Appeal No. 96-3690
Application 08/234,516
and that claimed process is substantially similar to that disclosed by Isaka.
Appellants argue that Isaka “provides no guidance to one skilled in the art that the
addition of terpenes to the polypropylene resin provides enhanced odor and flavor barrier
properties to the resulting film product employed in the claimed process” and that the claimed
“method for excluding odors and unwanted flavors from a product is nowhere disclosed or
even suggested by Isaka et al.” (brief: p. 4). We are not persuaded by this argument because
merely discovering and claiming a new benefit of an old process cannot render the process
unobvious over the prior art. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936
(Fed. Cir. 1990); In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548 (CCPA 1970).
Moreover, while Isaka discloses that his packaging composition has excellent heat seal
properties, we agree with the examiner that the retention of fragrance and odor is a property
of interest to Isaka which is to be retained in the improved film. At column 1, lines 20-30, Isaka
states:
In recent years, highly advanced requirements have been made in external
packaging of a variety of products such as foods, tobaccos, industrial goods
and daily miscellaneous goods. In the package of foods, for example,
materials for external packaging are required to be excellent in various
properties such as low moisture permeability, fragrance-retention, insect
proofness and low oxygen-permeability. It is also necessary that the packaging
material forms an adequate heat seal with sufficient adhesion and air tightness
at any piled portion caused by film wrinkling.
It is well settled that a composition and its properties are inseparable. See In re Papesch,
315 F.2d 381, 391, 137 USPQ 43, 51 (CCPA 1963). Accordingly, in view of the substantial
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