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 .
Claim Objections
Claim 12 is objected to because of the following informalities:
Regarding claim 12, claim 12 recites “polysorbate 80” twice as a species of nonionic surfactant. This appears to be a redundancy, and therefore the examiner recommends deletion thereof, or if the second recitation is meant to recite another species, revision to reflect said species.
Appropriate correction is required.
Claim Interpretation
Claim 1 recites “the plurality of nanoparticles are functionalized to crosslink chitin/chitosan within hyphae of the one or more crosslinked mycelium layers” (ll. 4 – 5 of the claim). The examiner reads “chitin/chitosan” as “chitin or chitosan”.
Claim Rejections - 35 USC § 112
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.
Claims 3 – 13 are 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.
Regarding claim 3, claim 3 recites the limitation “the ratio of nonionic surfactant to vegetable-based oil” in ll. 1 – 2 of the claim. There is insufficient antecedent basis for this limitation in the claim.
The examiner observes claim 2 recites a vegetable-based oil phase and a nonionic surfactant whose respective presences implies a ratio that may have been intended to provide the necessary antecedent basis. If this is indeed the case, the examiner recommends revision of claim 3 to depend on claim 2.
Regarding claims 4 – 10, each of claims 4 – 10 recites the limitation “the vegetable-based oil phase” in l. 1 of the respective claims. There is insufficient antecedent basis for this limitation in these claims.
The examiner observes claim 2 refers to a vegetable-based oil phase and thus may be have been intended to provide the necessary antecedent basis. If this is the case, the examiner recommends revision of each of claims 4 – 10 to depend on claim 2.
Regarding claim 8, claim 8 states the vegetable-based oil phase comprises the species recited, but does not include a conjunction or other phrasing to indicate the number species required.
The examiner observes the instant specification refers to the recited species of claim 8 as alternatives using an “or” conjunction or similar phrasing (e.g. ¶¶ [0007], [0017], [0025], [0029]). This description forms the basis of interpretation in this Office Action for considering claim 8 with respect to the prior art.
Regarding claims 11 and 12, claim 11 and 12 each recite the limitation “the nonionic surfactant” in l. 1 of the respective claims. There is insufficient antecedent basis for this limitation in these claims.
The examiner observes claim 2 refers to a nonionic surfactant and thus may be have been intended to provide the necessary antecedent basis. If this is the case, the examiner recommends revision of each of claims 11 and 12 to depend on claim 2.
Regarding claim 13, claim 13 recites the limitation “the nonionic” in l. 1 of the claim. There is insufficient antecedent basis for this limitation in the claim.
The examiner observes “the nonionic” appears to be intended to read as “the nonionic surfactant”, possibly with antecedent to claim 2. If this is the case, the examiner recommends revision of “the nonionic” to “the nonionic surfactant” and for claim 13 to depend on claim 2.
Claim Rejections - 35 USC § 102
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.
Claims 1, 11, 12, and 16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Smith (US 2020/0392341 A1).
Regarding claim 1, Smith discloses a mycotextile (e.g. ¶¶ [0004] – [0427], [0691] – [0807]) comprising:
one or more crosslinked mycelium layers having a plurality of nanoparticles within the one or more crosslinked mycelium layers (“laminate of “composite mycelium material”, where the “supporting material”/“scaffold” forms an “inner layer” “embedded” in the “composite mycelium material” such that any two adjacent layers of “composite mycelium material” separated by a “supporting material”/“scaffold” meet the claimed recitation, where “composite mycelium material” is defined by including additional species, notably a “crosslinking agent” or “bonding agent”: e.g. ¶¶ [0299], [0376], [0377], [0379]), wherein the plurality of nanoparticles are functionalized to crosslink chitin/chitosan within hyphae of the one or more crosslinked mycelium layers (“bonding agent” has “reactive groups” which crosslink chitin: e.g. ¶¶ [0005], [0009], [0010], [0027] – [0029], [0047] – [0058], [0099], [0100], [0109] – [0120], [0154], [0156] – [0167], [0299], [0300], [0310], [0312], [0323], [0326], [0327], [0346], [0358] – [0373], [0378], [0424]); and
an oil-in-water nanoemulsion coating the hyphae of one or more crosslinked mycelium layers (fatliquor which penetrates the mycelium layers and has an oil droplet size of 50 to 500 nm: e.g. ¶¶ [0381], [0504], [0505]).
Regarding claim 2, Smith discloses the oil-in-water nanoemulsion comprises a vegetable-based oil phase surrounded by a nonionic surfactant (e.g. ¶ [0381]).
Regarding claim 11, in addition to the limitations of claim 1, Smith discloses the nonionic surfactant comprises, e.g., Tween 20 (e.g. ¶¶ [0018], [0078], [0133], [0185], [0381], [0579] – [0581]), which the instant specification identifies as a polyoxyethylene derivative (e.g. Table 2; ¶ [0011]).
Regarding claim 12, in addition to the limitations of claim 1, Smith discloses the nonionic surfactant comprises, e.g., Tween 80 (e.g. ¶¶ [0018], [0078], [0133], [0185], [0381], [0579] – [0581]), which the instant specification identifies as polysorbate 80 (e.g. Table 2; ¶ [0011]).
Regarding claim 16, Smith discloses a mycotextile (e.g. ¶¶ [0004] – [0427], [0691] – [0807]) comprising:
A support scaffold layer (“supporting material”, “scaffold”: e.g. ¶¶ [0011], [0012], [0059] – [0065], [0102] – [0108], [0168] – [0174], [0299], [0300], [0327], [0328], [0331], [0337], [0339], [0340], [0374] – [0379], [0426]);
a first crosslinked mycelium layer extending adjacent to the first side of the support scaffold layer, and a second crosslinked mycelium layer extending adjacent to a second side of the support scaffold layer (“laminate” of “composite mycelium material”, where the “supporting material”/“scaffold” forms an “inner layer” “embedded” in the “composite mycelium material” such that any two adjacent layers of “composite mycelium material” separated by a “supporting material”/“scaffold” meet the claimed recitation, where “composite mycelium material” is defined by including additional species, notably a “crosslinking agent” or “bonding agent”: e.g. ¶¶ [0299], [0376], [0377], [0379]);
a plurality of nanoparticles within the first and second crosslinked mycelium layers, wherein the plurality of nanoparticles are functionalized to crosslink chitin/chitosan within hyphae of the first crosslinked mycelium layer and the second crosslinked mycelium layer (“bonding agent” has “reactive groups” which crosslink chitin: e.g. ¶¶ [0005], [0009], [0010], [0027] – [0029], [0047] – [0058], [0099], [0100], [0109] – [0120], [0154], [0156] – [0167], [0299], [0300], [0310], [0312], [0323], [0326], [0327], [0346], [0358] – [0373], [0378], [0424]); and
an oil-in-water nanoemulsion coating the hyphae of the first and second crosslinked mycelium layers (fatliquor which penetrates the mycelium layers and has an oil droplet size of 50 to 500 nm: e.g. ¶¶ [0381], [0504], [0505]).
Claim Rejections - 35 USC § 103
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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
Determining the scope and contents of the prior art.
Ascertaining the differences between the prior art and the claims at issue.
Resolving the level of ordinary skill in the pertinent art.
Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 3 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Smith as applied to claim 1 above.
Regarding claim 3, although Smith discloses the oil-in-water nanoemulsion comprises a vegetable-based oil phase surrounded by a nonionic surfactant (e.g. ¶ [0381]), Smith does not explicitly state the ratio of nonionic surfactant to vegetable-based oil is between 1:2 and 1:15. However, Smith also discloses the use of such emulsions is well-known in the art (e.g. ¶ [0381]). Given Smith’s nanoemulsion is a mixture of oil and water, the purpose of the surfactant is to reduce the size of the oil droplets in the emulsion, namely be surrounding the oil droplets with a hydrophobic moiety interacting with the oil and a hydrophilic moiety interacting with the water. Accordingly, depending on the chemistries of the oil and the nonionic surfactant, one of ordinary skill in the art would have been able to determine a suitable ratio of the two which not only solubilizes the oil in the water but also provides the necessary droplet size to allow for the penetration into the mycotextile Smith seeks (e.g. ¶¶ [0381], [0502], [0505]).
“[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). See also MPEP § 2144.05, II, A.
Accordingly, it would have been obvious to modify Smith’s oil-in-water nanoemulsion to have a ratio of nonionic surfactant to vegetable-based oil that is between 1:2 and 1:15 in order to achieve successful penetration of the mycotextile with the nanoemulsion.
Regarding claim 14, although Smith is not explicit as to the nanoemulsion droplets having a mean droplet diameter of 20-35 nm, Smith acknowledges nanoemulsions can contain droplets within this range (e.g. Fig. 18) and uses nanoemulsions below a certain droplet size to penetrate the mycelium layers (e.g. ¶¶ [0381], [0504], [0505]). Accordingly, for better penetration, either to penetrate deeper into the mycelium layers or to penetrate into smaller spaces between hyphae, Smith suggests a smaller mean droplet diameter is better suited for these purposes.
“[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). See also MPEP § 2144.05, II, A.
Accordingly, it would have been obvious for Smith’s nanoemulsion droplets to have a mean droplet diameter of 20-35 nm for better penetration of the mycelium layers.
Claims 4 – 10 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Smith as applied to claim 1 above, and further in view of Stewart (US 2020/0399824 A1). The rejection of claim 8 further relies on Wyss (US 5,705,083 A) as an evidentiary disclosure.
Regarding claim 4, although Smith is not explicit as to the vegetable-based oil phase comprising more than 85% saturated fatty acids, this feature would have been obvious in view of Stewart.
MPEP § 2143, I, A, states the following regarding combining prior art elements according to known methods to yield predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S. at 418, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), Smith does not limit their vegetable-based oil phase to any particular species, but does disclose penetration of the mycelium layers as a feature thereof (e.g. ¶ [0381]).
With respect to (2) and (3), Stewart relates to mycotextiles (e.g. ¶¶ [0005] – [0219]) and identifies coconut oil as such a species capable of performing the function Smith desires (e.g. ¶¶ [0056], [0119], [0136], [0148]). This thus has the predictable result of fatliquoring, which Smith discloses is a plasticizer, i.e. a species that increases mobility, elasticity, and flexibility of the mycotextile (e.g. ¶¶ [0018], [0078], [0079], [0133], [0134], [0185], [0186], [0302], [0380], [0381], [0387], [0396], [0406]).
With respect to (4), Smith discloses coconut oil can be used as an alternative plasticizer from a use in a fatliquoring emulsion (e.g. ¶ [0387]). Accordingly, coconut oil is compatible with Smith’s mycotextiles.
Therefore, it would have been obvious to modify the nanoemulsion to have a vegetable-based oil phase comprising coconut oil, the rationale being that such a combination yields the mobility, elasticity, and flexibility Smith desires for their mycotextile. It should be noted Table 1 of the instant specification identifies coconut oil as a suitable species of oil comprising more than 85% saturated fatty acids (e.g. ¶ [0006]).
Regarding claim 5, although Smith is not explicit as to the vegetable-based oil phase comprising coconut oil, this feature would have been obvious in view of Stewart.
MPEP § 2143, I, A, states the following regarding combining prior art elements according to known methods to yield predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S. at 418, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), Smith does not limit their vegetable-based oil phase to any particular species, but does disclose penetration of the mycelium layers as a feature thereof (e.g. ¶ [0381]).
With respect to (2) and (3), Stewart relates to mycotextiles (e.g. ¶¶ [0005] – [0219]) and identifies coconut oil as such a species capable of performing the function Smith desires (e.g. ¶¶ [0056], [0119], [0136], [0148]). This thus has the predictable result of fatliquoring, which Smith discloses is a plasticizer, i.e. a species that increases mobility, elasticity, and flexibility of the mycotextile (e.g. ¶¶ [0018], [0078], [0079], [0133], [0134], [0185], [0186], [0302], [0380], [0381], [0387], [0396], [0406]).
With respect to (4), Smith discloses coconut oil can be used as an alternative plasticizer from a use in a fatliquoring emulsion (e.g. ¶ [0387]). Accordingly, coconut oil is compatible with Smith’s mycotextiles.
Therefore, it would have been obvious to modify the nanoemulsion to have a vegetable-based oil phase comprising coconut oil, the rationale being that such a combination yields the mobility, elasticity, and flexibility Smith desires for their mycotextile.
Regarding claim 6, although Smith is not explicit as to the vegetable-based oil phase comprising one or more of coconut oil, soybean oil, canola oil, corn oil, avocado oil, and olive oil, this feature would have been obvious in view of Stewart.
MPEP § 2143, I, A, states the following regarding combining prior art elements according to known methods to yield predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S. at 418, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), Smith does not limit their vegetable-based oil phase to any particular species, but does disclose penetration of the mycelium layers as a feature thereof (e.g. ¶ [0381]).
With respect to (2) and (3), Stewart relates to mycotextiles (e.g. ¶¶ [0005] – [0219]) and identifies, e.g., coconut oil as such a species capable of performing the function Smith desires (e.g. ¶¶ [0056], [0119], [0136], [0148]). This thus has the predictable result of fatliquoring, which Smith discloses is a plasticizer, i.e. a species that increases mobility, elasticity, and flexibility of the mycotextile (e.g. ¶¶ [0018], [0078], [0079], [0133], [0134], [0185], [0186], [0302], [0380], [0381], [0387], [0396], [0406]).
With respect to (4), Smith discloses coconut oil can be used as an alternative plasticizer from a use in a fatliquoring emulsion (e.g. ¶ [0387]). Accordingly, coconut oil is compatible with Smith’s mycotextiles.
Therefore, it would have been obvious to modify the nanoemulsion to have a vegetable-based oil phase comprising, e.g., coconut oil, the rationale being that such a combination yields the mobility, elasticity, and flexibility Smith desires for their mycotextile.
Regarding claim 7, although Smith is not explicit as to the vegetable-based oil phase comprising one or more synthetic derivatives of vegetable oils, this feature would have been obvious in view of Stewart.
MPEP § 2143, I, A, states the following regarding combining prior art elements according to known methods to yield predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S. at 418, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), Smith does not limit their vegetable-based oil phase to any particular species, but does disclose penetration of the mycelium layers as a feature thereof (e.g. ¶ [0381]).
With respect to (2) and (3), Stewart relates to mycotextiles (e.g. ¶¶ [0005] – [0219]) and identifies, e.g., sulfated castor oil as such a species capable of performing the function Smith desires (e.g. ¶¶ [0056], [0119], [0136], [0148]). This thus has the predictable result of fatliquoring, which Smith discloses is a plasticizer, i.e. a species that increases mobility, elasticity, and flexibility of the mycotextile (e.g. ¶¶ [0018], [0078], [0079], [0133], [0134], [0185], [0186], [0302], [0380], [0381], [0387], [0396], [0406]).
With respect to (4), Smith discloses castor oil can be used as an alternative plasticizer from a use in a fatliquoring emulsion (e.g. ¶ [0380]). Accordingly, coconut oil is compatible with Smith’s mycotextiles.
Therefore, it would have been obvious to modify the nanoemulsion to have a vegetable-based oil phase comprising, e.g., one or more synthetic derivatives of vegetable oils such as sulfated castor oil, the rationale being that such a combination yields the mobility, elasticity, and flexibility Smith desires for their mycotextile.
Regarding claim 8, although Smith is not explicit as to the vegetable-based oil phase comprising cetearyl ethylhexanoate; octanoic acid, 1,3-propanediol ester; or 2,2’-[oxybis(methylene)]bis[2-(hydroxymethyl)-1,3-propanediol] decanoate, this feature would have been obvious in view of Stewart.
MPEP § 2143, I, A, states the following regarding combining prior art elements according to known methods to yield predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S. at 418, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), Smith does not limit their vegetable-based oil phase to any particular species, but does disclose penetration of the mycelium layers as a feature thereof (e.g. ¶ [0381]).
With respect to (2) and (3), Stewart relates to mycotextiles (e.g. ¶¶ [0005] – [0219]) and identifies, e.g., coconut oil as such a species capable of performing the function Smith desires (e.g. ¶¶ [0056], [0119], [0136], [0148]). Wyss notes coconut oil comprises the C8-C18 fatty acids (e.g. Col. 25, ll. 25 – 41), where the C8 fatty acid corresponds to octanoic acid This thus has the predictable result of fatliquoring, which Smith discloses is a plasticizer, i.e. a species that increases mobility, elasticity, and flexibility of the mycotextile (e.g. ¶¶ [0018], [0078], [0079], [0133], [0134], [0185], [0186], [0302], [0380], [0381], [0387], [0396], [0406]).
With respect to (4), Smith discloses coconut oil can be used as an alternative plasticizer from a use in a fatliquoring emulsion (e.g. ¶ [0387]). Accordingly, coconut oil is compatible with Smith’s mycotextiles.
Therefore, it would have been obvious to modify the nanoemulsion to have a vegetable-based oil phase comprising, e.g., coconut oil and thus octanoic acid, the rationale being that such a combination yields the mobility, elasticity, and flexibility Smith desires for their mycotextile.
Regarding claim 9, although Smith is not explicit as to the vegetable-based oil phase comprising one or more natural waxes, this feature would have been obvious in view of Stewart.
MPEP § 2143, I, A, states the following regarding combining prior art elements according to known methods to yield predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S. at 418, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), Smith does not limit their vegetable-based oil phase to any particular species, but does disclose penetration of the mycelium layers as a feature thereof (e.g. ¶ [0381]).
With respect to (2) and (3), Stewart relates to mycotextiles (e.g. ¶¶ [0005] – [0219]) and identifies, e.g., beeswax as such a species capable of performing the function Smith desires (e.g. ¶¶ [0056], [0119], [0136], [0148]). This thus has the predictable result of fatliquoring, which Smith discloses is a plasticizer, i.e. a species that increases mobility, elasticity, and flexibility of the mycotextile (e.g. ¶¶ [0018], [0078], [0079], [0133], [0134], [0185], [0186], [0302], [0380], [0381], [0387], [0396], [0406]).
With respect to (4), Smith discloses natural waxes can be added to the mycotextile (e.g. ¶ [0397]). Accordingly, as it is a natural wax, there is a suggestion beeswax is compatible with Smith’s mycotextiles.
Therefore, it would have been obvious to modify the nanoemulsion to have a vegetable-based oil phase comprising, e.g., one or more natural waxes, the rationale being that such a combination yields the mobility, elasticity, and flexibility Smith desires for their mycotextile.
Regarding claim 10, although Smith is not explicit as to the vegetable-based oil phase comprising beeswax and/or lanonil waxes, this feature would have been obvious in view of Stewart.
MPEP § 2143, I, A, states the following regarding combining prior art elements according to known methods to yield predictable results:
To reject a claim based on this rationale, Office personnel must resolve the Graham factual inquiries. Then, Office personnel must articulate the following:
(1) a finding that the prior art included each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the prior art being the lack of actual combination of the elements in a single prior art reference;
(2) a finding that one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately;
(3) a finding that one of ordinary skill in the art would have recognized that the results of the combination were predictable; and
(4) whatever additional findings based on the Graham factual inquiries may be necessary, in view of the facts of the case under consideration, to explain a conclusion of obviousness.
The rationale to support a conclusion that the claim would have been obvious is that all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination yielded nothing more than predictable results to one of ordinary skill in the art. KSR, 550 U.S. at 416, 82 USPQ2d at 1395; Sakraida v. AG Pro, Inc., 425 U.S. 273, 282, 189 USPQ 449, 453 (1976); Anderson’s-Black Rock, Inc. v. Pavement Salvage Co., 396 U.S. 57, 62-63, 163 USPQ 673, 675 (1969); Great Atl. & P. Tea Co. v. Supermarket Equip. Corp., 340 U.S. 147, 152, 87 USPQ 303, 306 (1950). "[I]t can be important to identify a reason that would have prompted a person of ordinary skill in the relevant field to combine the elements in the way the claimed new invention does." KSR, 550 U.S. at 418, 82 USPQ2d at 1396. If any of these findings cannot be made, then this rationale cannot be used to support a conclusion that the claim would have been obvious to one of ordinary skill in the art.
With respect to (1), Smith does not limit their vegetable-based oil phase to any particular species, but does disclose penetration of the mycelium layers as a feature thereof (e.g. ¶ [0381]).
With respect to (2) and (3), Stewart relates to mycotextiles (e.g. ¶¶ [0005] – [0219]) and identifies, e.g., beeswax as such a species capable of performing the function Smith desires (e.g. ¶¶ [0056], [0119], [0136], [0148]). This thus has the predictable result of fatliquoring, which Smith discloses is a plasticizer, i.e. a species that increases mobility, elasticity, and flexibility of the mycotextile (e.g. ¶¶ [0018], [0078], [0079], [0133], [0134], [0185], [0186], [0302], [0380], [0381], [0387], [0396], [0406]).
With respect to (4), Smith discloses natural waxes can be added to the mycotextile (e.g. ¶ [0397]). Accordingly, as it is a natural wax, there is a suggestion beeswax is compatible with Smith’s mycotextiles.
Therefore, it would have been obvious to modify the nanoemulsion to have a vegetable-based oil phase comprising, e.g., beeswax, the rationale being that such a combination yields the mobility, elasticity, and flexibility Smith desires for their mycotextile.
Regarding claim 15, although Smith is not explicit as to the oil-in-water nanoemulsion comprising an oil-based fragrance, this feature would have been obvious in view of Stewart.
Stewart relates to mycotextiles (e.g. ¶¶ [0005] – [0219]) and discloses an oil-based fragrances can be added in order to provide the desired olfactory characteristics (e.g. ¶ [0142]) and for this reason would have been obvious to include in the oil-in-water nanoemulsion.
Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Smith as applied to claim 1 above, and further in view of Brym (US 2010/0162490 A1).
Regarding claim 13, although Smith is not explicit as to the nonionic (surfactant) comprising a hydrogenated castor oil, this feature would have been obvious in view of Brym.
Brym discloses hydrogenated castor oil is a customary emulsifier for oil-in-water emulsions for treating leather (e.g. ¶¶ [0210], [0225], [0226]). Given emulsifiers help to compatibilize the nanoemulsion (Brym: e.g. ¶ [0196]) and Smith’s mycotextiles are used as a leather substitute and treated with similar compositions to natural leather (e.g. ¶¶ [0311], [0397]), it would have been obvious to include a hydrogenated castor oil as Brym suggests to help compatibilize Smith’s nanoemulsion.
Claims 17 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Stewart.
Regarding claim 17, Stewart discloses an oil-in-water nanoemulsion composition for fatliquoring a textile material (e.g. ¶¶ [0005] – [0219]), the composition comprising:
between 0.5% and 50% of a vegetable-based oil phase (“plasticizer”: e.g. ¶ [0149]); and
between 0.01% and 1% of a nonionic surfactant (e.g. ¶¶ [0110], [0113], [0125], [0126]), wherein the nanoemulsion comprises droplets of the vegetable-based oil surrounded by the nonionic surfactant and dispersed within a continuous water phase (“aqueous solution”: e.g. ¶¶ [0039], [0041], [0119]).
Given Stewart’s disclosure of “about” for the cited endpoints, Stewart’s ranges overlap the respective claimed ranges. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Regarding claim 18, Stewart discloses an oil-in-water nanoemulsion composition for fatliquoring a textile material (e.g. ¶¶ [0005] – [0219]), the composition comprising:
a vegetable-based oil comprising 85% or more saturated fatty acids (“coconut oil”: e.g. ¶¶ [0056], [0119], [0136]; Table 1 and ¶ [0006] of the instant specification identify coconut oil as an example species meeting this requirement of saturated fatty acids); and
a nonionic surfactant, wherein the surfactant to oil (O:S) ratio is between 1:0.5 and 1:5000 (0.01 to 1% surfactant, relative to 0.5 to 50% vegetable-based oil phase e.g. ¶¶ [0110], [0113], [0125], [0126], [0149]), and the composition comprises between 0.5% and 50% of a vegetable-based oil phase (“plasticizer”: e.g. ¶ [0149]), further wherein the nanoemulsion comprises droplets of the vegetable-based oil surrounded by the nonionic surfactant and dispersed within a continuous water phase (“aqueous solution”: e.g. ¶¶ [0039], [0041], [0119]).
Stewart’s amount of oil overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976). See MPEP § 2144.05, I.
Stewart’s ratio of surfactant to oil encompasses the claimed range. “[A] prior art reference that discloses a range encompassing a somewhat narrower claimed range is sufficient to establish a prima facie case of obviousness.” In re Peterson, 315 F.3d 1325, 1330, 65 USPQ2d 1379, 1382-83 (Fed. Cir. 2003). See MPEP § 2144.05, I.
Conclusion
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/ETHAN A. UTT/Examiner, Art Unit 1783
/MARIA V EWALD/Supervisory Patent Examiner, Art Unit 1783
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