DETAILED ACTION
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 .
Applicant’s amendment and reply filed July 3, 2025 have been received and entered into the case. Claims 3 – 8 are added; claims 2- 8 are pending and have been considered on the merits. All arguments have been fully considered.
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 2 – 8 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 claim(s) contains 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
The claim is drawn to a mycelium based biocomposite comprising an internal textile, mycelium and substrate with a minimum density, modulus of elasticity and compressive strength. The claim is considered a genus claim that encompass a wide array of possible composite materials. The specification fails to set forth a representative number of examples in order to reasonably verify possession of such a potentially enormous number of materials.
The MPEP states that written description for a genus can be achieved by a representative number of species within a broad generic. It is unquestionable that the claims are broad generics, with respect to all materials that might result from any mycelium of any fungal strain that might be “composited” with any additional component, prepared by any method, to be of any size or magnitude and to have any mass, shape or dimension. It is known that the density of biocomposite materials can be altered by variances in reinforcement materials and methods of manufacturing or curing (Burgueno et al.); that environmental temperature can alter the modulus of elasticity of a material (Persson et al.); and that increases in size decreases compressive strength (Daniel et al., Jiang et al.). Further, Camilleri teaches the type of fungal mycelium and amount of growth used in biocomposite materials will greatly influence its mechanical properties to include compressive strength (p.2, 7). The instant disclosure identifies a single method to manually manufacture a mycelium based biocomposite, with a single sample size having the claimed parameters (example 1) and no identification of the fungus, substrate or textile used. Further, the specification fails to describe an “internal textile” beyond a generic referral to the preferred embodiment (p. 21 of the instant specification). Looking to the preferred embodiment, example 1 merely recites “internal textile” without any example of what the material might be. Although the specification discloses yarn on page 25, this is not indicated as a preferred embodiment, but as an example. Further, applicant states that the various materials are tunable to achieve variable results, including the internal textile and substrate (p. 25 – 26). Specifically, “Significant tuning of the inoculated substrate components can yield parts with different technical profiles. Certainly, with a greater density profile, a specimen created in the same manner as above would yield better mechanical capabilities.” (p.33). Moreover, the disclosure fails to describe or disclose any other material of any other size, dimension or weight that might have the claimed characteristics, let alone any material made from any mycelium of any fungus, with any textile and any substrate. The possible variations of biocomposite materials having the claimed mechanical parameters are limitless with potentially millions of types of materials.
The purpose of the written description requirement is to ensure that the inventor had possession, as of the filing date of the application, of the specific subject matter later claimed by them. A patent specification must describe an invention and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention. Thus, an applicant complies with the written description requirement "by describing the invention, with all its claimed limitations" and by using "such descriptive means as words, structures, figures, diagrams, formulas, etc., that set forth the claimed invention." The specification lacks sufficient variety of species of mycelium based biocomposite materials to reflect this variance in the genus since the specification does not provide any examples of such a genus of . Accordingly, the specification fails to provide adequate written description for the genus of “mycelium based biocomposite material” and does not reasonably convey to one skilled in the relevant art that the inventors, at the time the application was filed had possession of the entire scope of the claimed invention. Moreover, the specification neither describes the complete structure of a representative number of species, nor describes a representative number of species in terms of partial structure and relevant identifying characteristics. Absent of such teachings and guidance as to the structure and function of these materials, the specification does not describe the claimed in such full, clear, concise and exact terms so as to indicate that Applicant had possession of these biocomposite materials at the time of filing of the present application.
Thus, the written description requirement has not been satisfied.
Response to Arguments
Applicant argues that the amended claims overcome the rejection of record since the claims newly recite an internal textile which allows for the mycelium to grow to a specific density, modulus of elasticity and compressive strength within the claimed ranges.
However, these arguments fail to persuade. Although the claims recite additional components of the biocomposite, these additional elements are equally undescribed for the reason stated above. Example 1 neither identifies any particular internal textile nor requirements of an internal textile beyond the phrase itself. Further, it is iterated that applicant states the various materials are tunable to achieve variable results, including the internal textile and also the substrate (p. 25 – 26). Specifically, “Significant tuning of the inoculated substrate components can yield parts with different technical profiles. Certainly, with a greater density profile, a specimen created in the same manner as above would yield better mechanical capabilityies.” (p.33) Thus, the claims remain rejected.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 2 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The previous rejection over claim 2 is withdrawn due to applicant’s arguments on page 5 of the reply pointing to the specification, page 15, for the definition thereof.
In claim 2, the phrase “internal textile” renders the claim and its dependents indefinite because the phrase is not adequately defined. Neither the claims nor the specification define the phrase such that one practicing the invention would know what is included or excluded from the limitation. Although page 21 of the specification indicates an internal textile is a textile used in the preferred embodiment, no specific definition is made. On page 25, reference is made to yarn as an example but not preferred. Further, example 1 fails to define the term other than as “internal textile.” In this regard, it is unclear if the phrase intends to limit the scope to yarn or whether it may include additional undefined or unidentified materials.
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.
Claims 2 - 8 are is rejected under 35 U.S.C. 103 as being unpatentable over McIntyre et al. (US 2017/0028600) and Bayer et al. (US 2019/0390156).
Regarding claim 2, McIntyre teaches biocomposites comprising mycelia cells (abstract) combined with textiles and substrate (0010, 0013, 0016) wherein the material has a density of 18 pcf (pounds per cubic foot, or greater than 15.79 lbs/ft3) (abstract), wherein specific mechanical properties of the biocomposite are readily optimized to include the product density, modulus of elasticity and core shear, or compressive strength (0012 – 0019, 0028,0044 - 0048). The biocomposites are disclosed to have modulus of elasticity up to 251 ksi or 2840 psi (0050 – 0052) which is greater than 53MPa, or 7687 psi as claimed.
Although the reference does not teach a single product having the claimed mechanical properties, the reference clearly indicated these properties are optimized by routine conventions and practice. In this regard, at the time the claims were filed, it would have been obvious to one of ordinary skill in the art to optimize the instant properties as a matter of routine experimentation and with a reasonable expectation for successfully obtaining an effective mycelium based biocomposite material.
McIntyre does not teach the biocomposite having a hollow core. However, the reference indicates the material can be shaped during production according to any desired shape (0019). At the time the claims were filed, it was known in the art to shape mycelium based biocomposites with hollow cores and voids. In support, Bayer teaches open cell (materials with hollow cores) mycelium biocomposites comprising mycelium and substrate (abstract, 0024). Thus, at the time the claims were filed, it would have been obvious to one of ordinary skill in the art to shape the biocomposite material of McIntyre as claimed with a reasonable expectation for success.
Regarding claim 3, McIntyre teaches substrates may be natural particles and/or fibers (0010, 0024) while Bayer teaches known substrates for mycelium include hemp regrind and wheat flour (0040), or agricultural waste.
Regarding claim 4, the references do not specific that an internal textile has a higher nitrogen content than the substrate. However, in considering the teachings of the combined references, it would have been obvious to one of ordinary skill in the art to optimize the substrate and textile as a matter of routine practice and experimentation for their suitability of growing mycelium thereon. In this regard, as nitrogen content is a nutritional element, it would have been obvious to one of ordinary skill in the art to select materials with optimal nitrogen for growing the mycelium.
Regarding claims 5 - 6, McIntyre teaches the biocomposite includes external reinforcement materials (external fascia) include woven products which forms the outer surface of the material (0042, 0093). Although stockinette is not specifically identified, it would have been obvious to one of ordinary skill in the art to use other known woven products in the external fascia of McIntyre with a reasonable expectation for success of providing a biocomposite material.
Regarding claims 7 – 8, it is initially noted that the limitations are interpreted as product by process type limitations which do not further limit the biocomposite material itself. The patentability of a product does not depend on its method of production. If the claimed product is the same or obvious from a product in the prior art (i.e. the product disclosed in the cited reference), then the claim is unpatentable even though the reference product was made by a different process. When the prior art discloses a product which reasonably appears to be identical with or slightly different than the claimed product-by-process, rejections under 35 U.S.C 102 and/or 35 U.S.C 103 are proper. (MPEP 2113) Notwithstanding, Bayer teaches the hollow voids are formed by growing the mycelium on removable components (internal mold tool) which creates the voids once removed (0026 – 0028).
Thus, the invention as a whole is prima facie obvious over the references, especially in the absence of evidence to the contrary.
Response to Arguments
Applicant argues the prior art does not teach the claims as amended.
However, this argument fails to persuade in light of the rejections above.
No claims are allowed.
Conclusion
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 RUTH A DAVIS whose telephone number is (571)272-0915. The examiner can normally be reached Monday - Friday (8am - 4pm).
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/RUTH A DAVIS/Primary Examiner, Art Unit 1699