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 .
The amendment filed 10 November 2025 has been received, entered and considered. The following information has been made of record in the instant amendment:
1. Claims 3, 18-25, 27-28 and 32-33 have been canceled. Claims 3 and 28 were canceled in the instant filing.
2. No new Claims have been added.
3. Claims 1, 5-7, 10-11, 14, 16-17, 26 and 30-31 have been amended.
4. Remarks drawn to rejections under 35 USC 112, 102 and 103.
The following objection(s)/rejection(s) has/have been overcome:
5. The rejection of Claims 14, 17 and 31 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, has been overcome by amendment.
6. The rejection of Claim 3 under 35 U.S.C. 102(a)(2) as being anticipated by Kalisz et al (US 2011/0268980 A1), and the rejection of Claim 28 under 35 U.S.C. 103 as being unpatentable over Kalisz et al (US 2011/0268980 A1) in view of Deeg et al (Greener Solutions: Improving performance of mycelium-based leather-Final Report to Mycoworks, 2017, pages 1-54; cited in the IDS filed 06/30/2022) and further in view of Ross et al (WO 2018/014004 A1) have been rendered moot by cancelation.
Claims 1-2, 4-17, 26 and 29-31 are pending in the case.
The following rejections are necessitated by Applicant's amendment filed 10 November 2025 wherein the limitations in pending claims 1, 5-7, 10-11, 14, 16-17, 26 and 30-31 have been amended.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claim(s) 1-2, 4, 8-9, 13, and 16-17 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Kalisz et al (US 2011/0268980 A1).
Kalisz et al teaches a method of making a non-woven material from mycelium which is produced in a stirred liquid culture, wherein the mycelium suspension is treated with a crosslinking agent and agitating the suspension (para 0061-0065, 0089 and Figures 20-22). The lignin from wood by-products used as a component in the culture is the crosslinking agent (paras 0063-0064; as in claims 1-2, 4 and 8). The wood-by products also serve as the polymer as in claim 1. Claim 1 recites combining the mycelium with a polymer during cultivation and treating the produced mycelium suspension with a crosslinking agent. In the method of Kalisz, a submerged liquid culture is used wherein the mycelium is combined with a polymer during cultivation and the produced mycelium is treated with the lignin present in wood-by product. Kalisz also teaches agitation. Therefore, Kalisz teaches the steps as in claim 1.
Kalisz teaches that the culture can be a wet slurry which is same as a semi-solid-state cultivation as in claim 9 (paras 0065). A plasticizer may also be used as a component in the slurry (para 0072; as in claim 13). The wood by-products used as a component contains cellulose which is a polymer (paras 0063-0064; polymer as in claims 16-17). According to Kalisz particulate additive such as a nanoparticle can be incorporated into the liquid mixture. The nanoparticles are mixed in the form of a slurry (para 0071). This means that the cellulose can be added as nanofibrils as in claim 17.
Therefore, Kalisz anticipates claims 1-2, 4, 8-9, 13, and 16-17.
Response to Applicant’s Remarks
Applicant has traversed the rejection of claims under 102(a)(2) over Kalisz arguing that Kalisz describes the use of a liquid aggregate to obtain a mycelium slurry that is grown in a cavity mold. It mentions agitation for promoting growth. Kalisz teaches a one step process to produce the molded mycelium product. In the present application, agitation is not used for growth, but to introduce a physical force to affect mycelium suspension colloidal properties and the fungal biochemistry. The present application teaches a two-step process of producing mycelium and then using the said mycelium to produce a non-woven product. Kalisz does not teach the addition of a polymer or a fiber after cultivation and does not disclose addition of a crosslinking agent after cultivation. It does not teach that agitation is an option. Because all of the presently amended claims are not disclosed by the cited art, claim 1 and its dependencies are not anticipated. Withdrawal of the rejection is requested (Remarks-pages 7-8).
Applicant’s arguments are not found to be persuasive.
The liquid aggregate to obtain a mycelium slurry that is grown in a cavity mold is the submerged liquid culture. The agitation mentioned by Kalisz should introduce a physical force to affect mycelium suspension colloidal properties and the fungal biochemistry as in the instant case. Claim 1 recites combining the mycelium with a polymer during the cultivation and treating the produced mycelium suspension with a crosslinking agent. In the method of Kalisz, a submerged liquid culture is used wherein the mycelium is combined with a polymer during cultivation and the produced mycelium is treated with the lignin present in wood-by product. Kalisz also teaches agitation. Kalisz teaches the steps as in claim 1, and the limitations of claims 2, 4, 8-9, 13, and 16-17. Therefore, Kalisz anticipates claims 1-2, 4, 8-9, 13, and 16-17. The rejection is maintained.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
Claim(s) 5-7, 10-12, 14-15, 26, and 29-31 are rejected under 35 U.S.C. 103 as being unpatentable over Kalisz et al (US 2011/0268980 A1) in view of Deeg et al (Greener Solutions: Improving performance of mycelium-based leather-Final Report to Mycoworks, 2017, pages 1-54; cited in the IDS filed 06/30/2022) and further in view of Ross et al (WO 2018/014004 A1).
The teachings of Kalisz et al are set forth above. The teachings of Kalisz regarding cellulose as a component and use in the form of nanoparticles renders obvious the limitations of claims 30 and 31. From the teachings of Kalisz it would be obvious to one of ordinary skill in the art to substitute the lignin taught as a crosslinking agent with the crosslinking agents recited in claims 5 and 29 in order to look for crosslinking agents that may be able enhance strengthening of the mycelium network (Kalisz, para 0064). This also applies to claim 11. In view of the teachings of Kalisz the artisan would find it obvious to add the crosslinking agent separately to the mycelium as in claim 10, adjust the agitation for the time period as in claim 12, and use the method steps as in claim 26 including drying as needed (para 0083) since the steps are taught by Kalisz.
Kalisz does not expressly teach the limitations of claims 6-7 and 14-15, and the use of coloring agent as in claims 16 and 30.
Deeg et al, drawn to mycelium base materials, teaches that tyrosinase driven crosslinking strategy is appealing due to the low complexity of the process. After mixing only room temperature incubation and washing steps are required (pages 17-first two full paras; limitation of claim 6; the specification, at page 5, line 30 teaches tyrosinase as the enzyme that can be used for crosslinking).
Ross et al, drawn to composites from mycelium, teaches that a thin initial layer of mycelial growth on the exposed surface of the nutritive vehicle can be modified by application of heat and chemical treatments (paras 00098-00099). Since a crosslinking agent is used as a modification, it can be used with heat-treatment to make the modification as in claim 7. According to Ross, the fungal material should be pliant and resilient towards the use in industry. In order to be flexible plasticizers like propylene glycol is used (para 000132-000133; glycols as in claim 13). This would render obvious the use of the other plasticizers as in claims 14 and 15 as alternatives to glycol in order to optimize the flexibility of the crosslinked mycelium.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention to arrive at the claimed invention in view of the combined teachings of the prior art.
MPEP 2141 states, "The key to supporting any rejection under 35 U.S.C. 103 is the clear articulation of the reason(s) why the claimed invention would have been obvious. The Supreme Court in KSR noted that the analysis supporting a rejection under 35 U.S.C. 103 should be made explicit. The Court quoting In re Kahn, 441 F.3d 977, 988, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006), stated that "[R]ejections on obviousness cannot be sustained by mere conclusatory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.'" KSR, 550 U.S. at, 82 USPQ2d at 1396. Exemplary rationales that may support a conclusion of obviousness include: (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) " Obvious to try " choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art; (G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention."
According to the rationale discussed in KSR above, the rationale in (G) above is seen to be applicable here since based on the prior art teachings, the method of making non-woven mycelium using crosslinking agent and agitation, and the other reagents as claimed is known in the art. Thus, it is obvious to arrive at the claimed method in view of the combined teachings of the prior art
Thus, the claimed invention as a whole would have been obvious to one of ordinary skill in the art before the effective filing date of the instant invention over the combined teachings of the prior art. Product improvement is the motivation. In addition, Kalisz, Deeg and Ross teach advantages of the use of the components as claimed. This should result in a product that is useful in industry (Ross).
Response to Applicant’s Remarks
Applicant has traversed the rejection of claims under 35 USC 103 arguing that Kalisz teaches a one step method of producing a molded, non-woven material. Deeg and Ross also teach a one-step method of producing a non-woven material. In contrast, the present application discloses a two-step approach. Kalisz teaches the use of lignin as a source of nutrient during mycelium growth and teaches the fungi metabolize the lignin structure. Through this process lignin becomes part of the mycelium structure and is able to crosslink and strengthen the mycelium network. There is no reasonable expectation of success of treating mycelium with a crosslinking agent that is not able to be metabolized during mycelium cultivation. Kalisz does not provide any evidence that addition of organic compound during mycelium growth allows for crosslinking of mycelium.
Deeg teaches away from using tyrosine kinase in combination with another crosslinking agent strategy since the key challenge associated with tyrosine kinase enzymatically driven crosslinking is the lack of information on how it affects the mechanical properties of the material. The mechanism of action of tyrosine kinase is not fully understood, thus introducing other enzymes or organic compounds could render tyrosinase ineffective.
Ross fails to teach or suggest use of heat treatment and a crosslinking agent on the mycelium non-woven material. Paras 88-89 specify that the intermediate layer, which solely responsible for facilitating even mycelium growth and is not part of the resulting non-woven product, can be modified by heat treatment. Thus, claim 7 is not obvious. Ross specifies that plasticizers are added last, in the post-processing step. In contrast, the present application provides, the plasticizer can be added during mycelium cultivation. There is no reasonable expectation of success to incorporate a plasticizer before the post-processing step provided by Ross, Deeg or Kalisz. In view of the above remarks withdrawal of the rejection is requested (Remarks-pages 8-10).
Applicant’s arguments are not persuasive. Claim 1 recites combining the mycelium with a polymer during the cultivation and treating the produced mycelium suspension with a crosslinking agent. In the method of Kalisz, a submerged liquid culture is used wherein the mycelium is combined with a polymer during cultivation and the produced mycelium is treated with the lignin present in wood-by product. Kalisz also teaches agitation. Kalisz teaches the steps as in claim 1. A crosslinking agent need not necessarily be metabolized by the mycelium for it to crosslink the mycelium. Kalisz teaches that lignin is able to crosslink even after being metabolized. This means that the lignin still has the reactive groups to bond to the mycelium for the crosslinking. Therefore, there is a reasonable expectation of success that a crosslinking agent that is added will also be able to crosslink the mycelium.
It does not matter if tyrosine kinase enzymatically driven crosslinking lacks of information on how it affects the mechanical properties of the material, and the mechanism of action of the enzyme is not of importance. Kalisz teaches that crosslinking strengthens the mycelium network. In view of Kalisz there is reasonable expectation of success that tyrosine kinase enzymatically driven crosslinking will work.
Ross et al teaches that a thin initial layer of mycelial growth on the exposed surface of the nutritive vehicle can be modified by application of heat and chemical treatments (paras 00098-00099). Chemical treatment in this context includes chemical crosslinking with an agent. Since it is the mycelial growth that can be modified, the teaching of Ros indicates that the crosslinking agent can be used with heat-treatment as in claim 7. According to Ross just the addition of the plasticizer like propylene glycol makes it flexible. Even though Ross teaches adding the plasticizer post processing, Ross’ teaching suggests that it can also be added during mycelium cultivation. There is reasonable expectation of success for this too.
Therefore, the combined teachings of the cited prior art do render instant claims 5-7, 10-12, 14-15, 26, and 29-31 obvious. The rejection is maintained.
Conclusion
1. Pending Claims 1-2, 4-17, 26 and 29-31 are rejected.
2. Claims 3, 18-25, 27-28 and 32-33 have been canceled.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 GANAPATHY KRISHNAN whose telephone number is (571)272-0654. The examiner can normally be reached M-F 8.30am-5pm.
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/GANAPATHY KRISHNAN/Primary Examiner, Art Unit 1693