Detailed Action
The communications received 07/18/2024 have been filed and considered by the Examiner. Claims 1-20 are pending.
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 .
Election/Restrictions
REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-16, drawn to a mycelium material.
Group II, claim(s) 17-20, drawn to a method of producing a mycelium material.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I-II lack unity of invention because even though the inventions of these groups require the technical feature of the mycelium material of claim 1, this technical feature is not a special technical feature as it does not make a contribution over the prior art in view of Smith et al (US 2020/0392341 supplied by the Applicant in the IDS filed 07/18/2024) hereinafter SMI.
As for claim 1, SMI teaches a mycelium material comprising mycelium fibers [Abstract], the mycelium material being planar and having a first surface, a second surface opposite the first surface, and a thickness (as a sheet produced like a paper and/or a web) [0026; 0338; 0431; 0466], the first surface comprising one or more deformation areas spaced apart from each other (an embossing), wherein the one or more deformation areas do not extend from the first surface to the second surface (an embossed surface is understood to be localized to one surface/not go all the way through) [0338; 0403-404]. Therefore unity of invention is lacking a posteriori.
During a telephone conversation with Jennifer Bernette on 01/13/2026 a provisional election was made without traverse to prosecute the invention of Group I, claims 1-16. Affirmation of this election must be made by applicant in replying to this Office action. Claims 17-20 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-4, 6-13, and 15-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith et al (US 2020/0392341 supplied by the Applicant in the IDS filed 07/18/2024) hereinafter SMI.
As for claim 1, SMI teaches a mycelium material comprising mycelium fibers [Abstract], the mycelium material being planar and having a first surface, a second surface opposite the first surface, and a thickness (as a sheet produced like a paper and/or a web) [0026; 0338; 0431; 0466], the first surface comprising one or more deformation areas spaced apart from each other (an embossing), wherein the one or more deformation areas do not extend from the first surface to the second surface (an embossed surface is understood to be localized to one surface/not go all the way through) [0338; 0403-404].
As for claim 2, SMI teach claim 1 and wherein the one or more deformation areas have a higher density than surrounding areas (it is understood that press based embossing will increase the density in the locality of the embossed feature) [0338; 0403-404].
As for claim 3, SMI teach claim 1 and wherein a majority of mycelium fibers are oriented in an x-y plane (as a network along a laid array in which they can be parallel or in a direction, and/or as oriented yarns along a cross or machine direction) [0337-338; 0348; 0377] and the one or more deformation areas comprise one or more disrupted fibers that are oriented in a z direction (via embossing and utilizing disrupted mycelium material) [0338; 0403-404; 0477].
As for claim 4, SMI teaches claim 1 and wherein the one or more deformation areas are discrete deformation areas (it is understood that an embossing pattern would be discrete deformation areas) [0338; 0403-404].
As for claim 6, SMI teaches claim 1 and the material can be a composite with a bonding agent and an additive [Abstract; 0378-379].
As for claim 7, SMI teaches claim 6 and that the bonding agent can be an adhesive, a resin, a crosslinking agent and/or a matrix [0377; 0714].
As for claim 8, SMI teaches claim 6 and that the bonding agent can be vinyl acetate-ethylene, a vinyl acetate-acrylic copolymer, a polyamide-epichlorohydrin resin, a copolymer transglutaminase, citric acid, genipin, alginate, gum Arabic, latex, a natural adhesive, and a synthetic adhesive [0360; 0363; 0366; 0369].
As for claim 9, SMI teaches claim 1 and wherein the mycelium material is a composite mycelium material that comprises a reinforcing material [0012].
As for claim 10, SMI teaches claim 1 and wherein the material further comprises a plasticizer [0018].
As for claim 11, SMI teaches claim 6 and wherein the additive comprises a lyocell fiber or an abaca fiber [0325; 0379].
As for claim 12, SMI teaches claim 3 and wherein the one or more disrupted fibers have a length of 0.1-5 mm [0694].
As for claim 13, this is understood to be a combination of claims 1 and 2 which are taught by SMI above.
As for claim 15, see claim 4 which teaches the discrete deformation area.
As for claim 16, see claim 7 which teaches the bonding agent and an additive.
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.
Claim(s) 5 is/are rejected under 35 U.S.C. 103 as being unpatentable over SMI.
As for claim 5, SMI teaches claim 1 and in accordance with the MPEP, two exemplary prima facie obvious rationales are when making a device integral (i.e. continuous) [MPEP 2144.04(V)(B)] and changes in shape [MPEP 2144.04(IV)(B)]. As rendering a embossed area continuous would merely be a matter of making the adjacent embossings integral with each other along an axis to the edge of the paper and/or amount to a change of the shape of the embossings such that they are continuous, this limitation is prima facie obvious.
Claim(s) 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over SMI in view of Mellin et al (US 2010/0294444) hereinafter MEL.
As for claim 14, SMI teaches claim 13 but fails to teach the volume fractions.
MEL teaches that deformation (embossing) patterns in paper products are optimized via the surface area occupied by the pattern, placement of lines, dots, etc in order to achieve smoothness and aesthetic design [Abstract; 0062]. It is understood that the combination of the surface area and depth of deformation would be optimized as the depth determines the pattern.
In accordance with the MPEP, "[W]here 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." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955) [MPEP 2144.05(II)(A)].
It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have arrived to the deformation volume fraction range as this range amounts to a routine optimization of the deformation pattern which is adjusted in accordance with aesthetic and smoothness requirements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Elisa Vera whose telephone number is (571)270-7414. The examiner can normally be reached M-F 8 - 4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Abbas Rashid can be reached at 571-270-7457. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E.V./Examiner, Art Unit 1748
/Abbas Rashid/Supervisory Patent Examiner, Art Unit 1748