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`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
`
`U.S. Patent No. 6,649,155
`_____________________
`
`Inter Partes Review Case No. Unassigned
`_____________________
`
`DECLARATION OF ARUN NANDAGIRI
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`

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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`
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`TABLE OF CONTENTS
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`
`Introduction ......................................................................................................................... 4
`I.
`My Background and Qualifications .................................................................................... 5
`II.
`List of Documents I Considered in Formulating My Opinion ............................................ 7
`III.
`Person of Ordinary Skill in the Art ..................................................................................... 9
`IV.
`The '155 Patent Specification ........................................................................................... 10
`V.
`The Claims of the '155 patent ........................................................................................... 11
`VI.
`State of the Art as of May 3, 1999 .................................................................................... 13
`VII.
`VIII. Summary Chart of Analysis Over the Art......................................................................... 18
`IX.
`Basis of my Analysis with Respect to Anticipation.......................................................... 18
`X.
`The Basis of my Analysis with Respect to Obviousness .................................................. 19
`XI.
`Ground 1: Each and Every Element of Claims 1-5, 7, 9-11, 19, 20 and 22 of the '155
`Patent Is Set Forth in Bowser............................................................................................ 20
`XII. Ground 2: Claims 1-5, 7, 9-11, 19, 20 and 22 Would Have Been Obvious Over Bowser 38
`XIII. Ground 3: Claims 1-11, 19, 20 and 22 Would Have Been Obvious Over Bowser and
`Cardin ................................................................................................................................ 41
`XIV. Ground 4: Claims 1-5, 7, 9-11 and 19-23 Would Have Been Obvious Over Bowser,
`Schwen and Gibson........................................................................................................... 46
`XV. Ground 5: Each and Every Element of Claims 1-5, 7, 9-13, 19, 20 and 22 of the '155
`Patent Is Set Forth in Reid ................................................................................................ 48
`XVI. Ground 6: Claims 1-5, 7, 9-13, 19, 20 and 22 Would Have Been Obvious Over Reid .... 67
`XVII. Ground 7: Claims 1-5, 7, 9-13, 19, 20 and 22 Would Have Been Obvious Over Reid and
`Bowser .............................................................................................................................. 69
`XVIII. Ground 8: Claims 1-13, 19, 20 and 22 Would Have Been Obvious Over Reid and Cardin
`........................................................................................................................................... 71
`XIX. Ground 9: Claims 1-5, 7, 9-13 and 19-23 Would Have Been Obvious Over Reid, Schwen
`and Gibson ........................................................................................................................ 73
`XX. Ground 10: Claims 1-5, 7, 9-20 and 22 Would Have Been Obvious Over Evans............ 74
`XXI. Ground 11: Claims 1-5, 7, 9-20 and 22 Would Have Been Obvious Over Evans and
`Bowser .............................................................................................................................. 86
`XXII. Ground 12: Claims 1-20 and 22 Would Have Been Obvious Over Evans and Cardin .... 87
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`XXIII. Ground 13: Claims 1-5, 7 and 9-23 Would Have Been Obvious Over Evans , Schwen and
`Gibson ............................................................................................................................... 89
`XXIV. Objective Indicia of Nonobviousness ............................................................................... 90
`XXV. Conclusion ........................................................................................................................ 93
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`I.
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`I, Arun Nandagiri, hereby declare as follows.
`
`Introduction
`I am over the age of eighteen (18) and otherwise competent to make
`1.
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`this declaration.
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`2.
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`I have been retained as an expert witness on behalf of CONOPCO,
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`INC. dba UNILEVER for the above-captioned inter partes review (IPR). I am
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`being compensated for my time in connection with this IPR at my standard legal
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`consulting rate, which is $290 per hour. I understand that the petition for inter
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`partes review involves U.S. Patent No. 6,649,155 ("the '155 patent"), UNL1001,
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`which resulted from U.S. Application No. 09/558,466 ("the '466 application"),
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`filed on April 25, 2000, and alleging a priority date of May 3, 1999. The '155
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`patent names David Scott Dunlop and Vincente Eduardo Leyba as inventors. The
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`'155 patent issued on November 18, 2003, from the '466 application. I further
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`understand that, according to the USPTO records, the '155 patent is currently
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`assigned to the Procter & Gamble Company ("P&G").
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`3.
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`In preparing this Declaration, I have reviewed the '155 patent and
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`considered each of the documents cited herein, in light of general knowledge in the
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`art. In formulating my opinions, I have relied upon my experience, education and
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`knowledge in the relevant art. In formulating my opinions, I have also considered
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`the viewpoint of a person of ordinary skill in the art ("POSA") (i.e., a person of
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`ordinary skill in the field of shampoos and conditioners, defined further below in
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`Section IV) prior to May 3, 1999.
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`II. My Background and Qualifications
`I am an expert in the field of shampoos and conditioners, including
`4.
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`anti-dandruff conditioning shampoos. I have more than 30 years' experience in
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`formulating shampoos and conditioners and have been personally involved in the
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`formulation of hundreds of hair care products. I received my Masters of Science
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`degree in Pharmacy from Andhra University, India where master's thesis was
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`entitled "Manufacture of Antibiotics." Additionally, I received my Masters of
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`Science degree in Pharmacy Administration from Brooklyn College of Pharmacy
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`in 1972. From 1970-1972, I was an aerosol chemist at Block Drug company, where
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`I worked with aerosol shampoos and hairsprays.
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`5.
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`From 1972 to 1975, I was a Senior Scientist for the Hair Care and
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`Antiperspirants division of Beecham, Inc. From 1975 to 1982, I was Group Leader
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`of the Hair Care and Antiperspirants division of Shulton, Inc. At both of these
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`positions, I was involved in formulating shampoos and conditioners, and was
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`involved in selecting formulation components and testing of conditioning
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`properties. As a Group Leader at Shulton, I also had a group of formulation
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`chemists reporting to me.
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`6.
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`From 1982 to 1989 I was Director of Research and Development for
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`Playtex-Jhirmack, Inc. As Director, I created, planned, delegated and coordinated
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`all research and development activities for the U.S. and Canadian markets. I was
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`actively involved in formulating all types of hair care products, including
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`shampoos and conditioners. In my role in creating shampoo and conditioner
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`formulations, I was involved in determining which components to use in the
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`formulations and at what concentrations. At Playtex-Jhirmack, I worked with anti-
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`dandruff shampoos, including shampoos containing zinc pyrithione and coal tar.
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`7.
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`In 1989 I joined Helene Curtis Industries, Inc., which was acquired by
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`Unilever in 1996. I was Director of the Hair Care Research and Development
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`division of Helene Curtis, and then Unilever, from 1989 to 2000. In this position, I
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`managed and directed all development products in hair shampoos, conditioners and
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`other hair products. I coordinated research activities associated with hair care
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`products and managed a staff of up to 40 scientists, stylists and administrators. I
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`also interacted with research and development personnel to create shampoo and
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`conditioning formulations. I also was involved with research and formulation of
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`anti-dandruff shampoos.
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`8.
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`From 2000 to 2003 I was Director of Hair Care Projects of Unilever
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`de Argentina. In this position, I was on a global team managing Unilever's hair
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`care products around the world. I successfully expanded Unilever's hair care
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`market share in Latin America and established an independently functioning
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`research team.
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`9.
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`In 2003 I founded Bria Research Labs, a personal care consulting and
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`contract business. Bria Research Labs provides hair care product development and
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`testing services to the personal care industry. I am actively in charge of all of the
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`activities of Bria Research Labs, which include: developing customized shampoo
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`and conditioner formulations; substantiating product claims via hair swatch testing;
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`salon testing of products; providing small scale manufacturing on site; and
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`supporting large scale manufacturing. As founder of Bria, I have been involved in
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`multiple projects formulating shampoos and conditioners from scratch in order to
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`meet client needs. I personally formulated hundreds of shampoo and conditioner
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`formulations and also developed several test methods to evaluate the performance
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`of these products in the laboratory and salon.
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`10. Accordingly, I am an expert in the field of shampoos and conditioners
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`and I was an expert in this field prior to May 3, 1999. My full background is
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`detailed in my curriculum vitae. (UNL 1004).
`
`III. List of Documents I Considered in Formulating My Opinion
`In formulating my opinion, I have considered
`the following
`11.
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`documents:
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`Unilever
`Exhibit #
`1001
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`1002
`1003
`1004
`1005
`1006
`1007
`1008
`1009
`
`1010
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`1011
`1012
`
`1013
`1014
`
`1015
`
`1016
`1017
`1018
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`Description
`
`Dunlop et al., U.S. Patent No. 6,649,155, “Anti-dandruff and
`conditioning shampoos containing certain cationic polymers,”
`(filed April 25, 2000; issued November 18, 2003)
`File history of U.S. Patent No. 6,649,155
`Declaration of Arun Nandagiri
`Curriculum Vitae of Arun Nandagiri
`Intentionally left blank
`Intentionally left blank
`Intentionally left blank
`Intentionally left blank
`Bowser et al., U.S. Patent No. 5,723,112, “Pyrithione containing
`hair treatment composition,” (filed July 9, 1996; issued March 3,
`1998)
`Evans et al., WO 97/14405, “Conditioning shampoos containing
`polyalkylene glycol,” (filed October 15, 1996; issued April 24,
`1997)
`Intentionally left blank
`Bartolo et al., U.S. Patent No. 5,202,048, “Personal cleansing
`product with odor compatible bulky amine cationic polymer with
`reduced odor characteristics,” (filed December 30, 1991; issued
`April 13, 1993)
`Intentionally left blank
`Cardin et al., U.S. Patent No. 5,104,645, “Antidandruff shampoo
`compositions,” (filed February 2, 1990; issued April 14, 1992)
`Schwen et al., WO 95/03319, “Cyproterone Acetate Thioacetate,”
`(filed July 13, 1994; issued on February 2, 1995)
`Intentionally left blank
`Intentionally left blank
`Reid et al., U.S. Patent No. 5,085,857, “Conditioning shampoo
`comprising a surfactant, a non-volatile silicone oil and guar
`hydroxypropyltromium chloride as a cationic conditioning
`polymer,” (filed December 3, 1990; issued February 4, 1992)
`
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`Description
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`Drakoff, U.S. Patent No. 3,964,500, “Lustering shampoo
`containing a polysiloxane and a hair-bodying agent,” (filed June
`18, 1975; issued June 22, 1976)
`Intentionally left blank
`Intentionally left blank
`Intentionally left blank
`Intentionally left blank
`Intentionally left blank
`Intentionally left blank
`Intentionally left blank
`Somasundaran et al., WO 96/03972, “Deposition of materials to
`surfaces using zwitterionic carrier particles,” (filed July 8, 1995;
`issued February 15, 1996)
`Intentionally left blank
`Arch Chemicals ZPTdata spec. sheet, 3 pages
`Gibson, U.S. Patent No. 5,015,470, “Cosmetic composition,”
`(filed December 17, 1987; issued May 14, 1991)
`21 C.F.R § 355.710 FDA HHS Final Rule: Active ingredients for
`the control of dandruff, seborrheic dermatitis, or psoriasis Federal
`Register I Vol. 56, No. 233
`Geary et al., European Patent No. EP 1 513 458, “Composition
`containing a cationic polymer with a high charge density and a
`conditioning agent,” (filed June 10, 2003; issued May 4, 2011)
`
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`Unilever
`Exhibit #
`1019
`
`1020
`1021
`1022
`1023
`1024
`1025
`1026
`1027
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`1028
`1029
`1030
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`1031
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`1032
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`IV. Person of Ordinary Skill in the Art
`I understand that a person of ordinary skill in the art is one who is
`12.
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`presumed to be aware of all pertinent art, thinks along conventional wisdom in the
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`art, and is a person of ordinary creativity. A person of ordinary skill in the art
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`("POSA") of anti-dandruff conditioning shampoos would have had knowledge of
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`the scientific literature concerning use of surfactants as conditioners, as of 1999. A
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`Declaration of Arun Nandagiri (UNL1003)
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`POSA as of 1999 would typically have (i) a Ph.D. or M.S. degree in pharmacy,
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`physical chemistry (colloidal chemistry), chemistry or biochemistry (or a related
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`field) with at least a 2-3 years of experience in the development of shampoo and
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`conditioner formulations, or (ii) a B.S. in pharmacy, chemistry or biochemistry (or
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`a related field) with significant practical experience (4 or more years) in the
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`development of shampoo and conditioner formulations. A POSA may work as part
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`of a multi-disciplinary team and draw upon not only his or her own skills, but also
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`take advantage of certain specialized skills of others in the team, to solve a given
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`problem. For example, a formulator, a colloidal chemist and a surfactant specialist
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`be part of the team.
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`V.
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`The '155 Patent Specification
`13. This declaration is being submitted together with a petition for inter
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`partes review of claims 1-23 of the '155 patent.
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`14.
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`I have considered the disclosure and file history of the '155 patent in
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`light of general knowledge in the art as of the earliest alleged priority date of the
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`'155 patent, May 3, 1999.
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`15. The
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`'155 patent is directed to anti-dandruff and conditioning
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`shampoos containing cationic guar derivatives. UNL1001, Abstract. The '155
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`patent alleges that the shampoo compositions "provide a superior combination of
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`anti-dandruff efficacy and conditioning…." UNL1001, Abstract. The '155 patent
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`states that:
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`Disclosed are shampoo compositions that provide a
`superior combination of anti-dandruff efficacy and
`conditioning, and a method of cleansing and conditioning
`the hair comprising applying to the hair an effective
`amount of said compositions. The anti-dandruff and
`conditioning shampoos comprise: (A) from about 5% to
`about 50%, by weight of the composition, of an anionic
`surfactant; (B) from about 0.01% to about 10%, by
`weight of the composition, of a non-volatile conditioning
`agent; (C) from about 0.1% to about 4%, by weight of the
`composition, of an anti-dandruff particulate; (D) from
`about 0.02% to about 5%, by weight of the composition,
`of a cationic guar derivative; (i) wherein said cationic
`guar derivative has a molecular weight from about
`50,000 to about 700,000; and (ii) wherein said cationic
`guar derivative has a charge density from about 0.05
`meq/g to about 1.0 meq/g; and (E) water.
`
`UNL1001, Abstract.
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`VI. The Claims of the '155 patent
`16. Claim 1 of the '155 patent is directed to:
`1. A shampoo composition comprising:
`a) from about 5% to about 50%, by weight of the
`composition, of an anionic surfactant;;
`b) from about 0.01% to about 10%, by weight of the
`composition, of a non-volatile conditioning agent;
`c) from about 0.1% to about 4%, by weight of the
`composition, of an anti-dandruff particulate;
`d) from about 0.02% to about 5%, by weight of the
`composition, of a cationic guar derivative;
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`i) wherein said cationic guar derivative has a molecular
`weight from about 50,000 to about 700,000; and
`ii) wherein said cationic guar derivative has a charge
`density from about 0.05 meq/g to about 1.0 meq/g;
`e) water.
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`17. Claims 5 and 19 recite that the "anti-dandruff particulate is a zinc salt
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`of 1-hydroxy-2-pyridinethione." It is clear from the specification of the '155 patent
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`and the use of this term in the art that a zinc salt of hydroxy-2-pyridinethione is
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`equivalent to "zinc pyrithione". For example, the '155 patent states that the
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`preferred anti-dandruff agent is the zinc salt of 1-hydroxy-2-pyridinethione, which
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`is "(known as 'zinc pyridinethione' or 'ZPT')." UNL1001, 17:17-24. The Example
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`formulations use the term zinc pyrithione and state in a footnote "ZPT having an
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`average particle size of 2.5 μm, available from Arch/Olin." UNL1001, 33:35-47,
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`fn. 3. When referring to the anti-dandruff agent later in the '155 patent, the term
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`"zinc pyrithione" is used. The '155 patent states: "[i]t is also contemplated that
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`when the anti-dandruff particulate employed is zinc pyrithione, and/or if other
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`optional hair growth regulating agents are employed, the shampoo compositions of
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`the present invention, may, provide for the regulation of growth of the hair."
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`UNL1001, 32:41-45. Thus, the '155 patent uses the terms "zinc salt of 1-hydroxy-
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`2-pyridinethione," "ZPT," and "zinc pyrithione" as all referring to the same
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`chemical compound.
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`18. Any term I have not expressly defined above, I have given its plain
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`and ordinary meaning under a broadest reasonable claim construction.
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`VII. State of the Art as of May 3, 1999
`19. Anti-dandruff shampoos having good conditioning properties were
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`known before 1999. Anti-dandruff agents, such as ZPT, had already been
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`formulated into conditioning shampoos, as evidenced by the disclosures of, for
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`example, Bowser (UNL1009), Reid (UNL1018) and Evans (UNL1010).
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`20. The process of formulating a conditioning anti-dandruff shampoo was
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`well understood by 1999. Conditioning hair requires depositing a cationic polymer
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`along the length of the anionically charged hair shaft in an amount sufficient to
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`make the hair feel conditioned without causing the hair to feel unclean. Effective
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`conditioning while maintaining a good clean feeling is often accomplished by
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`using cationic conditioning polymers with molecular weights ("MWs") less than
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`700,000 g/mol1.
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`21. Treating the hair and scalp for dandruff requires depositing an
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`antimicrobial agent, such as ZPT, along the length of the hair shaft and on the
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`scalp. The anti-dandruff agents approved for use in the U.S. in 1999, including
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`ZPT, are insoluble and must be suspended in formulations to allow for their
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`deposition on the hair and scalp. See, e.g., Bowser. UNL1009, 1:15-2:25. It was
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`1 All molecular weights referred to are in g/mol unless otherwise noted.
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`known as of 1999 that water soluble cationic deposition aids could be used to
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`Declaration of Arun Nandagiri (UNL1003)
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`enhance the deposition of insoluble anti-dandruff agents on the hair and scalp. See,
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`e.g., Bowser, UNL1009, 4:62-67.
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`22.
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`It was also well known in 1999 to use coacervate conditioning
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`systems to deliver both conditioners and anti-dandruff agents to the hair and scalp.
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`Coacervate silicone polymer systems have been used in shampoos since at least
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`1976. See UNL1019, 3:11-18. Bowser discloses coacervate system shampoos that
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`contain an anionic surfactant, a non-volatile conditioning agent, an anti-dandruff
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`particulate and a cationic polymer, such as a cationic guar gum derivative.
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`UNL1009: 8:25-34; 8:44-48; 8:49-51. Reid also discloses disclose coacervate
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`system shampoos that contain an anionic surfactant, a non-volatile conditioning
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`agent, an anti-dandruff particulate and a cationic polymer, such as a cationic guar
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`gum derivative. UNL1018: 5:10-18, 8:11-21. Evans additionally discloses
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`coacervate system shampoos that contain an anionic surfactant, an insoluble
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`silicone conditioning agent, an anti-dandruff agent and a cationic polymer, such as
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`a cationic guar gum derivative. UNL1010, 3, 11, 24, 25, 27 and 32.
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`23.
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`It was further well known by 1999 to use polyalkylene glycols to
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`enhance the spreadability of shampoos on the hair. For example, Evans teaches:
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`"[i]t has also been found that these selected polyalkylene glycols, when added to a
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`silicone-containing shampoo composition, enhance spreadability of the shampoo
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`compositions in hair. Enhanced spreading of the shampoo composition during
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`application provides consumers with a perception of enhanced conditioning
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`performance." UNL1010, 19. Additionally, as demonstrated in Cardin, it was well
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`known to use polyalkylene glycols in anti-dandruff shampoos to increase the
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`antidandruff efficacy of ZPT. UNL1014, 8:12-30.
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`24. Exemplary relevant art that was published before May 3, 1999
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`includes the references described below.
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`25. Bowser. Bowser is U.S. Patent No. 5,723,112. Bowser was filed July
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`9, 1996 and issued March 3, 1998. Bowser is entitled "Pyrithione Containing Hair
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`Treatment." Bowser discloses shampoo compositions containing an anionic
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`surfactant, a non-volatile conditioning agent, an anti-dandruff particulate, a
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`cationic polymer, such as a cationic guar derivative, and water. UNL1009: 6:36 to
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`7:19; 8:25-27; 8:44-48; 8:49-51; and 4:12-15. Bowser teaches that "particularly
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`suitable [cationic polymer guar gum derivative] materials include Jaguar C15,
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`Jaguar C17, Jaguar C16, and Jaguar C162." UNL1009, 5:26-28. Bowser also
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`discloses optionally containing "foam boosters." UNL1009: 6:21-31. A POSA
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`would have recognized that the class of foam boosters disclosed by Bowser
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`includes poylalkylene glycols.
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`26. Reid. Reid is U.S. Patent No. 5,085,857. Reid was filed December 3,
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`1990 and issued February 5, 1992. Reid is entitled "Conditioning shampoo
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`comprising
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
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`a
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`surfactant,
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`a
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`non-volatile
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`silicone
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`oil
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`and
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`guar
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`hydroxypropyltrimonium chloride as a cationic conditioning polymer." Reid
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`discloses shampoo compositions containing an anionic surfactant, a non-volatile
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`conditioning agent, a cationic guar derivative as a cationic polymer, and water.
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`UNL1018, 8:11-21. Reid teaches that suitable cationic guar gum derivatives
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`include Jaguar C15, Jaguar C17, Jaguar C16, and Jaguar C162. UNL1018, 3:9-28.
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`Reid also teaches shampoo compositions containing anti-dandruff particulates.
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`UNL1018, 5:10-18. Reid also discloses shampoo compositions containing "foam
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`boosters." UNL1018, 5:10-18. A POSA would have recognized that the class of
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`foam boosters disclosed by Reid includes poylalkylene glycols.
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`27.
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` Evans. Evans is International Patent Application Publication WO
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`97/14405, published on April 24, 1997. Evans was filed October 15, 1996 and
`
`claims priority to U.S. Patent Application No. 08/543,665, which was filed
`
`October 16, 1995. Evans is entitled "Conditioning Shampoos Containing
`
`Polyalkylene Glycol." Evans discloses a hair conditioning shampoo containing 5 to
`
`30% of an anionic surfactant, 1 to 10% of an insoluble silicone conditioning agent
`
`and a polyalkylene glycol with an average n value of from 1,500 to 25,000.
`
`UNL1010, 3, 11, 32. Evans also discloses optional anti-dandruff agents such as
`
`pyridinethione salts at concentrations of 0.1% to 0.4% and cationic polymers as
`
`conditioning agents. UNL1010, 24 and 27.
`
`
`
`16
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`

`
`
`
`
`28. Cardin. Cardin is U.S. Patent No. 5,104,645. Cardin was filed
`
`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
`
`February 2, 1990 and issued April 14, 1992. Cardin is entitled "Antidandruff
`
`Shampoo Compositions." Cardin discloses anti-dandruff shampoos containing
`
`pyridinethione salts, including zinc pyridinethione. UNL1014, 6:4-26. Cardin
`
`discloses that "[t]he pyridinethione salts useful herein take the form of water-
`
`insoluble flat platelet particles which have a mean sphericity of less than about
`
`0.65, preferably from about 0.20 to about 0.54, and a median particle size of from
`
`about 2 u to about 15 u, preferably from about 5 u to about 9 u, the particle size
`
`being expressed as the median equivalent diameter of a sphere of equal volume."
`
`UNL1014, 6:24-36.
`
`29. Schwen. Schwen is International Publ. No. WO 95/003319. Schwen
`
`was filed July 13, 1994 and published February 2, 1995. Schwen is entitled
`
`"Cyproterone acetate thioacetate." Schwen discloses shampoos and conditioners
`
`containing the hair growth agents cyproterone acetate, minoxidil and finerastide.
`
`UNL1015, 3:4-5, 5:30-31, 11:4-25; 14:12-15.
`
`30. Gibson. Gibson is U.S. Patent No. 5,015,470. Gibson was filed
`
`December 17, 1987 and issued May 14, 1991. Gibson is entitled "Cosmetic
`
`Composition." Gibson discloses shampoos containing the hair growth agents
`
`minoxidil and zinc gluconate. UNL 1030, Abstract, 10:39-47, 19:20-22.
`
`
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`17
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`

`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
`
`
`
`
`VIII. Summary Chart of Analysis Over the Art
`Ground Reference
`1
`Bowser
`2
`Bowser
`3
`Bowser and Cardin
`4
`Bowser, Schwen and Gibson
`5
`Reid
`6
`Reid
`7
`Reid and Bowser
`8
`Reid and Cardin
`9
`Reid, Schwen and Gibson
`10
`Evans
`11
`Evans and Bowser
`12
`Evans and Cardin
`13
`Evans, Schwen and Gibson
`
`Claims
`1-5, 7, 9-11, 19, 20 and 22
`1-5, 7, 9-11, 19, 20 and 22
`1-11, 19, 20 and 22
`1-5, 7, 9-11 and 19-23
`1-5, 7, 9-13, 19, 20 and 22
`1-5, 7, 9-13, 19, 20 and 22
`1-5, 7, 9-13, 19, 20 and 22
`1-13, 19, 20 and 22
`1-5, 7, 9-13 and 19-23
`1-5, 7, 9-20 and 22
`1-5, 7, 9-20 and 22
`1-20 and 22
`1-5, 7 and 9-23
`
`
`
`IX. Basis of my Analysis with Respect to Anticipation
`It is my understanding that a reference anticipates a claim if it
`31.
`
`discloses each and every element recited in the claim, arranged as in the claim, so
`
`as to enable one of skill in the art to make and use the claimed invention without
`
`the need for undue experimentation in light of the general knowledge available in
`
`the art. The factors that I have considered in determining whether a reference sets
`
`forth the elements of a claim in a sufficient manner such that a POSA could have
`
`readily made and used the claimed invention include: the breadth of the claim, the
`
`nature of the invention, the state of the prior art, the level of one of ordinary skill,
`
`
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`18
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`

`
`
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`the level of predictability in the art, the amount of direction provided by the
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
`
`reference, the existence of working examples, and the quantity of experimentation
`
`needed to make or use the invention claimed.
`
`X.
`
`The Basis of my Analysis with Respect to Obviousness
`I understand that an obviousness analysis involves comparing a claim
`32.
`
`to the prior art to determine whether the claimed invention would have been
`
`obvious to a person of ordinary skill in the art in view of the prior art, and in light
`
`of the general knowledge in the art. I also understand when a person of ordinary
`
`skill in the art would have reached the claimed invention through routine
`
`experimentation, the invention may be deemed obvious. I understand that a finding
`
`of obviousness for a specific range or ratio in a patent can be overcome if the
`
`claimed range or ratio is proven to be critical to the performance or use of the
`
`claimed invention.
`
`33.
`
`I also understand that obviousness can be established by combining or
`
`modifying the teachings of the prior art to achieve the claimed invention. It is also
`
`my understanding that where this is a reason to modify or combine the prior art to
`
`arriving at the claimed invention, there must also be a reasonable expectation of
`
`success in so doing. I understand that the reason to combine prior art references
`
`can come from a variety of sources, not just the prior art itself or the specific
`
`problem the patentee was trying to solve. And I understand that the references
`
`
`
`19
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`

`

`
`
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`themselves need not provide a specific hint or suggestion of the alteration needed
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
`
`to arrive at the claimed invention; the analysis may include recourse to logic,
`
`judgment, and common sense available to a person of ordinary skill that does not
`
`necessarily require explication in any reference.
`
`34.
`
`I understand that when considering the obviousness of an invention,
`
`one should also consider whether there are any secondary considerations that
`
`support the nonobviousness of the invention. I understand that secondary
`
`considerations of nonobviousness include failure of others, copying, unexpectedly
`
`superior results, perception in the industry, commercial success, and long-felt but
`
`unmet need.
`
`XI. Ground 1: Each and Every Element of Claims 1-5, 7, 9-11, 19, 20 and 22
`of the '155 Patent Is Set Forth in Bowser
`35. As shown in the claim charts and discussion below, each and every
`
`element of claims 1-5, 7, 9-11, 19, 20 and 22 is disclosed in Bowser and arranged
`
`as claimed. Further, the disclosure of Bowser sets forth the elements shown in the
`
`claim chart in a sufficiently detailed manner such that a person of ordinary skill in
`
`the art could have made and used the claimed composition without undue
`
`experimentation in light of the general knowledge in the art.
`
`36. Claim 1. As shown in the claim chart and explained below, a POSA
`
`reading Bowser would have understood that Bowser discloses a shampoo
`
`
`
`20
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`

`
`
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`composition comprising an anionic surfactant, a non-volatile conditioning agent,
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`Inter Partes Review of USPN 6,649,155
`Declaration of Arun Nandagiri (UNL1003)
`
`an anti-dandruff particulate, a cationic guar gum derivative and water, all at the
`
`concentrations claimed.
`
`'155 patent, Claim 1
`1. A shampoo
`composition
`comprising:
`
`a) from about 5% to
`about 50%, by weight
`of the composition, of
`an anionic surfactant;
`
`b) from about 0.01% to
`about 10%, by weight
`of the composition, of a
`non-volatile
`conditioning agent;
`
`c) from about 0.1% to
`about 4%, by weight of
`the composition, of an
`anti-dandruff
`particulate;
`
`Disclosure of Bowser
`Claim 1 of Bowser recites: "1. An antimicrobial hair
`treatment composition comprising: . . . ." (UNL1009, 8:
`25-26.)
`Claim 5, recites: A composition according to any
`preceding claim, which is [sic.] shampoo
`composition, . . ." (UNL1009, 8: 44-45.) 2
`Claim 1 of Bowser recites: "An antimicrobial hair
`treatment composition comprising: (a) from 0.1 to 50%
`by weight of surfactant; . . . ." (UNL1009, 8:25-27.)
`Claim 5 of Bowser recites: "A composition according to
`any preceding claim, . . . in which at least one
`surfactant is . . . anionic, . . . in a total amount of from
`about 0.5 to 30% by weight . . . ." (UNL1009, 8:44-48.)
`Claim 6 of Bowser recites: "A composition according
`to claim 1, which further comprises a conditioning
`agent selected from volatile and non-volatile silicones."
`(UNL1009, 8:49-51.)
`Bowser states "[s]ilicone oil is a particularly prefer