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 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 3, 5, 6, 8, 9, 11, 13 and 14 are rejected under 35 U.S.C. 102(a)(1) (a)(2) as being anticipated by Bayer et al. (US 2008/0145577 henceforth Bayer).
Regarding claim 1, Bayer discloses a method for making a mycelium-based biocomposite comprising: providing a substrate including one or more textiles (engineered substrate composed partially or entirely of …particles, fibers, and other elements, para. 0016 and 0114), providing mycelium (para. 0117), applying the mycelium to the substrate to form a composite (inoculum 3 is applied to the surface of the engineered substrate, para. 0117), wherein applying includes placing one or more textiles and the mycelium in at least three alternating layers, the at least three alternating layers including at least one layer comprising the one or more textiles and at least one layer comprising the mycelium (adding, as desired, additional layers of the engineered substrate onto the engineered substrate and inoculum combination of step 3, para. 0017-0119), and after applying the mycelium to the substrate, allowing the mycelium to grow to form a mycelium biocomposite (growing the desired fungi strain through the additional layer of engineered substrate, para. 0120).
Regarding claim 3, Bayer discloses wherein the one or more textiles includes separated fibers (para. 0023).
Regarding claim 5, Bayer discloses wherein providing mycelium includes providing grain spawn (mycelium growing on solid or liquid nutrient, para. 0053).
Regarding claim 6, Bayer discloses wherein providing mycelium includes providing liquid spawn (para. 0053).
Regarding claim 8, Bayer discloses wherein applying includes combining the substrate and mycelium (inoculum is positioned on engineered substrate 6, para. 0047).
Regarding claim 9, Bayer discloses wherein applying includes placing textiles and mycelium into a mold (mixture of inoculum and substrate is placed in an enclosure, para. 0054, 0055 and 0117).
Regarding claim 11, Bayer discloses wherein the one or more textiles includes cotton (para. 0023).
Regarding claim 13, Bayer discloses wherein the mycelium is of the genus Pleurotus or Ganoderma (para. 0061 and 0071).
Regarding claim 14, Bayer discloses wherein allowing the mycelium to grow includes incubating the composite (para. 0049).
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.
Claims 2, 4, 12 and 15-20 are rejected under 35 U.S.C. 103 as being unpatentable over Bayer in view of WO 2020/082044.
Regarding claim 2, Bayer teaches the invention substantially as claimed but fails to teach wherein the one or more textiles includes intact textiles. However, WO 2020/082044 teaches intact textiles (cellulose-based, synthetic or other organic fibers including various textile forms, e.g. woven, knit, fulled, felted, para. 00046). It would have been obvious to one having ordinary skill in the art before the effective filing date to modify the fibers of Bayer’s system with a textile as taught by WO 2020/082044 to enhance the tensile and compressive strength.
Regarding claim 4, Bayer teaches the invention substantially as claimed but fails to teach wherein the one or more textiles includes a combination of intact textiles and separated fibers. However, WO 2020/082044 teaches intact textiles (cellulose-based, synthetic or other organic fibers including various textile forms, e.g. woven, knit, fulled, felted, para. 00046). It would have been obvious to one having ordinary skill in the art before the effective filing date to modify the fibers of Bayer’s system with a textile as taught by WO 2020/082044 to enhance the tensile and compressive strength.
Regarding claim 12, Bayer teaches the invention substantially as claimed and further teaches the one or more textiles being a polymer (polymers, para. 0023) but fails to teach the polymer being polyester. However, WO 2020/082044 teaches a polyester (para. 00056). It would have been obvious to one having ordinary skill in the art before the effective filing date to modify the fibers of Bayer’s system with a polyester as taught by WO 2020/082044 to vary the tensile and compressive strength of the final product.
Regarding claim 15, Bayer discloses a mycelium-based biocomposite comprising: a substrate including one or more textiles (para. 0016); and mycelium (para. 0047), wherein the mycelium is integrated into the substrate (para. 0054 and inoculation can occur during the substrate creation stage, para. 0117) and wherein the biocomposite comprises at least three alternating layers, (inoculum 3 is applied to the surface of the engineered substrate, para. 0117 and adding, as desired, additional layers of the engineered substrate onto the engineered substrate and inoculum combination of step 3, para. 0017-0119) but fails to teach wherein the one or more textiles includes intact textiles, the at least three alternating layers including at least one layer comprising the intact textiles and at least one layer comprising the mycelium. However, WO 2020/082044 teaches intact textiles (cellulose-based, synthetic or other organic fibers including various textile forms, e.g. woven, knit, fulled, felted, para. 00046). It would have been obvious to one having ordinary skill in the art before the effective filing date to modify the fibers of Bayer’s system with a textile as taught by WO 2020/082044 to enhance the tensile and compressive strength.
Regarding claim 16, Bayer as modified by WO 2020/082044 teaches the invention substantially as claimed and WO 2020/082044 further teaches wherein the one or more textiles include one or more of cotton, polyester, nylon, and some combination thereof (para. 00056).
Regarding claim 17, Bayer as modified by WO 2020/082044 teaches the invention substantially as claimed and Bayer further teaches wherein the biocomposite is substantially fire resistant (the method allows for the production of materials…fire protecting, para. 0073).
Regarding claim 18, Bayer as modified by WO 2020/082044 teaches the invention substantially as claimed and WO 2020/082044 teaches wherein the substrate has an average porosity of between 10- 100 um (perforation layer includes a prescribed porosity with an average hole size within the plurality of pores is between 0.1 micron and 1.0 millimeter, para. 00010). It would have been obvious to one having ordinary skill in the art before the effective filing date to have an average porosity of between 10- 100 pm, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 19, Bayer teaches the invention substantially as claimed but fails to teach wherein the biocomposite has humidity absorption of between 2-10% at 65% relative humidity and 21°C. It would have been obvious to one having ordinary skill in the art before the effective filing date to have a humidity absorption of between 2-10% at 65% relative humidity and 21°C, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
Regarding claim 20, Bayer teaches the invention substantially as claimed and teaches a cotton (known to have a humidity absorption of between 7 -11%) but fails to teach wherein the biocomposite has humidity absorption of between 2-15% at 90% relative humidity and 21°C. wherein the biocomposite has humidity absorption of between 2-15% at 90% relative humidity and 21°C. It would have been obvious to one having ordinary skill in the art before the effective filing date to have a humidity absorption of between 2-15% at 90% relative humidity and 21°C, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Bayer in view of McIntyre et al. (US 2013/0263500 henceforth McIntyre).
Regarding claim 10, Bayer teaches the invention substantially as claimed but fails to teach comprising sterilizing the substrate prior to applying. However, McIntyre teaches comprising sterilizing the substrate prior to applying (cotton burr substrate is sterilized, para. 0030; sterilized oat hulls, para. 0039). It would have been obvious to one having ordinary skill in the art before the effective filing date to modify Bayer’s method with a sterilized substrate as taught by McIntyre to prevent unwanted contamination of the inoculum that would prevent the fungus from growing on the substrate.
Response to Arguments
Applicant’s arguments filed 7/15/2026 have been fully considered but they are not persuasive.
In response to applicant’s argument that Bayer does not disclose “applying the mycelium to the substrate to form a composite, wherein applying includes placing the one or more textiles and the mycelium in at least three alternating layers, the at least three alternating layers including at least one layer comprising the one or more textiles and at least one layer comprising the mycelium”, the examiner disagrees. Bayer discloses in paragraphs 0117-0120 applying a mycelium (i.e. inoculum, para. 0053) to a substrate (i.e. engineered substrate 6, para. 0109) and applying at least one or more textiles and the mycelium in at least three alternating layers (the engineered substrate 6 is positioned within an enclosure where inoculum is applied on top then, if desired, an additional layer of the engineered substrate is added, and the fungi strain is allowed to grow through the additional layer of the engineered substrate, for a total of three alternating layers of engineered substrate and inoculum).
In response to applicant’s argument that the prior art does not disclose intake textiles, the examiner disagrees. As disclosed in the above Office Action, Bayer in view of WO 2020/082044 discloses cellulose-based, synthetic or other organic fibers including various textile forms, e.g. woven, knit, fulled, felted, (WO 2020/082044 paragraph 00046). It would have been obvious to modify the fibers of Bayer’s system with a textile as taught by WO 2020/082044 to enhance the tensile and compressive strength of the final product.
In response to applicant’s argument that the prior art does not disclose wherein the biocomposite has a humidity absorption of between 2-10% at 65% relative humidity and 21C/ a humidity absorption of between 2-15% at 90% relative humidity and 21C, Bayer paragraph 0023 discloses cotton, which is known to have a humidity absorption of between 7 -11%. It would have been obvious to have a humidity absorption of between 2-10% at 65% relative humidity and 21C/ a humidity absorption of between 2-15% at 90% relative humidity and 21C, since it has been held that where routine testing and general experimental conditions are present, discovering the optimum or workable ranges until the desired effect is achieved involves only routine skill in the art. In re Aller, 105 USPQ 233.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EBONY E EVANS whose telephone number is (571)270-1157. The examiner can normally be reached 9am -5pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kimberly Berona can be reached at 5712726909. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EBONY E EVANS/Primary Examiner, Art Unit 3647
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