Ex Parte Hirahara

Board of Patent Appeals and Interferences

Mar 4, 2005

10280994 (B.P.A.I. Mar. 4, 2005)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte EDWIN HIRAHARA
____________
Appeal No. 2005-0558
Application No. 10/280,994
____________
ON BRIEF
____________
Before FRANKFORT, NASE, and BAHR, Administrative Patent Judges.
FRANKFORT, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 18 through 20. Claims 1 through 17, 23, 25
and 26 stand allowed. Claims 21 and 22 are objected to as being
dependent upon a rejected base claim, but have been indicated to
be allowable if rewritten in independent form. Claim 24 has been
canceled.
Appeal No. 2005-0558
Application No. 10/280,994
Page 2
Appellant’s invention relates to a method of attaching an
end seal to a manufactured seed. Independent claim 18 is
representative of the subject matter on appeal and reads as
follows:
18. A method of attaching an end seal to a manufactured seed,
the method comprising:
(a) positioning a manufactured seed on a surface, the
manufactured seed including a seed coat having an opening and an
embryo disposed within the opening, the opening having a location
relative to the surface;
(b) ablating a predetermined area of a sheet, wherein the
predetermined area of the sheet is located according to the
location of the opening in the seed coat;
(c) positioning the sheet on the manufactured seed to
substantially center the predetermined area over the opening such
that the embryo is located below the predetermined area; and
(d) attaching the sheet to the first manufactured seed to
seal the opening.

The sole prior art reference of record relied upon by the
examiner in rejecting the claims on appeal is:
Hartle et al. (Hartle) WO 98/33375 Feb. 2, 1998
Claims 18 through 20 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by Hartle.
Appeal No. 2005-0558
Application No. 10/280,994
Page 3
Rather than reiterate the conflicting viewpoints advanced by
appellant and the examiner regarding the above-noted rejection,
we refer to the final rejection (mailed September 5, 2003), the
examiner’s answer (mailed August 19, 2004), appellant’s brief
(filed June 10, 2004) and reply brief (filed October 22, 2004)
for a full exposition thereof.
0PINION
Having carefully reviewed the anticipation issue raised in
this appeal in light of the record before us, we have made the
determination that the examiner’s rejection will not be
sustained. Our reasons follow.
Looking to the final rejection, we note that the examiner
has directed us to the manufactured seed depicted in Figures 1A
and 1B of Hartle, and more specifically to the disclosure
spanning pages 27 and 28 of that reference wherein a method of
making the lid (274) of the manufactured seed seen in Figure 1B
is described. In pertinent part, that disclosure indicates that
the lids were made “using strips of Parafilm™ M laboratory film
Appeal No. 2005-0558
Application No. 10/280,994
Page 4
. . . that were cut to 4 in x 5/8 in . . . that were pre-
stretched using penetrometer probes” having various selected
diameters to form the protruding portion or nipple (275) of the
lids. It is further indicated on page 28 that, after pre-
stretching, the lids were cut from the strip using a 6 mm Acu-
punch™ and subsequently attached close to the opening in the
primary end seal (272) of the manufactured seed. The examiner is
apparently of the view that this disclosure in Hartle teaches the
method of attaching an end seal to a manufactured seed as set
forth in claims 18 through 20 on appeal, and more particularly
that the “ablating” step of appellant’s claim 18 is readable on
the cutting of the lids from the strip of Parafilm™ M laboratory
film (answer, pages 3-4).
For the reasons aptly set forth by appellant in the brief
and reply brief, we will not sustain the examiner’s rejection of
claims 18 through 20 under 35 U.S.C. § 102(b). Like appellant,
it is clear to us that the disclosure in Hartle relied upon by
the examiner does not teach or suggest the method set forth in
claim 18 on appeal. Even assuming that the cutting of the lids
from the strip of Parafilm™ M laboratory film in Hartle somehow
broadly corresponds to appellant’s step of “ablating a
Appeal No. 2005-0558
Application No. 10/280,994
Page 5
predetermined area of a sheet, wherein the predetermined area of
the sheet is located according to the location of the opening in
the seed coat” as in claim 18, it is abundantly clear to us that
Hartle does not then position the sheet or strip on the
manufactured seed to substantially center the predetermined area
over the opening in the seed coat such that the embryo is located
below the predetermined area, and attach the sheet or strip to
the manufactured seed to seal the opening, as additionally
required in claim 18. In Hartle, it is the lids (274) that are
cut from the sheet or strip of Parafilm™ M laboratory film and
subsequently positioned over the opening in the seed coat of the
manufactured seed and attached to form the end seal for the
manufactured seed.
As appellant has noted in the reply brief (page 3), if
ablating the predetermined area of the sheet or strip is
accomplished by cutting, as the examiner suggests, then the
predetermined area is a hole and positioning the sheet or strip
on the manufactured seed to substantially center the
predetermined area over the opening in the seed coat such that
the embryo is located below the predetermined area, and attaching
the sheet to the manufactured seed cannot possibly “seal” the
Appeal No. 2005-0558
Application No. 10/280,994
Page 6
opening in the seed coat of the manufactured seed, as required in
claim 18.
Moreover, if it is the examiner’s view that the lids (274)
of Hartle correspond to “the sheet” set forth in appellant’s
claim 18, then we note that the examiner has not established that
the lids (274) cut from the strip of Parafilm™ M laboratory film
have a predetermined area that is ablated, as required in step
(b) of claim 18.
In light of the foregoing, we find that the examiner has not
established a prima facie case of anticipation with regard to
claim 18, and claims 19 and 20 which depend therefrom, and thus
conclude that the examiner’s rejection of claims 18 through 20
under 35 U.S.C. § 102(b) based on Hartle will not be sustained.
Appeal No. 2005-0558
Application No. 10/280,994
Page 7
The examiner’s decision rejecting claims 18 through 20,
accordingly, is reversed.
REVERSED
CHARLES E. FRANKFORT )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
CEF/lbg
Appeal No. 2005-0558
Application No. 10/280,994
Page 8
WEYERHAEUSER COMPANY
INTELLECTUAL PROPERTY DEPT., CH 1J27
P.O. BOX 9777
FEDERAL WAY, WA 98063