Appeal No. 96-3690
Application 08/234,516
similarity in the composition of the claimed oriented polypropylene film to that disclosed by
Isaka, a person having ordinary skill in the art would have expected that Isaka’s packaging
material would have the same or similar properties to that asserted by appellants. Moreover,
even assuming that appellants have discovered an unexpected property of the packaging
material defined in their claims, this, in and of itself, is not enough to make the claimed subject
matter unobvious. In re Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir.
1990). Appellants must establish (i) that there is a difference between the results obtained for
the claimed method and that of Isaka and (ii) that the difference is significant and would not
have been expected by one of ordinary skill in the art. In re Freeman, 474 F.2d 1318, 1324,
177 USPQ 139, 143 (CCPA 1973); In re D*Ancicco, 439 F.2d 1244, 1248, 169 USPQ 303,
306 (CCPA 1971).
Appellants point to Example 3 in the specification as showing that a polypropylene film
blended with alpha-pinene does not function effectively as odor barrier to toluene when
compared to films comprising polypropylene mixed with beta-pinene and d-limonene.
Appellants’ claim 14 states that the polyterpene is “present in an amount sufficient to act as
an effective odor and flavor barrier when blended with polypropylene.” The “odor and flavor”
referred to in the claim is not limited to toluene, but to aromatic oils. On page 3 of the
specification, appellants state that
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