Ex Parte McIntyre et al

Patent Trial and Appeal Board

Aug 17, 2017

13618261 (P.T.A.B. Aug. 17, 2017)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/618,261 09/14/2012 Gavin McIntyre 225525.29 2814
27162 7590 08/17/2017
CARELLA, BYRNE, CECCHI, OLSTEIN, BRODY & AGNELLO
5 BECKER FARM ROAD
ROSELAND, NJ 07068
EXAMINER
CLARKE, TRENT R
ART UNIT PAPER NUMBER
1651
MAIL DATE DELIVERY MODE
08/17/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte GAVIN MCINTYRE, EBEN BAYER,
CHRISTOPHER SCULLY, and AMANDA PALAZZOLO
__________

Appeal 2017-000110
Application 13/618,261
Technology Center 1600
__________

Before DEMETRA J. MILLS, JEFFREY N. FREDMAN, and
RICHARD J. SMITH, Administrative Patent Judges.

MILLS, Administrative Patent Judge.

DECISION ON APPEAL

This is an appeal under 35 U.S.C. § 134. The Examiner has rejected
the claims for obviousness. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2017-000110
Application 13/618,261

2
STATEMENT OF CASE
The invention relates to methods of producing tissue culture media
derived from plant seed material. More particularly, the invention relates to
methods of producing tissue culture media derived from plant seed material
and leveraging the media to inoculate and cast a mold of an engineered
substrate into a complex geometry. Still more particularly, this invention
relates to the casting of mycological biomaterials. Spec. 1.

The following claims are representative.
1. A method of making a tissue culture comprising the steps of
mixing a selected seed matter capable of gelatinizing in water with
water to form a mixture;
autoclaving the mixture in an autoclavable vessel;
inoculating the autoclaved mixture with a selected one of a cell
strain and a tissue strain; and
incubating the inoculated mixture for a desired time to form a
culture/gelling liquid.

4. A method comprising the steps of
forming a tissue culture media composed of water, a gelling agent, at
least one of seeds selected from the group consisting of chia seeds, basil
seeds and psyllium seed husks and a supplemental nutrient selected from the
group consisting of yeast, calcium, magnesium, complex carbohydrates and
manganese;
sterilizing said media at a predetermined temperature and for a
predetermined time;
cooling said sterilized media to room temperature;
inoculating said cooled media with a culture of Ganoderma
applanatum to form a culture/gelling liquid;
forming a substrate composed of oat hulls, water, maltodextrin and
CaSO4;
sterilizing said substrate and cooling said sterilized substrate;
Appeal 2017-000110
Application 13/618,261

3
combining said culture/gelling liquid and said substrate to form a
mixture;
placing said mixture in a mold of predetermined shape;
incubating said mixture to form a member of predetermined shape; and
drying said member to 0% moisture.

7. A method comprising the steps of
forming a nutritional gelling solution composed of water, a gelling
agent, at least one of seeds selected from the group consisting of chia seeds,
basil seeds and psyllium seed husks and a supplemental nutrient selected
from the group consisting of yeast, calcium, magnesium, complex
carbohydrates and manganese;
sterilizing said gelling solution at a predetermined temperature and for
a predetermined time;
cooling said sterilized gelling solution to room temperature;
forming a substrate composed of oat hulls, water, maltodextrin and
CaSO4;
combining said cooled sterilized gelling solution and said substrate to
form a mixture;
inoculating said mixture with a Ganoderma applanatum grain
inoculum;
placing said inoculated mixture in a mold of predetermined shape to
form a molded shape;
thereafter releasing the molded shape from the mold;
thereafter incubating said molded shape to form a member of
predetermined shape; and
drying said member to 0% moisture.

9. A method comprising the steps of
forming a nutritional gelling solution composed of water, a gelling
agent, at least one of seeds selected from the group consisting of chia seeds,
basil seeds and psyllium seed husks and a supplemental nutrient selected
from the group consisting of yeast, calcium, magnesium, complex
carbohydrates and manganese;
sterilizing said gelling solution at a predetermined temperature and for
a predetermined time;
cooling said sterilized gelling solution to room temperature;
Appeal 2017-000110
Application 13/618,261

4
forming a substrate composed of oat hulls, water, maltodextrin and
CaSO4;
inoculating said substrate with a culture of Ganoderma applanatum;
grinding said inoculated substrate into particles;
combining said cooled gelling solution and said particles to form a
mixture;
placing said mixture in a mold of predetermined shape to form a
molded shape;
thereafter releasing the molded shape from the mold;
thereafter incubating said molded shape to form a member of
predetermined shape; and
drying said member to 0% moisture.

Grounds of Rejection
1. Claims 1 and 2 under 35 U.S.C. § 103(a) over Aichinger et al. (US
2003/0092165 Al, published May15, 2003) and Jain et al. (lsubgol as
an Alternative Gelling Agent for Microbial Culture Media, 1997, J.
Plant Biochemistry & Biotechnology, vol. 6, pp. 129–31).
2. Claims 1–3 under 35 U.S.C. § 103(a) over Aichinger in view of Jain
and Jo et al. (Culture Conditions for the Mycelial Growth of
Ganoderma applanatum, 2009, Mycobiology, vol. 37(2), pp. 94–102).
3. Claims 1–11 are rejected under pre-AIA 35 U.S.C. 103(a) as being
unpatentable over Aichinger, Jain, Jo, and three Bayer references,
(US 2009/0307969 A1, published Dec. 17, 2009)(hereafter ‘969),
Bayer et al. (US 2012/0315687 A1, published Dec. 13, 2012)
(hereafter ‘687), and Bayer US 2008/0145577 A1, published June 19,
2008) (hereafter ‘577).
Appeal 2017-000110
Application 13/618,261

5
FINDINGS OF FACT
The Examiner’s findings of fact are set forth in the Final Action at
pages 2–22.
PRINCIPLES OF LAW
In making our determination, we apply the preponderance of the
evidence standard. See, e.g., Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1427
(Fed. Cir. 1988) (explaining the general evidentiary standard for proceedings
before the Office).
“The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
When substituting equivalents known in the prior art for the same
purpose, an express suggestion to substitute one equivalent component or
process for another is not necessary to render such substitution obvious. In
re Fout, 675 F.2d 297, 301 (CCPA 1982).

Obviousness Rejection 1- Aichinger and Jain
For this rejection, Appellants do not provide separate arguments for
individual claims, therefore we select claim 1 as representative claim.
The Examiner finds that:
The disclosure of Aichinger is drawn to increasing the growth
rate of cells by using gelatinizing agents in the liquid media
used to grow the cells (Abst.) and teaches that the methods are
applicable to fungal cells, including basidiomycete cells
([0018], [0023], [0029]). Aichinger clearly teaches that the
gelatinizing agent can be agar and the rejection in the final
Office action relied on that a person of ordinary skill in the art
at the time of the invention would have found it obvious to
Appeal 2017-000110
Application 13/618,261

6
substitute psyllium seed husks (Isubgol) for agar as the
gelatinizing agent in the method of Aichinger because Jain
teaches the use of psyllium seed husks (lsubgol) as an
alternative gelling agent which can substitute for agar in
microbial culture media (Abst.).

Ans. 16–17.

Appellants contend that:

There is no disclosure in Aichinger that the “gelatinising agent”
described therein is formed from mixing a selected seed matter
capable of gelatinizing in water with water to form a mixture. In
particular, there is no disclosure in Aichinger that the guar of
[0054] is mixed with water to form a mixture.
Thus, substituting the Isobgol of Jain for the guar of
Aichinger would not result in the step of “mixing a selected
seed matter capable of gelatinizing in water with water to form
a mixture” required by claim 1.

App. Br. 7.

ANALYSIS
We agree with the Examiner’s fact finding, statement of the rejection
and responses to Appellants’ arguments as set forth in the Answer. We find
that the Examiner has provided evidence to support a prima facie case of
obviousness. We provide the following additional comment to the
Examiner’s position set forth in the Final Rejection and Answer.
Appellants contend that that the selected seed matter or guar of
Aichinger is not disclosed to be mixed with water. App. Br. 7. We are not
persuaded. Aichinger specifically states that, “[i]n principle, the culture of
cells in liquid media requires that the media be thoroughly mixed
continuously, i.e. shaken, in order to ensure that the cells are supplied with
Appeal 2017-000110
Application 13/618,261

7
nutrients.” ¶ 5; emphasis added. Aichinger further states that, “[i]t is also
known to use them [gelatinising agents] for formulations, for example in
seed treatment, where various polymers form an aqueous gel which
promotes the germination of bioherbicides, such as the fungus Alternaria
cassiae (Shabana et al., 1997).” ¶ 40; emphasis added.
When substituting equivalents known in the prior art for the same
purpose, an express suggestion to substitute one equivalent component or
process for another is not necessary to render such substitution obvious. In
re Fout, 675 F.2d at 301.
Appellants further argue that, “[t]here is no disclosure in Aichinger
that a mixture of guar and water is subjected to a step of autoclaving in an
autoclavable vessel.” App. Br. 8.
The Examiner responds that:
This is unpersuasive because, as described in the
rejection above, the rejection is over the method made obvious
by Aichinger in view of Jain and Jain teaches autoclaving the
media at 121°C for 15 min and dispensing it into sterile
containers before inoculation with microbes (p. 130, 1st ¶). A
person of ordinary skill in the art at the time of the invention
would have found it obvious to use an autoclavable vessel for
autoclaving the media because a non-autoclavable vessel would
fail upon autoclaving.

Ans. 19, emphasis added. We find that the Examiner has the better position.
Moreover, Appellants err in attacking the references individually, as the
rejection is based on a combination of references. See In re Merck & Co.,
Inc., 800 F.2d 1091, 1097 (Fed. Cir. 1986). The references cannot be read in
isolation, but for what they teach in combination with the prior art as a
whole. See id.
Appeal 2017-000110
Application 13/618,261

8
Thus we find that the Examiner has established a prima facie case of
obviousness which remains unrebutted by Appellants. The obviousness
rejection 1 is affirmed for the reasons of record.

Obviousness Rejection 2 - Aichinger and Jain and Jo
For this rejection, Appellants do not provide separate arguments for
individual claims, therefore we select claim 1 as representative claim.
Appellants rely on their same arguments with respect to the rejection
of the claims over Aichinger in view of Jain, for the rejection over Aichinger
in view of Jain and Jo. App. Br. 10.
For the reasons indicated above with respect to the rejection of the
claims over Aichinger in view of Jain, we do not find these same arguments
persuasive with respect to the rejection of the claims over Aichinger in view
of Jain and Jo.
Rejection 2 is affirmed for the reasons of record.

Obviousness Rejection 3 - Aichinger, Jain, Jo and 3 Bayer references
For this rejection, Appellants do not provide separate arguments for
individual claims other than claims 1, 4, and 7, and therefore we select
claims 1, 4, and 7 as representative claims.
Claim 1
Appellants contend that:
The method of Aichinger is not analogous to the growing of
mushrooms as is Jo. Further, the Examiner has presented no
evidence that one of ordinary skill in the art of increasing the
growth rate of cells in a 384-well MTP (microtiter plate) would
be motivated by the culture conditions for growing mushrooms
Appeal 2017-000110
Application 13/618,261

9
described in Jo to modify the method of Aichinger.
Accordingly, a rejection of claims 1 to 11 as being unpatentable
over Aichinger in view of Jain and Jo and Bayer ‘969, Bayer
‘687 and Bayer ‘577 is not warranted pursuant to the provisions
of 35 USC 103.

App. Br. 11–12.
The Examiner responds that:
This is unpersuasive because all of Aichinger, Jain and Jo are
drawn to culturing fungal cells, with Aichinger and Jo being
specifically drawn to culturing basidiomycete fungal cells and
with Jo being specifically drawn to culturing Ganoderma
applanatum. The instant claims are drawn to media
compositions and methods for culturing Ganoderma
applanatum; hence, the prior art relied on are clearly analogous
art relevant to the claimed invention, i.e. the field of endeavor
of the prior art references is that of the Appellants’ claimed
inventions.

Ans. 21. The test for non-analogous art is first whether the art is within the
field of the inventor's endeavor and, if not, whether it is “reasonably
pertinent to the particular problem with which the inventor was involved.”
In re Wood, 599 F.2d 1032, 1036 (CCPA 1979). “A reference is reasonably
pertinent if, even though it may be in a different field” of endeavor, it
logically would have commended itself to an inventor's attention in
considering his problem “because of the matter with which it deals.” In re
Clay, 966 F.2d 656, 659 (Fed. Cir. 1992). We find no error in the
Examiner’s reasoning that Aichinger, Jain and Jo are analogous art. We find
that each of Aichinger, Jain and Jo are drawn to culturing fungal cells, and
conditions for culturing fungal cells. We find that the cited references are
within the inventor’s field of endeavor, making a culture, and it logically
Appeal 2017-000110
Application 13/618,261

10
would have commended itself to an inventor’s attention in considering his
problem “because of the matter with which it deals,” culturing cells with
seed matter capable of gelatinizing in water.
The rejection of claim 1 is affirmed.

Claims 4, 7, 9, and 10
Appellants contend that, “Claim 4 requires the step of ‘forming a
substrate composed of oat hulls, water, maltodextrin and CaSO4’. Neither
Aichinger nor Jain discloses such a step.” App. Br. 13.
The Examiner responds that:
Application ‘687 (Bayer et al., US 2012/0315687) is relied on for
teaching forming a substrate composed of oat hulls, water,
maltodextrin and CaSO4 because application ‘687 teaches substrate
compositions for growing basidiomycete mycelium consisting of rice
hulls, maltodextrin, CaSO4 and water [0011] and teaches that oat hulls
are density equivalent and interchangeable with rice hulls [0012].

Ans. 21. Appellants acknowledge that “Claim 7 contains similar recitations
as claim 4 and stands or falls with claim 4.” App. Br. 13. Appellants also
present similar arguments for claims 9 and 10, as presented for claims 4 and
7. App. Br. 14. We find that the Examiner has the better supported position
and the rejections of claims 4, 7, 9, and 10 are affirmed.
Further with respect to claims 9 and 10, Appellants contend that
while Bayer ‘577 teaches agitating or breaking up the substrate
(already composed of particles) there is no teaching that the
inoculated substrate particles are to be ground into particles. Further,
the Examiner has presented no evidence as to what would motivate
one of ordinary skill in the art to do so.

App. Br. 14. The Examiner responds that:
Appeal 2017-000110
Application 13/618,261

11

Application ‘577 teaches mixing the fungal strain with the substrate,
incubating the substrate to obtain fungal growth, then breaking up the
substrate before placing into a mold of predetermined shape [0101-
103]; hence, a person of ordinary skill in the art at the time of the
invention would find it obvious to inoculate the substrate with a
culture of G. applanatum; and to break up said inoculated substrate
into particles by any reasonable means because ‘577 teaches breaking
the inoculated substrate into pieces before placing into a mold of
predetermined shape. Grinding of the inoculated substrate would be
one of many means of breaking up the inoculated substrate which a
person of ordinary skill in the art would find to be an obvious method
for breaking up the inoculated substrate; hence, a person of ordinary
skill in the art at the time of the invention would find it obvious to
inoculate the substrate with a culture of G. applanatum and to grind
said inoculated substrate into particles.

Ans. 22. We find no error in the Examiner’s analysis or reasoning.
Appellants have failed to provide evidence that “grinding” of the inoculated
substrate as in Bayer ‘577 would not have been recognized by one of
ordinary skill in the art to be one of many means of breaking up the
inoculated substrate, as claimed.
Obviousness rejection 3 is affirmed for the reasons of record.

CONCLUSION OF LAW
The cited references support the Examiner’s obviousness rejections 1-
3, which are affirmed for the reasons of record. All pending, rejected claims
fall.

AFFIRMED