Appeal No. 96-3690
Application 08/234,516
contrary, we find that Isaka’s disclosure includes d-limonene. Isaka discloses limonene and
this would necessarily, by definition, include the known three forms of limonene, namely, dl-
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limonene (optically inactive), d-limonene and l-limonene. Therefore, we conclude that
limonene as disclosed by Isaka would be suggestive of all forms of limonene, including d-
limonene. As for the mixture of d-limonene and beta-pinene, it would have been prima facie
obvious to combine two ingredients in a polymer, each of which is taught by the prior art to be
useful for the same purpose in the polymer, in order to form another polymer composition
which is to be used for the same purpose. See In re Kerkhoven, 626 E.2d 846, 850, 205
USPQ 1069, 1072 (CCPA 1980). Isaka suggests that either limonene or beta-pinene can be
used for the same purpose, i.e., to improve the properties of the polypropylene film.
Accordingly, a person having ordinary skill in the art would have reasonably expectation that
limonene and beta-pinene could be combined for the same purpose and produce the same
result. In re O*Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988) (for
obviousness under § 103, all that is required is a reasonable expectation of success). Having
concluded that it would have been prima facie obvious to combine limonene and beta-pinene,
we look to any evidence to show that the combination produces unexpected results. On this
record, appellants have not pointed to or made a showing that the combination of d-limonene
and beta-pinene produces a synergistic or unexpected result.
The Merck Index, 10th Edition, Merck & Co., Inc, Rahway, N.J., p. 788, monograph no. 5321 (1983).2
According to the Index, limonene has a pleasant lemon-like odor and can be used as a solvent in the
manufacture of resins.
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