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 13 August 2026 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.
2. No new Claims have been added.
3. Claims 1, 5, 26 and 31 have been amended.
4. Remarks drawn to rejections under 35 USC 103.
Claims 1-2, 4-17, 26, 29-31and 34-36 are pending in the case.
The following rejections are necessitated by Applicant's amendment filed 13 August 2026 wherein the limitations in pending claims 1, 5, 26 and 31 have been amended.
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) 1-2, 4-17, 26, 29-31, and 34-36 are rejected under 35 U.S.C. 103 as being unpatentable over Kalisz et al (US 2011/0268980 A1; of record) in view of Humfeld ( U.S. 2,693,665; newly cited necessitated by amendment) and further 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; of record) and Ross et al (WO 2018/014004 A1; of record).
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.
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 contain 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. Kalisz teaches that a plasticizer, which can be a polymer, can be added after termination of the mycelium growth since it aids in forming a rigid formed part (para 0071-0072; as in claim 34).
The teachings of Kalisz regarding cellulose as a component and use in the form of nanoparticles renders obvious the limitations of claim 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. Kalisz teaches drying of a mycelium mat, which is similar to a film for removing moisture (para 0083). 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 as in claims 35-36 (para 0083) since the steps are taught by Kalisz.
Kalisz does not expressly teach the limitations of claims 6-7 and 14-15, the use of coloring agent as in claims 16 and 30.
Humfeld teaches that mycelium can be produced by culturing in a suitable media under submerged conditions. (col. 1, lines 38-40; as in claim 1). Therefore, the mycelium of Kalisz can also be produced under submerged liquid culture as in claim 1.
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 instant 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. In view of this teachings and that of Kalisz at para 0091 that foamed structure is lighter than the one that is not foamed, one of ordinary skill in the art will make non-woven mycelium that is not foamed for applications wherein such material may be needed since Kalisz teaches the these are adapted to use in vehicles in structural capacities (para 0092). The artisan would make these as variants for such applications. The artisan would also add coloring agents as in claim 16 in view of the above teaching of Kalisz since different colors are used in vehicles.
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) as well as in automotives (Kalisz).
Response to Applicant’s Remarks
Applicant has traversed the rejection of claims under 35 USC 103 of record in the previous action arguing that Claims 1 and 26 have been amended. Kalisz discloses placing mycelium slurry containing the lignocellulosic material into a mold and the mycelium slurry is bubbled by introducing gas and allowed to grow to form a foamed composite. The Office Action acknowledges that Kalisz discloses a foamed slurry process but asserts that a foamed structure is lighter than a similar non-foamed structure. Kalisz discloses forming a mycelium composite in situ in a mold or vessel from an aggregate- or slurry-based mass, encourages a foamed structure and teaches away from a non-foamed, non-woven material.
In contrast, the claimed process yields a non-foamed, non-woven sheet material that is suitable for textile-like, leather-like and other planar material applications. Kalisz, by contrast, is directed to molded of foamed mycelium composite bodies formed in-situ growth through an article-forming mass. The different product applications underscore that the cited references are directed to materially different product forms and manufacturing routes, not merely interchangeable variants.
Humfeld is directed to growing mycelium biomass in a submerged culture and recovering that biomass form the liquid medium, Kalisz is directed to forming a composite article by growth within the article-forming mass itself. There is no motivation as to what the improvement would be in the context of Kalisz. Incorporating Humfeld’s submerged-culture biomass production into Kalisz would materially alter Kalisz’s intended process and principle of operation. Kalisz relies on mycelium growth through an aggregate- or slurry-based mass, and around gas bubbles in a foamed slurry, to generate the final composite structure. Humfeld, by contrast, teaches separate production and recovery of a mycelial biomass from liquid broth. Humfeld is silent on a non-foamed, non-woven material and does not disclose forming a sheet or layer from harvested mycelium. Deeg and Ross do not remedy the deficiencies in Kalisz and Humfeld, since they are cited for other formulation features.
The claimed sequence of steps enables better control of both the process and the formation of the final product, because the separated mycelial biomass can be washed, formulated, modified, distributed into defined planar layer, and then consolidated by drying into non-woven material. The present application also distinguishes the resulting material from a foam-like structure. In view of the above remarks, withdrawal of the rejection is requested (Remarks-pages 6-9).
Applicants’ arguments are not persuasive. 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). From the teachings of Kalisz in paras 0061-0065 it can be seen that mycelium can be produced in a stirred liquid culture, and the mycelium suspension can be treated with a crosslinking agent with agitation. The lignin from wood by-products used as a component in the culture is the crosslinking agent (paras 0063-0064). The wood-by products also serve as the polymer as in claim 1. Claim 1 recites combining the mycelium with a polymer during or after 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 that the culture can be a wet slurry which is same as a semi-solid-state cultivation as in claim 9 (paras 0065). This means that both a suspension and a slurry of the mycelium can be used.
Kalisz may disclose forming a mycelium composite in situ in a mold or vessel from an aggregate- or slurry-based mass. However, Kalisz’s teachings at paras 0061-0065 tells one of ordinary skill in the art that a nonwoven material can also be made in a liquid culture medium. Kalisz has illustrated a molded composite which is a foamed structure. This is not a teaching away from a non-foamed, non-woven material. There is no teaching in Kalisz that a non-foamed material cannot be made. If the gas bubbling as in Kalisz is not used, then one would get a non-foamed product. Since Kalisz teaches the these provide strong parts and are adapted to use in vehicles in structural capacities the artisan would make these as variants for such applications. The artisan would want to look at these non-foamed variants in order to look for materials that have enhanced strength since they are used in vehicles in structural capacities.
Humfeld is cited to show that the mycelium can be produced in a submerged culture, which is also suggested by Kalisz. This means that mycelium can be produced in a submerged culture instead of a mold and crosslinked to produce a non-woven material with a reasonable expectation of success.
Incorporating Humfeld’s submerged-culture biomass production into Kalisz would not materially alter Kalisz’s intended process and principle of operation. Kalisz uses a foam production chamber and uses a slurry of the mycelium since it produces a foamed material. If one needs to produce a non-foamed material, then a foam production chamber is not needed. The mycelium can be grown in a submerged culture with agitation and then crosslinked. Instant claim 9 is drawn to mycelium being produced by a stirred semi-solid-state cultivation which reads on a slurry. From the teaching of Kalisz and Humfeld it can be seen that mycelium can be produced via a submerged culture with agitation. Therefore, using a submerged culture mycelium can be produced and crosslinked to arrive at the non-foamed non-woven material without the use of gas bubbles by modifying the process of Kalisz. Deeg and Ross teach limitations that are not taught by Kalisz and Humfeld, which can be incorporated in Kalisz.
Applicants’ argument regarding the claimed sequence of steps enabling better control of both the process and the formation of the final product, because the separated mycelial biomass can be washed, formulated, modified, distributed into defined planar layer, and then consolidated by drying into non-woven material, can be achieved in view of Kalisz and Humfeld.
The present application may distinguish the resulting material from a foam-like structure of Kalisz. However, a non-foamed material is also rendered obvious for the reasons given in the rejection above.
Therefore, the combined teachings of the cited prior art do render instant claims 1-2, 4-17, 26, 29-31, and 34-36 obvious. The rejection is maintained.
Conclusion
1. Pending Claims 1-2, 4-17, 26, 29-31, and 34-36 are rejected.
2. Claims 3, 18-25, 27-28, 32-33 have been canceled.
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 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
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