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 .
Status of Claims
This is the first action on the merits of application 18/846,703 filed on September 13, 2024. Claims 16-21 are currently pending and have been examined.
Information Disclosure Statement
The information disclosure statement filed September 13, 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. It has been placed in the application file, but the information referred to therein has not been considered. Specifically, the Examiner notes that a translated copy of non-patent literature documents Takeshita et al., Maeda et al., and Magae have not been filed. In this case, an English abstract translation is insufficient for use of the documents as prior art.
Claim Objections
Claims 19-21 are objected to because of the following informalities:
Applicant is suggested to include a comma after the preamble of each of claims 19-21 in order to utilize more consistent formatting throughout the claims.
Appropriate correction is required.
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.
Claim 20 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.
Claim 20, lines 1-2, recites “comprising a step of developing a fruiting body of the mushroom in presence of the medium”. However, it is unclear how the step of “developing a fruiting body of the mushroom” can be controlled by one performing the method. In other words, one performing the claimed method would not necessarily be able to develop the fruiting body of the mushroom, as some mushrooms may not grow or change to develop a fruiting body despite use of the claimed method and associated medium. As such, this aspect of the invention does not appear to be controllable. For at least these reasons, the claimed limitation is considered unclear, and the scope of the claim is rendered indefinite.
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.
Claim(s) 16-18 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Wang et al. (CN 103524214 A), hereinafter Wang.
Regarding claim 16, Wang discloses a method for cultivating a mushroom or culturing a basidiomycete (para [0025], enoki mushrooms1 are described as being cultivated using the disclosed culture medium), comprising cultivating the mushroom or culturing the basidiomycete (“enoki mushroom”, see abstract) in presence of a medium (“cultivating material”, see abstract) comprising a medium additive (see list of medium additives in abstract, beginning “corn core rod 55, mushroom 20, perlite 10…”, wherein the medium additive comprises a treated product of Ku Ding tea (see para [0006]-[0012], “folium ilicis latifoliae”, or leaf of Ilex latifolia Ku Ding tea, is crushed and used as a medium additive).
Regarding claim 17, Wang discloses the method according to claim 16, and further discloses wherein the Ku Ding tea is selected from the group consisting of Ligustrum purpurascens Y. C. Yang., Ligustrum pedunculare Rehd., Ligustrum japonicum var. pubescens Koidz, Ligustrum robstum (Roxb.) Bl., Ilex cornuta Lindl. ex Paxt., Ilex kudingcha C. J. Tseng., Ilex latifolia Thunb., Cratoxylum prunifolium (Kurz) Dyer, Ehretia thyrsiflora (Sieb. et Zucc.) Nakai, and Photinia serrulata Lindl (see abstract, the Ku Ding tea is “ilex latifolia thunb").
Regarding claim 18, Wang discloses the method according to claim 16, and further discloses wherein the mushroom or the basidiomycete is selected from the group consisting of shiitake mushroom, enokitake mushroom, Pholiota aurivella, Sarcomyxa serotina, Pleurotus pulmonarius, Ganoderma applanatum, oyster mushroom, golden oyster mushroom, pink oyster mushroom, Lepista sordida, Hypsizygus marmoreus, eryngii mushroom, Jew's Ear Fungus, butterscotch mushroom, hen-of-the-woods, common mushroom, Lyophyllum decastes, Mycoleptodonoides aitchisonii, Hypholoma sublateritium, Lion's mane mushroom, Cyclocybe aegerita, Ganoderma lucidum (Leyss. ex. Fr.) Karst, Pleurotus sajo-caju (Fr.), Trametes versicolor, Sparassis crispa, Tricholoma bakamatsutake, Agaricus subrufescens, Morchella esculenta var. esculenta, and Inonotus obliquus (see abstract, the mushroom is an “enoki mushroom”, also known as an enokitake mushroom).
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 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) 19-21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Wang et al. (CN 103524214 A), hereinafter Wang, in view of Beck (EP 0075614 A1), hereinafter Beck.
Regarding claim 19, Wang discloses the method according to claim 16 but does not appear to specifically disclose comprising a step of culturing a mycelium of the mushroom in presence of the medium.
However, Beck is in the field of mushroom cultivation and basidiomycete culture (title; abstract) and teaches comprising a step of culturing a mycelium of the mushroom in presence of the medium (“substrate”, abstract) (abstract, see step (e); see first paragraph of “Description”; note that the disclosed method is noted as being used with mushrooms).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for cultivating a mushroom or culturing a basidiomycete of Wang to incorporate a step of culturing a mycelium as taught by Beck with a reasonable expectation of success to provide a nutrient source for human consumption (see page 42/49, third paragraph, beginning “The invention is based on the consideration that…”).
Regarding claim 20, Wang discloses the method according to claim 16, as best understood based on the 35 U.S.C. 112(b) issue(s) identified above, but does not appear to specifically disclose comprising a step of developing a fruiting body of the mushroom in presence of the medium.
However, Beck is in the field of mushroom cultivation and basidiomycete culture (title; abstract) and teaches comprising a step of developing a fruiting body of the mushroom in presence of the medium (“substrate”, abstract) (abstract, see step (f); see first paragraph of “Description”; note that the disclosed method is noted as being used with mushrooms).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for cultivating a mushroom or culturing a basidiomycete of Wang to incorporate a step of developing a fruiting body as taught by Beck with a reasonable expectation of success to provide a nutrient source for human consumption (see page 42/49, third paragraph, beginning “The invention is based on the consideration that…”).
Regarding claim 21, Wang discloses the method according to claim 16 but does not appear to specifically disclose comprising a step of culturing a mycelium of the basidiomycete in presence of the medium.
However, Beck is in the field of mushroom cultivation and basidiomycete culture (title; abstract) and teaches comprising a step of culturing a mycelium of the basidiomycete in presence of the medium (“substrate”, abstract) (abstract, see step (e); see first paragraph of “Description”; note that the disclosed method is noted as being used with basidiomycetes including mushrooms).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the method for cultivating a mushroom or culturing a basidiomycete of Wang to incorporate step of culturing a mycelium as taught by Beck with a reasonable expectation of success to provide a nutrient source for human consumption (see page 42/49, third paragraph, beginning “The invention is based on the consideration that…”).
Conclusion
The cited references made of record in the contemporaneously filed PTO-892 form and not relied upon in the instant office action are considered pertinent to Applicant’s disclosure and may have one or more of the elements in Applicant’s disclosure and at least claim 16.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERICA M HUEBNER whose telephone number is (703)756-4560. The examiner can normally be reached M-F 9:30 AM - 6:00 PM ET.
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/E.M.H./Examiner, Art Unit 3647
/KIMBERLY S BERONA/Supervisory Patent Examiner, Art Unit 3647
1 Enoki mushrooms are understood as being both mushrooms and basidiomycetes.
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