Detailed Action
The communications received 07/06/2026 have been filed and considered by the Examiner. Claims 1-3, 6-14, and 17-20 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
Claims 17-20 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected method, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 07/06/2026.
Applicant’s election without traverse of claims 1-3 and 6-14 in the reply filed on 07/06/2026 is acknowledged.
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.
Claim(s) 1-3, 6-13, and 16 is/are rejected under 35 U.S.C. 103 as being unpatentable over 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 it pertains to the deformation areas being continuous, 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.
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 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 16, see claim 7 which teaches the bonding agent and an additive.
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.
Response to Arguments
Applicant's arguments filed 07/06/2026 have been fully considered but they are not persuasive.
Applicant argues that continuous deformation is not something that can be met by rendering a device integral and changes in shape [MPEP 2144.04(V)(B) and MPEP 2144.04(IV)(B)]
As rendering an embossed area continuous would merely be a matter of making the adjacent embossing integral with each other along an axis to the edge of the paper and/or amounts to a change of the shape of the embossing such that they are continuous. It does not matter that the making integral rationale in its initial publication was utilized for separate mechanical components turned into a single unit, as the understanding behind turning separate units into single units generally applies to units of surface features with a particular geometry. In addition as Smith teaches that the embossing are performed as decorative that there is nothing that would then inhibit the features from being rendered continuous and therefore the rationale applies.
Applicant argues that the result effective variable optimization rationale does not apply to the volume fractions as volume fractions are not explicitly listed as an optimization and that Merlin’s teachings only apply to two dimensional surface.
Respectfully the Examiner disagrees as the parameters adjusted result in volume changes, i.e. the relative surface area at any given depth which is fundamentally a resultant volume fraction.
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.
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/E.V./Examiner, Art Unit 1748
/RITA P ADHLAKHA/Primary Examiner, Art Unit 1711
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