of Ross provided by the teachings of Greetham.
Accordingly, both the claimed invention and the prior art references, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time of filing. The ordinary artisan would have reasonable expectation of success in modifying the prior art reference to arrive at the claimed invention because Ross and Greetham are directed to methods for producing undifferentiated mycelium biopolymers.
Claims 26-29 are rejected under 35 U.S.C. 103 as being unpatentable over Ross as applied to claims 14, 19, and 22 above, in further view of Mcnamara (previously cited; Insulated shipping containers modified for high-yield fungi production capable in any environment. US2016/0073589 A1).
The teachings of Ross et al. are reiterated. Ross does not specifically teach the specific flow rate and flow type (claims 26-29).
Mcnamara teaches techniques for generating high-yield fungi production (see Abstract).
Regarding claim 26-29, Mcnamara teaches a climate control system configured to control environmental conditions including airflow (see [0012]) and coupling the control center to the ventilation system to ensure proper airflow is being maintained for fungi (see [0194]). It is reiterated that “where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation” (See MPEP 2144.05 II). It is within the skill of ordinary artisan to optimize air flow for their particular desired growth habits. Absent of unexpected results, it would be obvious to pulse air flow during the incubation time period to control and create a desired growth habit.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to optimize the air flow to create optimal conditions for growth as taught by Mcnamara in the method of Ross. The ordinary artisan would have been motivated to do so because Mcnamara teaches optimizing conditions for producing high-yield fungi including monitoring airflow to ensure the proper airflow (see [0193]-[0194]). Therefore, modifications to and optimization of airflow in Ross would be considered advantageous as provided by the teachings of Mcnamara.
Accordingly, both the claimed invention and the prior art references, as a whole, would have been prima facie obvious to one of ordinary skill in the art at the time of filing. The ordinary artisan would have reasonable expectation of success in modifying the prior art reference to arrive at the claimed invention because Ross and Mcnamara are directed to mycelium production.
RESPONSE TO APPLICANT’S ARGUMENTS
The arguments made in the response filed on 29 December 2025 are acknowledged.
Argument: The Applicant argues Ross does not teach “the reinforced mycelium biopolymer comprises at least a portion of the non-substrate reinforcement matrix” as recited in amended claim 14.
Response to Argument: Ross teaches the claimed method of growing a mycelium. The art teaches the claimed nutritive substrate. The art teaches conditions to produce an undifferentiated fungal mycelium. The art teaches the claimed non-substrate reinforcement matrix (i.e. the intermediate layer). The art teaches the living tissue extends through the intermediate layer. Because the art performs the active method steps, the mycelium would be expected to comprise at least a portion of the reinforcement matrix. See MPEP 2112.02.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 14, 19-23, 25, 29-32 and 34 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1, 5, 8-9, 12-18 of US 11266085 in view of Greetham. Although the conflicting claims are not identical, they are not patentably distinct from each other because both are directed to method of growing a biopolymer with similar growth conditions, wherein the instant application also uses non-substrate reinforcement matrix and specifies the airflow rate during incubation. However, Greetham teaches growth of mycelium through reinforcement layer (page 1, [0018], line 6++) using inorganic matrix (page 3, [0092], line 3++, see cylindrical shaped tool 10 and matrix 17 in Fig. 7) and conditions for producing mycological biopolymer to increase strength and density of the biopolymer (page 2, [0065]++), therefore, it is obvious for a person of ordinary skill in the art to combine with the teaching of Greetham to use reinforcement material for the benefit of reduces the use of toxic adhesive, time and labor needed and to optimize growth conditions (as taught by Greetham) to achieve production of reinforced biopolymer. Therefore, the method of instant application is rendered obvious of the patent.
Claims 14, 19-23, 25, and 34 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1, 7, 9 of US 11277979 in view of Greetham. Although the conflicting claims are not identical, they are not patentably distinct from each other because both are directed to method of growing a biopolymer with similar growth conditions, wherein the instant application uses non-substrate reinforcement matrix and specifies the airflow rate during incubation. However, Greetham teaches growth of mycelium through reinforcement layer (page 1, [0018], line 6++) using inorganic matrix (page 3, [0092], line 3++, see cylindrical shaped tool 10 and matrix 17 in Fig. 7) and conditions for producing mycological biopolymer to increase strength and density of the biopolymer (page 2, [0065]++), therefore, it is obvious for a person of ordinary skill in the art to combine with the teaching of Greetham to use reinforcement material for the benefit of reduces the use of toxic adhesive, time and labor needed and to optimize growth conditions (as taught by Greetham) to achieve production of reinforced biopolymer. Therefore, the method of instant application is rendered obvious of the patent.
Claims 14 and 30-33 are rejected on the ground of nonstatutory obviousness-type double patenting as being unpatentable over at least claims 1-2, 5-7, 13-14 and 24 of co-pending US application No. 17736022. Although the conflicting claims are not identical, they are not patentably distinct from each other because both are directed to method of growing a biopolymer with similar growth conditions (such as use of mist), wherein the co-pending application specifies the conditions of mist, therefore the method of instant application is rendered obvious of the co-pending application.
This is a provisional obviousness-type double patenting rejection because the conflicting claims have not in fact been patented.
RESPONSE TO APPLICANT’S ARGUMENTS
The arguments made in the response filed on 29 December 2025 are acknowledged. A terminal disclaimer has not been filed. The rejection is not held in abeyance. The rejections are maintained.
CONCLUSION
No Claims Are Allowed
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATALIE MOSS whose telephone number is (571) 270-7439. The examiner can normally be reached on Monday-Friday, 8am-5pm EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sharmila Landau can be reached on (571) 272-0614. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/NATALIE M MOSS/ Examiner, Art Unit 1653
/SHARMILA G LANDAU/Supervisory Patent Examiner, Art Unit 1653