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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12 June 2026 has been entered.
Claim Status
The claims filed 12 June 2026 are deemed to be the pending claims. However, the Office notes that the Applicant’s amendment notations are such that the notations are marking over a set of claims filed 11 May 2026 which were not entered. The Office will interpret the pending claims as best understood.
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 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, 7-11, 16, 18 and 19-22 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chung et al. (US 9,856,608 B1) hereinafter referred to as Chung in view of Yang et al. (CN 110453519 A) hereinafter referred to as Yang in further view of Terada et al. (US Patent 5,629,034) hereinafter referred to as Terada.
*Note* see Office provided (20 November 2025) translation of Yang with regards to citations used in the Office Action.
Regarding claim 1, Chung discloses a method for manufacturing a container (300, 400, or 500) for the storage, transport or sale of mushrooms (col. 6 lines 9-19; Limitation of intended use), said method comprising the steps of:
e) transferring (fig. 1; col. 4 lines 49-59) the pulp (104, 210; col. 5 lines 36-38) into a die (col. 4 lines 49-59 – “a first stage 101 in which mold (not shown for clarity) in the form of a mirror image of the product to be manufactured is envelop”);
f) pressing the pulp in the die, resulting in a transfer mold (col. 4 line 49 – col. 5 line 4 – “a heated press (not shown) and the layer 130 is compressed and dried to a desired thickness”); and,
g) cooling and drying the transfer mold (col. 4 line 49 – col. 5 line 4 – “the layer 130 is compressed and dried to a desired thickness”; col. 5 lines 30-35 – The cooling step is deemed to be inherently disclosed as the typical ranges of temperature for the slurry/pulp is 100+ Celsius. The containers are eventually returned to a room temperature to effectuate the storing of product cited in the reference and thus the cooling step is inherently disclosed), resulting in a container for the storage, transport or sale of mushrooms (Limitation of intended use).
Wherein the Applicant may argue that cooling the transfer mold is not inherently disclosed, the Office previously alternatively took official notice that it would have been obvious to one of ordinary skill in the art at the time of effective filing to cool the transfer mold. The method as it was disclosed by Chung involves heating the pulp and the mold. It would have been necessary to cool the mold and pulp at a later point to at least a room temperature so as to facilitate the storage and transport of the container. The common knowledge or well-known in the art statement is taken to be admitted prior art because applicant failed to traverse the examiner’s assertion of official notice (MPEP 2144.03 C).
Chung discloses using a pulp in the for manufacturing a container, but fails to disclose a) collecting a residual substrate derived from the growing of mushrooms on a substrate; b) optionally adding water to the residual substrate; c) mixing the residual substrate obtained from step a) or step b) to form a pulp; d) cooking the pulp; e) transferring the pulp into a die.
However, Yang teaches a) collecting a residual substrate derived from the growing of mushrooms on a substrate (paragraph 0007 – “The most commonly used recycling model for mushroom residue is ‘plant substrate – edible fungi - mushroom residue - mushroom residue organic fertilizer - planting industry’”; paragraphs 0043-0044; Claim 1, step 1) comprising a compost layer (paragraph paragraphs 0007, 0013, 0044-0045); b) optionally adding water to the residual substrate (paragraphs 0070-0071; paragraph 0020; Claim 1, step 2); c) mixing the residual substrate obtained from step a) or step b) to form a pulp (paragraph 0073; alternatively, also paragraph 0090); d) cooking the pulp (paragraph 0073; paragraph 0020; Claim 1, step 2); e) transferring the pulp into a die (paragraphs 0106-0107).
Given the teachings of Yang (paragraphs 0004-0006), it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify the method of making a container with pulp of Chung with the teachings of Yang which teach using pulp formed from the growing of mushrooms on a substrate. Doing so would help to reduce waste of grown mushrooms thus cutting costs and minimizing environmental impact.
The Office deems Chung as modified by Yang above to disclose a compost layer.
Wherein the Applicant has argued that Chung as modified by Yang does not teach a compost layer, the Office points to Terada.
Terada teaches a method for molding fibrous material (Abstract) comprising a mushroom substrate (col. 1 lines 8-15; col. 3 lines 31-39) and compost layer (col. 3 lines 31-39; col. 5 lines 46-61).
Given the teachings of Terada, it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify the invention of Chung as modified by Yang to have the compost layer included in the pulping process as the compost material can be a fibrous material which can add to the raw materials needed to form the shape.
Regarding claim 2, Chung as modified by Yang above discloses further comprising, before step a), the steps of: a1) inoculating a substrate (Yang - paragraph 0045), usable for growing mushrooms, with mycelium; a2) growing the mycelium in the substrate, with formation of the mushroom fruiting bodies on top of the substrate and a residual substrate comprising a fermented substrate (Yang - paragraphs 0007-0008) and the grown mycelium; and, a3) separating the mushroom fruiting bodies and the residual substrate (Yang - paragraphs 0020-0021 – “mushroom sticks” requires the removing of the fruit).
Regarding claim 3, Chung as modified by Yang above discloses the mushrooms are selected from white mushroom, chestnut mushroom, shiitake (Yang - paragraphs 0005-0006, 0033, 0044-0045, 0066), wood blewit, nameko, parasol mushroom, horse mushroom, beech mushroom, chanterelle mushroom, enoli, morel, oyster mushroom (Yang - paragraph 0005), pied de mouton, pom pom blanc, portabella, and trompette de la mort.
Regarding claim 7, Chung as modified by Yang above discloses wherein in step c) the residual substrate is mixed with an additional pulp (Yang - paragraph 0090, 0095).
Regarding claim 8, Chung as modified by Yang above discloses wherein the substrate comprises cellulose, lignin or hemicellulose (Yang – paragraphs 0006, 0012, 0023, 0044, 0045).
Regarding claim 9, Chung as modified by Yang above discloses wherein the transfer mold comprises a round, oval, square, rectangular, polygonal, multiplex, hexagonal, octagonal shape, or combination thereof (Chung – figs. 3-6, 10-11 and 13-15; col. 1 lines 55-56; col. 9 line 67 – col. 10 line 1).
Regarding claim 10, Chung as modified by Yang above discloses the transfer mold comprises a perimeter of about 10-200 cm and a height of about 1-20 cm (Chung - col. 6 lines 27-36; col. 1 lines 55-56).
Regarding claim 11, Chung as modified by Yang above discloses a container (Chung - 300, 400, or 500; Yang – paragraphs 0106-0107) manufactured by the method of claim 1 (see rejection of claim 1 above).
Regarding claim 16, Chung as modified by Yang above discloses wherein the mushrooms are from the Agaricus bisporus group (Yang – paragraph 0005 – “button mushrooms” are a known mushroom from the Agaricus bisporus group).
Regarding claim 18, Chung as modified by Yang above discloses wherein the additional pulp is a pulp based on paper (Yang - paragraph 0090, 0095).
Regarding claim 19, Chung as modified by Yang above discloses wherein the container contains mushrooms (Chung - col. 6 lines 9-19).
The Office deems Chung to disclose the container contains mushrooms. Wherein the Applicant may argue that this isn’t disclosed the Office previously alternatively took official notice that it would have been obvious to one of ordinary skill in the art before the time of effective filing to filing the container with mushrooms. Chung already discloses using the container for storing mushrooms. Mushrooms were a notoriously well-known commodity and filling the container with mushrooms would provide end customers with a desired product. The common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner’s assertion of official notice (MPEP 2144.03 C).
Regarding claim 20, Chung as modified by Yang discloses a substrate, but does not disclose wherein the substrate does not comprise a compost layer which comprises wood.
However, Terada teaches a method for molding fibrous material (Abstract) comprising a mushroom substrate (col. 1 lines 8-15; col. 3 lines 31-39) and compost layer (col. 3 lines 31-39; col. 5 lines 46-61) wherein the substrate does not comprise a compost layer which comprises wood (col. 5 lines 3-15 – “The examples of the fibrous materials other than waste paper may include vegetable fibrous material such as sawdust, bagasse, bark, wooden chip, chaff, fallen leaf, fallen twig, trimmed twig or wheat straw; and an animal fibrous material such as woolen refuse, hair, feather, or skin refuse.”; col. 5 lines 46-61 - “The compost is not particularly limited, and may include wheat straw, and fallen leaves.”; Given that Terada discloses “wheat straw”, “feather” or “skin refuse” as possible options, Terada is deemed to disclose an compost layer excluding wood to at least the same extent as the Applicant has).
Given the teachings of Terada, it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify the invention of Chung as modified by Yang to have the substrate not comprise a compost layer which comprises wood. Terada shows that different, non-wood materials where considered in the field of mushroom growing and were also utilized in fibrous pulping methods similar to those in Chung and Yang. Doing this would provide greater optionality in terms of what material could be used for the compost which can be beneficial as different materials cost different amounts and different composts may be better at growing different types of mushrooms.
Regarding claim 21, Chung as modified by Yang discloses wherein the compost layer comprises straw, hay, or other plant residues (Yang – paragraphs 0005 – “straw”, 0007, 0013, 0044-0045 – “wheat bran”). Wherein the Applicant may argue that Chung as modified by Yang does not disclose wherein the compost layer comprises straw, hay, or other plant residues, the Office alternatively points to Terada.
Terada teaches a method for molding fibrous material (Abstract) comprising a mushroom substrate (col. 1 lines 8-15; col. 3 lines 31-39) and compost layer (col. 3 lines 31-39; col. 5 lines 46-61) wherein the compost layer comprises straw, hay, or other plant residues (col. 5 lines 3-15 – “The examples of the fibrous materials other than waste paper may include vegetable fibrous material such as sawdust, bagasse, bark, wooden chip, chaff, fallen leaf, fallen twig, trimmed twig or wheat straw; and an animal fibrous material such as woolen refuse, hair, feather, or skin refuse.”; col. 5 lines 46-61 - “The compost is not particularly limited, and may include wheat straw, and fallen leaves.”).
Given the teachings of Terada, it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify the invention of Chung as modified by Yang to have the compost layer comprises straw, hay, or other plant residues. Terada shows that different, compost layers comprising straw, hay, or other plant residues where considered in the field of mushroom growing and were also utilized in fibrous pulping methods similar to those in Chung and Yang. Doing this would provide greater optionality in terms of what material could be used for the compost which can be beneficial as different materials cost different amounts and different composts may be better at growing different types of mushrooms.
Regarding claim 22, Chung as modified by Yang discloses wherein the compost layer comprises straw (Yang – paragraphs 0005). Wherein the Applicant may argue that Chung as modified by Yang fails to disclose wherein the compost layer comprises straw the Office alternatively turns to Terada.
Terada teaches a method for molding fibrous material (Abstract) comprising a mushroom substrate (col. 1 lines 8-15; col. 3 lines 31-39) and compost layer (col. 3 lines 31-39; col. 5 lines 46-61) wherein the compost layer comprises straw (col. 5 lines 3-15 – “The examples of the fibrous materials other than waste paper may include vegetable fibrous material such as sawdust, bagasse, bark, wooden chip, chaff, fallen leaf, fallen twig, trimmed twig or wheat straw; and an animal fibrous material such as woolen refuse, hair, feather, or skin refuse.”; col. 5 lines 46-61 - “The compost is not particularly limited, and may include wheat straw, and fallen leaves.”).
Given the teachings of Terada, it would have been obvious to one of ordinary skill in the art before the time of effective filing to modify the invention of Chung as modified by Yang to have the compost layer comprises straw, hay, or other plant residues. Terada shows that different, compost layers comprising straw, hay, or other plant residues where considered in the field of mushroom growing and were also utilized in fibrous pulping methods similar to those in Chung and Yang. Doing this would provide greater optionality in terms of what material could be used for the compost which can be beneficial as different materials cost different amounts and different composts may be better at growing different types of mushrooms.
Claim(s) 4-6, 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Chung (US 9,856,608 B1) in view of Yang (CN 110453519 A) in view of Terada et al. (US Patent 5,629,034) in further view of Lapierre et al. (US 2016/013582 A1) hereinafter referred to as Lapierre.
Regarding claim 4, Chung as modified by Yang discloses the mushrooms, from which the residual substrate is collected (Yang - paragraph 0066), are of the same Class, Order, Family, Genus, or Species as the mushrooms that are stored, transported or sold in the container (Yang – paragraph 0005; This is also a limitation of intended use as the claims never positively recite the presence of mushrooms in the container, only that the container is “for” the storage, transport or sale of mushrooms.).
Chung discloses that mushrooms are stored for sale, but does not elaborate on what type of mushrooms they are, however, Yang teaches that the same mushrooms that are used for the creation of the pulp for a container (paragraph 0066 – “shiitake”), are also widely grown for consumption (paragraph 0005). As such, it would have been obvious to one of ordinary skill in the art to have the same mushrooms (e.g. shiitake mushrooms), stored, transported or sold in the same container that is made from them so as to help reduce waste. Furthermore, the claims never positively recite the presence of mushrooms in the container, only that the container is “for” the storage, transport or sale of mushrooms and as such this is a mere recitation of intended use which the cited art is deemed to read on.
Wherein the Applicant may argue that Yang does not explicitly teach that the same mushrooms (e.g. shitake mushrooms) are stored, transported or sold in the container, the Office further points to Lapierre.
Lapierre teaches wherein shitake mushrooms are stored, transported or sold in the container (Abstract; paragraphs 0024, 0040, 0091; claim 18).
Given the teachings of Lapierre, it would have been obvious to one of ordinary skill in the art before the time of effective filing to have the method of Chung as modified by Yang store, transport and/or sell shiitake mushrooms (i.e. the same mushrooms used by Yang for the creation of the pulp). Shiitake mushrooms were a notoriously well-known type of edible mushroom and thus would be a desirable commodity to store, transport and sell. Yang already is concerned about reducing waste, so having the container made out of the same mushrooms it was containing would further that goal of reducing waste by not introducing new types of mushrooms into the production process.
Regarding claim 5, Chung as modified by Yang and Terada above discloses the substrate further comprises a mushroom growing layer (Yang – paragraph 0044 – “In addition to cellulose, hemicellulose, and polysaccharides, these raw materials also contain organic matter such as proteins and amino acids, which are essential for edible fungi. They are rich in nutrients and meet the growth needs of shiitake mushrooms.”) on top of the compost layer (Yang – paragraphs 0007, 0013, 0044-0045; Terada - col. 3 lines 31-39; col. 5 lines 46-61).
The Office deems Chung as modified by Yang and Terada to disclose the limitations of the claim. Wherein the Applicant may argue that Chung as modified by Yang and Terada does not disclose the substrate further comprises a mushroom growing layer on top of the compost layer, Lapierre alternatively teaches a mushroom growing layer (paragraph 0023 – “mushroom growth medium”) on top of the compost layer (paragraphs 0023 – “compost layer”, 0025, 0028-0031).
Given the teachings of Lapierre, it would have been obvious to one of ordinary skill in the art before the time of effective filing to have the method of Chung as modified by Yang and Terada incorporate a mushroom growth and compost layer. The Yang already teaches using a substrate to grow the mushrooms used in the manufacture of a pulp. Lapierre further teaches that it was well-known to make use of a mushroom growth layer and compost layer in the growth of said mushrooms. Doing so would provide the mushrooms with the conditions they need to properly grow.
Regarding claim 6, Chung as modified by Yang and Terada (and alternatively Lapierre) discloses the compost layer comprises slurry (Yang – paragraph 0101; Terada – col. 5 lines 3-61; Lapierre – paragraph 0074), solid manure (Yang – paragraph 0007; Terada – col. 3 lines 31-39; Lapierre – paragraph 0074), straw (Yang – paragraph 0005; Terada – col. 5 lines 3-61; Lapierre – paragraph 0074), hay, and/or wood (Yang - paragraph 0044-0045; Terada – col. 5 lines 3-61; Lapierre – paragraph 0073).
Regarding claim 15, Chung as modified by Yang above discloses a method for the storage, transport or sale of mushrooms (Chung - col. 6 lines 9-19), said method comprising the steps of:
i) manufacturing a container by the method of claim 1 (see rejection of claim 1 above);
ii) filling the container obtained from step i) with harvested mushroom fruiting bodies (Chung - col. 6 lines 9-19 – Filling the container is an inherent step in the mushrooms being located within the container);
iii) optionally closing the container with a transparent upper portion;
iv) optionally transporting the container with the mushroom fruiting bodies to the place of sale; and,
v) optionally selling the container with the mushroom fruiting bodies to an intermediary or consumer.
The Office deems Chung to disclose filling the container obtained from step i) with harvested mushroom fruiting bodies. Wherein the Applicant may argue that this isn’t disclosed the Office previously alternatively took official notice that it would have been obvious to one of ordinary skill in the art before the time of effective filing to include the step of filing the container with harvested mushroom fruiting bodies. Chung already discloses using the container for storing mushrooms. Mushroom fruiting bodies are the part of the mushroom that is typically eaten by a consumer and therefore it would have been obvious to include that portion of the mushroom in the container as it would be the part that was desired to be eaten. The common knowledge or well-known in the art statement is taken to be admitted prior art because applicant failed to traverse the examiner’s assertion of official notice (MPEP 2144.03 C).
The Office deems the “optionally” steps to not be a requirement of the claim. Wherein the Applicant may argue that the “optionally” steps are required to be present, the Office alternatively points to Lapierre.
Lapierre teaches iii) optionally closing the container with a transparent upper portion (claim 14); iv) optionally transporting the container with the mushroom fruiting bodies to the place of sale (claim 14); and, v) optionally selling the container with the mushroom fruiting bodies to an intermediary and/or consumer (claim 14).
Regarding claim 17, Chung as modified by Yang above discloses mushrooms, but fails to disclose wherein the mushrooms are white mushrooms or chestnut mushrooms.
However, Lapierre teaches wherein the mushrooms are white mushrooms or chestnut mushrooms (paragraphs 0024, 0069, 0091).
Given the teachings of Lapierre, it would have been obvious to one of ordinary skill in the art before the time of effective filing to have the mushrooms be white or chestnut mushrooms. Such types of mushrooms were common in the art and were mass produced and edible. Thus, reducing waste, which is the purpose of the Yang reference, would be applicable to those mushrooms as well.
Response to Arguments
Applicant's arguments filed 12 June 2026 have been fully considered but they are not persuasive.
The Applicant argues that Yang does not disclose a “compost layer”. The Office contends that Yang does disclose a compost layer in paragraph 0007 where it recites “The most commonly used recycling model for mushroom residue is "plant substrate – edible fungi - mushroom residue - mushroom residue organic fertilizer - planting industry". In this model, the mushroom residue is mainly used to produce organic fertilizer, which is then used for planting, thus reducing environmental pollution from waste incineration. In the process of using mushroom residue to produce mushroom residue bio-organic fertilizer, the mushroom residue is fermented and composted, with the maximum usage of mushroom residue reaching 70%.” (emphasis added). The Office deems that further mentions of the term “mushroom residue” imply that this is a material that has been composted to some degree, thus reading on the claim limitation.
The Applicant has argued that they do not deem this to be clear enough of a disclosure to read on the claims. The Office has further pointed Terada which teaches a method for molding fibrous material (Abstract) comprising a mushroom substrate (col. 1 lines 8-15; col. 3 lines 31-39) and compost layer (col. 3 lines 31-39; col. 5 lines 46-61). The teachings of Terada more explicitly disclose the claimed aspects of the compost layer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDREW M TECCO whose telephone number is (571)270-3694. The examiner can normally be reached M-F 11a-7p.
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/ANDREW M TECCO/Primary Examiner, Art Unit 3731
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