`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`CONOPCO, INC. dba UNILEVER
`Petitioner
`v.
`THE PROCTER & GAMBLE COMPANY
`Patent Owner
`
`_____________________
`
`CASE IPR: Unassigned
`_____________________
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,974,569 UNDER 35 U.S.C. §§ 311-319 and
`37 C.F.R. §§ 42.1-.80, 42.100-.123
`
`
`
`
`
`
`
`
`
`
`
`
`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`
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`

`

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`
`
`
`
`
`
`VI.
`VII.
`VIII.
`
`B.
`
`C.
`D.
`
`E.
`F.
`
`TABLE OF CONTENTS
`PETITION FOR INTER PARTES REVIEW OF ............................................................................. i
`U.S. PATENT NO. 6,974,569 UNDER 35 U.S.C. §§ 311-319 and ................................................ i
`37 C.F.R. §§ 42.1-.80, 42.100-.123 ................................................................................................. i
`I.
`INTRODUCTION .............................................................................................................. 1
`II.
`OVERVIEW ....................................................................................................................... 1
`III.
`GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)); PROCEDURAL
`STATEMENTS................................................................................................................... 2
`IV. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ......................................................... 2
`V.
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE REASONS
`THEREFOR (37 C.F.R. § 42.22(a)) ................................................................................... 3
`CLAIM CONSTRUCTION ................................................................................................ 3
`PERSON OF ORDINARY SKILL IN THE ART & STATE OF THE ART .................... 5
`IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b))....................................... 6
`A.
`Ground 1: Claims 1-9, 11, 12, 15, 17, 18, 19, 23, 26, 28-30, and 32
`Are Anticipated by Kanebo. ................................................................................... 7
`Ground 2: Claims 1-12, 15, 17-22, 28-30 and 32 Would Have Been
`Obvious to a POSA Over Kanebo. ....................................................................... 17
`Ground 3: Claim 13 would have been Obvious over Kanebo and Liu ................. 23
`Ground 4: Claims 14 and 16 would have been Obvious over Kanebo
`and Cardin. ............................................................................................................ 25
`Ground 5: Claim 27 would have been Obvious over Kanebo and Evans ............. 26
`Ground 6: Claims 31 and 33 would have been obvious over Kanebo in
`view of Schwen and Gibson ................................................................................. 27
`Ground 7: Claims 1-12, 15, 17-23, 29, 30 and 32 are Anticipated by
`Reid ....................................................................................................................... 29
`Ground 8: Claims 1-12, 15, 17-23, 29, 30 and 32 Would Have Been
`Obvious Over Reid ............................................................................................... 37
`Ground 9: Claim 13 would have been Obvious over Reid and Liu ...................... 39
`Ground 10: Claims 14-16 Would Have Been Obvious Over Reid and
`Cardin .................................................................................................................... 39
`Ground 11: Claims 24-25 would have been Obvious over Reid in view
`of Coffindaffer ...................................................................................................... 41
`Ground 12: Claims 31 and 33 Would Have Been Obvious Over Reid,
`Schwen and Gibson............................................................................................... 42
`
`K.
`
`L.
`
`G.
`H.
`
`I.
`
`J.
`
`ii
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`

`

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`
`
`K.
`
`L.
`
`M.
`
`N.
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`O.
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`Ground 13: Claims 1-12, 15, 17-19, 21-23, and 26-33 Would Have
`Been Obvious Over Bowser in View of Evans ..................................................... 43
`Ground 14: Claim 13 would have been Obvious over Bowser, Evans
`and Liu .................................................................................................................. 54
`Ground 15: Claims 14 and 16 would have been Obvious over Bowser,
`Evans and Cardin .................................................................................................. 55
`Ground 16: Claims 24-25 would have been obvious over Bowser,
`Evans, and Coffindaffer ........................................................................................ 56
`Ground 17: Claims 31 and 33 would have been obvious over Bowser
`in view of Evans, Schwen and Gibson.................................................................. 57
`Objective Indicia of Nonobviousness ............................................................................... 58
`IX.
`CONCLUSION ................................................................................................................. 60
`X.
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a)) ............................................ 1
`
`
`iii
`
`

`

`
`
`I.
`
`INTRODUCTION
`
`
`
`
`
`CONOPCO, INC'S ("Petitioner") Petition for Inter Partes Review ("Petition")
`
`seeks cancellation of claims 1-33 ("challenged claims") of U.S. Pat. No. 6,974,569
`
`to Dunlop et al. ("the '569 patent") (UNL 1001), which is owned by the Procter &
`
`Gamble Company ("P&G").
`
`II. OVERVIEW
`
`As shown herein, the challenged claims of the ‘569 patent should never have
`
`been issued because they are unpatentable over the art cited herein. Because
`
`Petitioner is at a minimum reasonably likely to prevail in showing unpatentability,
`
`the Petition should be granted and trial instituted on all of the challenged claims.
`
`The '569 patent is an attempt to re-claim known shampoo compositions by
`
`claiming index values allegedly achieved by the claimed formulations. The
`
`claimed index values are allegedly related to the conditioning and anti-dandruff
`
`properties of the claimed compositions. But the claimed compositions were well
`
`known. The law is clear that discovering new properties of an old composition
`
`does not make the composition once again patentable. The compositions claimed
`
`in the '569 patent were in the prior art and should have remained there.
`
`Petitioner is reasonably likely to prevail in showing anticipation and/or
`
`obviousness over the prior art. Inter partes review of the '569 patent should be
`
`instituted.
`
`1
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`

`

`
`
`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)); PROCEDURAL
`
`
`
`
`
`STATEMENTS
`
`Petitioner certifies that (1) the '569 patent is available for IPR; and (2)
`
`Petitioner is not barred or estopped from requesting IPR of any claim of the '569
`
`patent on the grounds identified herein. This Petition is filed in accordance with 37
`
`CFR § 42.106(a). Concurrently filed herewith are a Power of Attorney and Exhibit
`
`List pursuant to § 42.10(b) and § 42.63(e), respectively. The required fee is paid
`
`through online credit card payment. The Office is authorized to charge fee
`
`deficiencies and credit overpayments to Deposit Acct. No. 19-0036 (Customer ID
`
`No. 45324).
`
`IV. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1))
`
`Each Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) is: CONOPCO, INC.
`
`DBA UNILEVER; UNILEVER, PLC; UNILEVER NV.
`
`Petitioner Provides Notice of Related Matters (37 C.F.R. § 42.8(b)(2)):
`
`Judicial matters: None. Administrative matters: In Petitions filed concurrently
`
`herewith, Petitioner seeks IPR of (i) U.S. Pat. No. 6,451,300 and (ii) U.S. Pat. No.
`
`6,649,155, each issuing from distinct applications filed on the same day and
`
`claiming priority to distinct applications filed on the same day, over references
`
`including those cited herein.
`
`Designation of Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)):
`
`2
`
`

`

`
`
`
`
`
`
`
`Lead Counsel
`Eldora L. Ellison (Reg. No. 39,967)
`STERNE, KESSLER, GOLDSTEIN &
`FOX P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`202.772.8508 (telephone)
`202.371.2540 (facsimile)
`eellison-PTAB@skgf.com
`
`Back-Up Counsel
`Robert Greene Sterne (Reg. No. 28,912)
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`202.772.8555 (telephone)
`202.371.2540 (facsimile)
`rsterne-PTAB@skgf.com
`
`Petitioner Provides Notice of Service Information (37 C.F.R. §
`
`42.8(b)(4)): Please direct all correspondence to lead counsel at the above address.
`
`Petitioner consents to email service at: eellison-PTAB@skgf.com and rsterne-
`
`PTAB@skgf.com.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`V.
`REASONS THEREFOR (37 C.F.R. § 42.22(a))
`Petitioner requests IPR and cancellation of claims 1-33. Petitioner's full
`
`statement of the reasons for the relief requested is set forth in § VIII below.
`
`VI. CLAIM CONSTRUCTION
`
`Under 37 C.F.R. § 42.100(b), the challenged claims must be given their
`
`broadest reasonable interpretations ("BRI") in light of the patent specification.
`
`The BRI of
`
`the claim
`
`term "bioavailability/coverage
`
`index value"
`
`encompasses results from skin disk diffusion assays that were well known by May
`
`3, 1999, the earliest possible priority date ("EPD"). (See UNL 1023, 1337-1340;
`
`UNL 1020, 4:53-56.) The '569 patent discloses a testing method where skin disks
`
`treated with shampoo compositions are contacted with agar plates and the average
`
`3
`
`

`

`
`
`area colonized on the plate is assessed, a method comparable to skin disk diffusion
`
`
`
`
`
`tests known in the art. (UNL 1001, 34:42-36:10; UNL 1003, ¶17.)
`
`The BRI of the claim term "first conditioning index value" encompasses
`
`results from combing force assays that known by the EPD . (See UNL 1021, 25:36-
`
`61.) The '569 patent discloses a testing method where the force needed to pull a
`
`comb through a swatch of hair is measured by a force transducer, a method
`
`comparable to combing force tests known in the art. (UNL 1001, 37:31-38:58;
`
`UNL 1003, ¶18.)
`
`The BRI of the claim term "second conditioning index value" encompasses
`
`results from clean hair feel assays that were known by the EPD. (See UNL 1021,
`
`22:12-44.) The '569 patent discloses a testing method where a panel of testers
`
`evaluates the clean hair feel of swatches of hair by touch, a method comparable to
`
`clean hair feel tests known in the art. (UNL 1001, 40:28-42:11; UNL 1003, ¶19.)
`
`The BRI of the claim term "minimal inhibitory concentration index value"
`
`encompasses results from minimal inhibitory concentration ("MIC") assays that
`
`were well known in 1999. (See UNL 1020, 6:59-7:17.) The '569 patent discloses a
`
`standard MIC assay for determining the minimal concentration at which an agent
`
`prevents antimicrobial growth. (UNL 1001, 42:50-43:11; UNL 1003, ¶20.)
`
`The BRI for the claim term "anti-dandruff particulate is a zinc salt of 1-
`
`hydroxy-2-pyridinethione" encompasses "zinc pyrithione." The '569 patent states
`
`4
`
`

`

`
`
`that
`
`
`
`
`
`the preferred anti-dandruff agent
`
`is
`
`the zinc salt of 1-hydroxy-2-
`
`pyridinethione, which is "(known as 'zinc pyridinethione' or 'ZPT')." (UNL 1001,
`
`16:55-59.) The Example formulations use the term "zinc pyrithione" and state in a
`
`footnote "ZPT having an average particle size of 2.5 μm…." (UNL 1001, 32:30-51,
`
`fn. 4.) Thus, the '569 patent uses the terms "zinc salt of 1-hydroxy-2-
`
`pyridinethione," "ZPT," and "zinc pyrithione" as all referring to the same
`
`compound. (UNL 1003, ¶21.)
`
`All other terms of all challenged claims are presumed to take on their
`
`ordinary and customary meanings.
`
`VII. PERSON OF ORDINARY SKILL IN THE ART & STATE OF THE
`ART
`
`
`A person of ordinary skill in the art (“POSA”) is presumed to be aware of all
`
`pertinent art, thinks along conventional wisdom in the art, and is a person of
`
`ordinary creativity. With respect to the '569 patent, a POSA would have had
`
`knowledge of the scientific literature concerning use of surfactants as conditioners,
`
`as of 1999. A POSA as of 1999 would typically have (i) a Ph.D. or M.S. degree in
`
`pharmacy, physical chemistry (colloidal chemistry), chemistry or biochemistry (or
`
`a related field) with at least a 2-3 years of experience in the development of
`
`shampoo and conditioner formulations, or (ii) a B.S. in pharmacy, chemistry or
`
`biochemistry (or a related field) with significant practical experience (4 or more
`
`years) in the development of shampoo and conditioner formulations. A POSA may
`
`5
`
`

`

`
`
`work as part of a multi-disciplinary team and draw upon not only his or her own
`
`
`
`
`
`skills, but also take advantage of certain specialized skills of others in the team, to
`
`solve a given problem. For example, a formulator, a colloidal chemist and a
`
`surfactant specialist might be part of the team. (UNL 1003, ¶12.)
`
`Anti-dandruff shampoos having good conditioning properties were known
`
`before 1999. Anti-dandruff agents, such as ZPT, had already been formulated into
`
`conditioning shampoos, as evidenced by the disclosures of, for example, Kanebo,
`
`Bowser and Evans. The process of formulating a conditioning anti-dandruff
`
`shampoo was also well understood by 1999. (UNL 1003, ¶23.)
`
`
`
`As evidenced by the references described herein, as of May 3, 1999, the
`
`earliest possible priority date of the '569 patent, the subject matter claims in claims
`
`1-33 were well known to a POSA.
`
`VIII. IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b))
`
`IPR of the challenged claims of the '569 patent is requested on the grounds
`
`for unpatentability listed in the index below. Per 37 C.F.R. § 42.6(d), copies of the
`
`references are filed herewith. In support of
`
`the proposed grounds for
`
`unpatentability, this Petition is accompanied by a declaration of technical expert
`
`Mr. Arun Nandagiri (UNL 1003), which explains what the prior art would have
`
`conveyed to a POSA.
`
`Grounds 35 U.S.C. Index of Reference(s)
`1
`§102(b) Kanebo
`
`'569 Patent Claims
`1-9, 11, 12, 15, 17, 18,
`
`6
`
`

`

`'569 Patent Claims
`19, 23, 26, 28-30, and 32
`1-12, 15, 17-22, 28-30
`and 32
`13
`Kanebo and Liu
`14, 16
`Kanebo and Cardin
`27
`Kanebo and Evans
`Kanebo, Schwen and Gibson 31, 33
`Reid
`1-12, 15, 17-23, 29, 30
`and 32
`1-12, 15, 17-23, 29 and
`32
`13
`14-16
`24, 25
`31 and 33
`1-12, 15, 17-19, 21-23,
`and 26-33
`13
`14, 16
`24, 25
`
`Kanebo
`
`Reid
`
`Reid and Liu
`Reid and Cardin
`Reid and Coffindaffer
`Reid, Schwen and Gibson
`Bowser and Evans
`
`Bowser, Evans and Schwen
`Bowser, Evans and Cardin
`Bowser, Evans and
`Coffindaffer
`Bowser, Evans, Schwen and
`Gibson
`
`31, 33
`
`
`
`Grounds 35 U.S.C. Index of Reference(s)
`
`
`
`
`
`§103
`
`§103
`§103
`§103
`§103
`§102(b)
`
`§103
`
`§103
`§103
`§103
`§103
`§103
`
`§103
`§103
`§103
`
`§103
`
`2
`
`3
`4
`5
`6
`7
`
`8
`
`9
`10
`11
`12
`13
`
`14
`15
`16
`
`17
`
`
`
`
`
`A. Ground 1: Claims 1-9, 11, 12, 15, 17, 18, 19, 23, 26, 28-30, and 32
`Are Anticipated by Kanebo.
`Japanese Appl. No. 08/019,389 to Kanebo, Ltd. was laid-open on July 22,
`
`1997 as Laid-Open No. 09/188,614A (“Kanebo”)1. (UNL 1005, certified English
`
`language translation provided as UNL 1006.) Kanebo qualifies as prior art to the
`
`
`
`1 Kanebo was cited during prosecution of the '569 patent in an IDS filed 6-
`
`17-2005, but only an English language abstract was provided.
`
`7
`
`

`

`
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`‘569 patent under 35 U.S.C. § 102(b) because it published more than one year prior
`
`
`
`
`
`to the EPD of the '569 patent.
`
`As shown herein, each and every element of Claims 1-9, 11, 12, 15, 17-18,
`
`23, 26, 28-30, and 32 is disclosed in the shampoo composition in Example 10 of
`
`Kanebo, arranged as claimed, so as to enable a POSA to make and use the claimed
`
`compositions without engaging in undue experimentation in light of the general
`
`knowledge available in the art. (UNL 1003, ¶44.)
`
`The '569 patent
`1. A shampoo
`composition comprising:
`
`The '569 patent
`29. A shampoo
`composition comprising:
`
`a) from about 5% to
`about 50%, by weight, of
`an anionic surfactant;
`
`a) from about 10% to about
`25%, by weight, of an
`anionic surfactant;
`
`b) from about 0.01% to
`about 10%, by weight, of
`a non-volatile
`conditioning agent;
`
`c) from about 0.1% to
`about 4%, by weight, of
`an anti-dandruff
`
`b) from about 0.01% to
`about 5%, by weight of the
`composition, of an
`insoluble, non-volatile
`silicone conditioning
`agent;
`c) from about 0.3% to
`about 2%, by weight of the
`composition, of a zinc salt
`of 1-hydroxy-2-
`
`Disclosure of Kanebo
`"Example 10 (Anti-
`dandruff shampoo2) (in
`%)3" (UNL 1006, [0037])
`Example 10:
`"Ammonium lauryl
`sulphate [an anionic
`surfactant] 10.0 [%]"
`(UNL 1006, [0037])
`Example 10: "Dimethyl
`polysiloxane [a
`conditioning agent]
`(10,000 cSt; 25ºC) 5.0
`[%]" (UNL 1006, [0037])
`
`Example 10: "Zinc
`pyrithione 0.5 [%]"
`(UNL 1006, [0037])
`
`
`2 As used herein, boldface type in claim chart is added emphasis.
`
`3 All concentrations in Kanebo are % by weight. See UNL 1006, ¶[0003].
`
`8
`
`

`

`
`
`
`
`
`
`
`The '569 patent
`particulate;
`d) from about 0.02% to
`about 5%, by weight, of a
`cationic polymer;
`
`The '569 patent
`pyridinethione;
`d) from about 0.1% to
`about 1.0%, by weight of
`the composition, of a
`cationic polymer;
`
`e) water;
`
`e) water;
`
`Disclosure of Kanebo
`
`Example 10: "Cationized
`cellulose derivative
`(Trade name: Catinal
`HC-200 manufactured by
`Toho Kagaku Kogyo) 1.0
`[%]" (UNL 1006, [0037])
`Example 10: "Water…"
`(UNL 1006, [0037])
`Example 10: "Ethylene
`glycol dimyristate 2.0
`[%]" (UNL 1006, [0037])
`
`
`
`f) from about 0.1% to
`about 10%, by weight of
`the composition, of a
`suspending agent;
`wherein said
`composition:
`i. has a
`bioavailability/coverage
`index value, of at least
`about 1.25; ii. has a first
`conditioning index value,
`of less than or equal to
`about 1.0; iii. has a
`second conditioning
`index value, of at least
`about 1.5; and iv. has a
`minimal inhibitory
`concentration index
`value, of at least about
`0.125.
`
`See discussion below
`
`wherein said composition:
`i. has a
`bioavailability/coverage
`index value, as defined
`herein, of at least about
`1.5; ii. has a first
`conditioning index value,
`as defined herein, of less
`than or equal to about 0.96;
`iii. has a second
`conditioning index value,
`as defined herein, of at
`least about 1.5; and iv. has
`a minimal inhibitory
`concentration index value,
`as defined herein, of at
`least about 0.25.
`Kanebo inherently discloses "an anti-dandruff particulate": Example 10
`
`of Kanebo discloses a shampoo composition containing 0.5% zinc pyrithione.
`
`(UNL 1006, 11:24-30.) A POSA would have understood that zinc pyrithione, a
`
`9
`
`

`

`
`
`well-known antidandruff agent, was necessarily in particulate form, as zinc
`
`
`
`
`
`pyrithione is water-insoluble and thus always in particulate form in shampoo
`
`compositions. (UNL 1003, ¶48.) Titanium Metals Corp. of Am. v. Banner, 778
`
`F.2d 775, 782 (Fed. Cir. 1985). Thus, Kanebo inherently discloses an anti-dandruff
`
`particulate as recited in claim 1.
`
`Kanebo Discloses the Components Recited: Example 10 of Kanebo
`
`discloses a shampoo formulation having all of the components recited in claims 1
`
`and 29. The '569 patent discloses that ammonium lauryl sulphate is an anionic
`
`surfactant. (See UNL 1001, 4:19 and 5:21.) The terms "sulfate" and "sulphate" are
`
`well-known alternative spellings for the same chemical moiety: SO4. (UNL 1003,
`
`¶47.) The '569 patent states that: "[n]on-volatile polyalkylsiloxane fluids that may
`
`be used include, for example, low molecular weight polydimethylsiloxanes" and
`
`lists silicones such as polydimethyl siloxane as preferred conditioning agents.
`
`(UNL 1001, 7:13 and 9:38-47.) A POSA would have understood that dimethyl
`
`polysiloxane, as taught by Kanebo, is an alternative chemical name for
`
`polydimethyl siloxane and that both names refer to the same chemical compound.
`
`(UNL 1003, ¶47.) A POSA would have also understood that cationized cellulose
`
`Catinal HC-200 disclosed by Kanebo is a cationic polymer. (UNL 1003, ¶47.)
`
`Kanebo Discloses Concentrations Falling In the Claimed Ranges: As
`
`shown in the claim chart above, each component in the shampoo composition in
`
`10
`
`

`

`
`
`Example 10 of Kanebo falls within the claimed concentration range for each of the
`
`
`
`
`
`corresponding elements in claims 1 and 29. As such, the shampoo composition of
`
`Kanebo meets the concentration range limitations of each of the components
`
`recited in claims 1 and 29. (UNL 1003, ¶46.)
`
`All of the elements recited in claims 1 and 29 are set forth in a single
`
`example, Example 10, in Kanebo. Thus, all of the elements are disclosed in
`
`Kanebo arranged as claimed. A POSA would have also found the disclosure of
`
`Kanebo to be enabling, as methods of making shampoo compositions were well
`
`known. For example, a method for making a conditioning shampoo is disclosed in
`
`Evans (WO 97/14405; UNL 1010, discussed in Ground 5) that is very similar to
`
`the method described in the ‘569 patent. (UNL 1010, 27: Examples, and UNL
`
`1001, 32:35-47; UNL 1003, ¶49.)
`
`Kanebo inherently discloses the index values recited in Claims 1-9 and 29:
`
`It is well established that "the discovery of a previously unappreciated property of
`
`a prior art composition, or of a scientific explanation for the prior art's functioning,
`
`does not render the old composition patentably new to the discoverer." Atlas
`
`Powder Co. v. Ireco, Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999); see also,
`
`Titanium Metals, 778 F.2d 775, 782. As shown in the claim charts above, Example
`
`10 of Kanebo shows that the shampoo compositions of claims 1 and 29 are old
`
`formulations. The claiming of specific index values for these claimed formulations
`
`11
`
`

`

`
`
`does not impart patentability onto the claims. Kanebo discloses a shampoo
`
`
`
`
`
`formulation containing components in concentrations that fall within ranges recited
`
`in claims 1 and 29. The shampoo composition of Example 10 of Kanebo must
`
`necessarily have the index values recited in these claims. Claims 2-9 depend from
`
`claim 1 but only recite different index values and do not add any components to or
`
`change any concentrations of the shampoo composition of claim 1. So, Example 10
`
`of Kanebo must also necessarily have the index values recited in claims 2-9. (UNL
`
`1003, ¶¶50-51.) Thus, the index values of claims 1-9 and 19 of the '569 patent are
`
`inherently disclosed in Kanebo.
`
`The '569 Patent
`11. A shampoo composition
`according to claim 1, wherein
`said non-volatile conditioning
`agent is a silicone.
`12. A shampoo composition
`according to claim 1, wherein
`said anti-dandruff particulate is a
`zinc salt of 1-hydroxy-2-
`pyridinethione.
`15. A shampoo composition
`according to claim 1, comprising
`from about 0.3% to about 2% of
`said anti-dandruff particulate.
`17. A shampoo composition
`according to claim 1, comprising
`from about 0.1% to about 1% of
`said cationic polymer.
`18. A shampoo composition
`according to claim 1, wherein
`
`Disclosure in Kanebo
`Example 10: "Dimethyl polysiloxane (10,000
`cSt; 25ºC) 5.0 [%]" (UNL 1006, [0037])
`
`Example 10: "Zinc pyrithione 0.5 [%]" (UNL
`1006, [0037])
`
`
`Example 10: "Zinc pyrithione 0.5 [%]" (UNL
`1006, [0037])
`
`Example 10: "Cationized cellulose derivative
`(Trade name: Catinal HC-200 manufactured by
`Toho Kagaku Kogyo) 1.0 [%]" (UNL 1006,
`[0037])
`Example 10: "Cationized cellulose derivative
`(Trade name: Catinal HC-200 manufactured by
`
`12
`
`

`

`
`
`said cationic polymer is selected
`from the coup [sic] consisting of
`guar derivatives, cellulose
`derivatives, and mixtures thereof.
`19. A shampoo composition
`according to claim 18, wherein at
`least one of said guar derivatives
`is guar hydroxypropyltrimonium
`chloride.
`23. A shampoo composition
`according to claim 18, wherein at
`least one of said cellulose
`derivatives is polyquaternium-10.
`26. A shampoo composition
`according to claim 1, wherein
`said composition further
`comprises from about 0.005% to
`about 1.5%, by weight of the
`composition, of a polyalkylene
`glycol corresponding to the
`formula:
`
`
`
`a) wherein R is selected from the
`group consisting of hydrogen,
`methyl and mixtures thereof, and
`b) wherein n is an integer having
`an average value from about
`1,500 to about 120,000.
`28. A shampoo composition
`according to claim 26,
`comprising from about 0.05% to
`about 1.0%, by weight of the
`composition, of said polyalkylene
`glycol.
`30. A method for providing anti-
`dandruff efficacy and for
`
`
`
`
`
`Toho Kagaku Kogyo) 1.0 [%]" (UNL 1006,
`[0037])
`
`Kanebo discloses: "Guar gum
`hydroxypropyltrimethylammonium
`chloride ether." (UNL 1006, ¶[0031] fn. *2)
`
`Example 10: "Cationized cellulose derivative
`(Trade name: Catinal HC-200 manufactured by
`Toho Kagaku Kogyo) 1.0 [%]" (UNL 1006,
`[0037])
`Example 10: "Highly polymerized
`polyethylene glycol (Trade name: Polyox
`WSR-301; manufactured by UCC) 0.1 [%]
`(UNL 1006, [0037])
`
`
`Example 10: "Highly polymerized
`polyethylene glycol (Trade name: Polyox
`WSR-301; manufactured by UCC) 0.1 [%]
`(UNL 1006, [0037])
`
`
`"The anti-dandruff shampoo of the above
`composition was prepared … and evaluation
`
`13
`
`

`

`
`
`
`
`
`
`conditioning hair comprising:
`a) wetting said hair with water,
`b) applying to said hair an
`effective amount of a shampoo
`composition according to claim
`1; and
`c) rinsing said shampoo
`composition from said hair using
`water.
`32. A method for regulating the
`growth of the hair comprising:
`a) wetting said hair with water;
`b) applying to said hair an
`effective amount, of a shampoo
`composition according to claim
`12;
`c) rinsing said shampoo
`composition from said hair using
`water.
`Claims 11, 15, 17, 18 and 28: As shown in the claim charts and for the
`
`was conducted for its spreadability and running
`of the fingers through the hair upon
`application, usability upon rinsing…." (UNL
`1006, [0037])
`"the hair was washed followed by rinsing."
`(UNL 1006, [0021])
`
`"The anti-dandruff shampoo of the above
`composition was prepared … and evaluation
`was conducted for its spreadability and running
`of the fingers through the hair upon
`application, usability upon rinsing…." (UNL
`1006, [0038])
`"the hair was washed followed by rinsing."
`(UNL 1006, ¶[0021])
`
`reasons discussed for claims 1 and 29 above, Kanebo discloses all of the elements
`
`of claims 11, 15, 17, 18 and 28, arranged as claimed. (UNL 1003, ¶¶ 54-55, 58-71.)
`
`Claim 10: Example 10 of Kanebo discloses ethylene glycol dimyristate. The
`
`'569 patent states that: "[p]referred acyl derivative suspending agents for use herein
`
`are glyceryl esters…." (UNL 1001, 26:30-31.) A POSA would have understood
`
`that ethylene glycol dimyristate falls within the definition of a suspending agent in
`
`the '569 patent. (UNL 1003, ¶53.)
`
`Claim 12: As discussed in Section VI, the BRI for "1-hydroxy-2-
`
`14
`
`

`

`
`
`pyridinethione" encompasses zinc pyrithione. And a POSA would have understood
`
`
`
`
`
`that the two terms are synonyms. (UNL 1003, ¶56.)
`
`Claim 19: Claim 19
`
`recites
`
`that
`
`the guar derivative
`
`is guar
`
`hydroxypropyltrimonium chloride. Kanebo discloses the cationized derivative guar
`
`gum hydroxypropyltrimethylammonium chloride ether, which is a synonym for
`
`guar hydroxypropyltrimonium chloride. (UNL 1006, [0031], fn. *2; UNL 1003,
`
`¶64.) Kanebo also discloses that "it is preferred to use a cationic polymer such as
`
`cationized cellulose derivative, cationized guar gum derivative . . . ." (UNL 1006,
`
`[0014].) A POSA would have understood that Kanebo discloses use of guar
`
`hydroxypropyltrimonium chloride as a cationic polymer. Thus, the limitations of
`
`claim 19 would have been disclosed to a POSA, arranged as claimed. And a POSA
`
`would have been able to make and use the claimed compositions without engaging
`
`in undue experimentation in light of the general knowledge available in the art,
`
`because
`
`it
`
`is
`
`clear
`
`from
`
`the
`
`disclosure
`
`of Kanebo
`
`that
`
`guar
`
`hydroxypropyltrimonium chloride was a cationic polymer contemplated for use in
`
`the shampoo compositions taught by Kanebo. (UNL 1003, ¶¶64-65.)
`
`Claim 23: Claim 23 recites that the cellulose derivative is polyquaternium-
`
`10. A POSA would have understood that Catinal HC-200 disclosed in Kanebo is a
`
`polyquaternium-10, as evidenced by U.S. Patent 7,481,846, to Marsh which states:
`
`"Polyquaternium-10, such as the products sold under the name . . . Catinal HC-
`
`15
`
`

`

`
`
`200" (UNL 1007, 23:60-63; UNL 1003, ¶¶66-67.) In re Donohue, 766 F.2d 531
`
`
`
`
`
`(Fed. Cir. 1985).
`
`Claim 26: Claim 26 recites a polyakylene glycol where n is an integer
`
`having an average value from about 1,500 to about 120,000. Kanebo discloses the
`
`polyalkylene glycol WSR301. The '569 patent states "PEG 90M, wherein R is
`
`hydrogen and n has an average value of about 90,000 (e.g. Polyox WSR® 301…)"
`
`(UNL 1001, 28:41-42) Thus, Kanebo discloses the polyalkylene glycol of claim
`
`26. (UNL 1003, ¶¶68-69.) See Titanium Metals, 778 F.2d 775, 782.
`
`Claims 30 and 32: Claims 30 and 32 recite “a) wetting said hair with water.”
`
`While Kanebo does not explicitly disclose “wetting” of hair with water, it discloses
`
`that the shampoo was evaluated by applying it to the hair and rinsing. (UNL 1006,
`
`[0038].) Kanebo also discloses test methods in which "the hair was washed
`
`followed by rinsing." (UNL 1006, [0021].) A POSA would have understood that
`
`when the shampoos disclosed in Kanebo are used to wash hair, the hair is
`
`necessarily wetted with water, that the shampoo is applied, and that the hair is
`
`rinsed with water. (UNL 1003, ¶¶72-73.) Thus, the limitations in claim 30 and 32
`
`are inherent in the disclosure of Example 10.
`
`Kanebo Anticipates Claims 1-9, 11, 12, 15, 17-19, 23, 26, 28-30, and 32:
`
`As shown above, each and every element of claims 1-9, 11-12, 15, 17-19, 23, 26,
`
`28-30, and 32, arranged as claimed, is disclosed in at least Example 10 of Kanebo.
`
`16
`
`

`

`
`
`As confirmed by Mr. Nandagiri, when viewed in light of the general knowledge in
`
`
`
`
`
`the field, Kanebo sets forth the elements of claims 1-9, 11-12, 15, 17-19, 23, 26,
`
`28-30, and 32 in a sufficient manner such that a POSA could have made the
`
`shampoo composition without engaging in undue experimentation. (UNL 1003,
`
`¶44.) Thus, these claims are anticipated by Kanebo.
`
`B. Ground 2: Claims 1-12, 15, 17-22, 28-30 and 32 Would Have Been
`Obvious to a POSA Over Kanebo.
`Kanebo is discussed in Ground 1 above. Claims 1-12, 15, 17-26, 28-30, 32-
`
`33 would have been obvious to a POSA over the teachings of Kanebo alone. And
`
`as discussed in Section IX, there are no indicia of nonobviousness of record that
`
`would be sufficient to overcome the teachings of Kanebo. As discussed above
`
`under Ground 1, Kanebo discloses each and every limitation of claims 1-9, 11-12,
`
`15, 17-18, 23, 26, 28-30, and 32 of the '569 patent, either expressly or inherently.
`
`But if the Board were to find that index values recited in claims 1-9 and 29 are not
`
`inherent in the teachings of Kanebo, claims 1-9, 11-12, 15, 17-18, 23, 26, 28-30,
`
`and 32 would have been obvious to a POSA over Kanebo alone. As shown below,
`
`claims 10 and 19-22 also would have been obvious to a POSA over Kanebo alone.
`
`Claims 1-9, 11-12, 15, 17-19, 23, 26, 28-30, and 32: As shown in Ground 1,
`
`Kanebo discloses each and every limitation of claims 1-9, 11-12, 15, 17-19, 23, 26,
`
`28-30, and 32. As discussed above, Kanebo inherently discloses the index values
`
`recited in claims 1-9 and 29. But even if Kanebo were found to not have inherently
`
`17
`
`

`

`
`
`disclosed the claimed index values, the claimed index values would have been
`
`
`
`
`
`obvious to a POSA. (UNL 1003,¶74.)
`
`As discussed above in Section VI, the tests needed to obtain the claimed
`
`index values were all well known in the art. (UNL 1003, ¶17-20.) If the Board
`
`were to find that the shampoo formulation of Example 10 of Kanebo does not meet
`
`one of the claimed index values, a POSA would have had a reasonable expectation
`
`of success in arriving at a shampoo that met all four index values without undue
`
`experimentation. (UNL 1003, ¶76.) Shampoo compositions having the claimed
`
`components at concentrations within the claimed ranges were known in the art. It
`
`has long been the law that "where the general conditions of a claim are disclosed in
`
`the prior art, it is not inventive to discover the optimum or workable ranges by
`
`routine experimentation." In re Aller, 220 F.