IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
`
`
`CONOPCO INC. dba UNILEVER
`Petitioner
`v.
`THE PROCTOR & GAMBLE COMPANY
`Patent Owner
`
`U.S. Patent No. 6,649,155 to Dunlop et al.
`Issue Date: November 18, 2003
`Title: Anti-Dandruff and Conditioning Shampoos Containing
`Certain Cationic Polymers
`
`_____________________
`
`Inter Partes Review No. Unassigned
`_____________________
`
`
`Petition for Inter Partes Review of U.S. Patent No. 6,649,155 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
`
`
`
`
`
`
`
`
`
`
`

`

`TABLE OF CONTENTS
`I.
`INTRODUCTION ........................................................................................ 3
`II. OVERVIEW .................................................................................................. 3
`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)); PROCEDURAL
`STATEMENTS ....................................................................................................... 4
`IV. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) .................................. 4
`V.
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR (37 C.F.R. § 42.22(a)) .................................................. 5
`VI. CLAIM CONSTRUCTION ......................................................................... 5
`VII. PERSON OF SKILL IN THE ART & STATE OF THE ART ................ 6
`VIII. Identification of Challenge (37 C.F.R. § 42.104(b)) ................................... 8
`Ground 1: Claims 1-5, 7, 9-11, 19, 20 and 22 are Anticipated by Bowser ............ 10
`Ground 2: Claims 1-5, 7, 9-11, 19, 20 and 22 Would Have Been Obvious
`Over Bowser ................................................................................................ 22
`Ground 3: Claims 1-11, 19, 20 and 22 Would Have Been Obvious Over
`Bowser and Cardin ...................................................................................... 25
`Ground 4: Claims 1-5, 7, 9-11 and 19-23 Would Have Been Obvious
`Over Bowser, Schwen and Gibson .............................................................. 28
`Ground 5: Claims 1-5, 7, 9-13, 19, 20 and 22 are Anticipated by Reid ................. 31
`Ground 6: Claims 1-5, 7, 9-13, 19, 20 and 22 Would Have Been Obvious
`Over Reid..................................................................................................... 38
`Ground 7: Claims 1-5, 7, 9-13, 19, 20 and 22 Would Have Been Obvious
`Over Reid and Bowser ................................................................................ 40
`Ground 8: Claims 1-13, 19, 20 and 22 Would Have Been Obvious Over
`Reid and Cardin ........................................................................................... 42
`Ground 9: Claims 1-5, 7, 9-13 and 19-23 Would Have Been Obvious
`Over Reid, Schwen and Gibson .................................................................. 44
`Ground 10: Claims 1-5, 7, 9-20 and 22 Would Have Been Obvious Over
`Evans ........................................................................................................... 45
`Ground 11: Claims 1-5, 7, 9-20 and 22 Would Have Been Obvious Over
`Evans and Bowser ....................................................................................... 53
`Ground 12: Claims 1-20 and 22 Would Have Been Obvious Over Evans
`and Cardin ................................................................................................... 55
`Ground 13: Claims 1-5, 7 and 9-23 Would Have Been Obvious Over
`Evans, Schwen and Gibson ......................................................................... 57
`IX. Objective Indicia of Nonobviousness ........................................................ 58
`X. Conclusion ................................................................................................... 60
`CERTIFICATION OF SERVICE (37 C.F.R. §§ 42.6(e), 42.105(a)) ............... 61
`
`- 2 -
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`

`

`
`
`I.
`
`INTRODUCTION
`UNILEVER CORPORATION ("Petitioner") petitions for Inter Partes
`
`Review (IPR), seeking cancellation of claims 1-23 ("challenged claims") of U.S.
`
`Patent No. 6,649,155 to Dunlop et al. ("the '155 patent") (UNL1001), which is
`
`owned by THE PROCTER & GAMBLE COMPANY and directed to "Anti-
`
`dandruff and conditioning shampoos containing certain cationic polymers."
`
`II. OVERVIEW
`As shown herein, the challenged claims of the '155 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 shampoo compositions recited in the claims of the '155 patent are
`
`simply a rebottling or obvious reformulating of known shampoo compositions
`
`containing known components in known amounts, in an attempt to evergreen a
`
`patent family. And the shampoo compositions and components claimed in the '155
`
`patent have properties and uses recognized prior to the earliest possible priority
`
`date (EPD) of the patent. P&G obtained the '155 patent by drafting shampoo
`
`composition claims that purport to be complicated – reciting broad concentration
`
`ranges of 5 or more components. But, the claims of the '155 patent merely recite
`
`- 3 -
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`

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`shampoo compositions that were known or, at best, simple and obvious variations
`
`of known shampoo compositions prior to the EPD of the '155 patent.
`
`Thus, the claims of the '155 patent recite known shampoo compositions
`
`containing known combinations of known components within known ranges. And
`
`the shampoo compositions had properties that were entirely expected prior to the
`
`EPD. Petitioner is reasonably likely to prevail in showing anticipation and
`
`obviousness over the prior art. Inter partes review of the '155 patent should be
`
`instituted.
`
`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)); PROCEDURAL
`STATEMENTS
`Petitioner certifies that (1) the '155 patent is available for IPR and (2)
`
`Petitioner is not barred or estopped from requesting IPR of any claim of the '155
`
`patent. This Petition is filed in accordance with 37 CFR § 42.106(a). Concurrently
`
`filed herewith is a Power of Attorney and an Exhibit List per § 42.10(b) and
`
`§ 42.63(e), respectively. The required fee is paid via 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))
`Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) is: CONOPCO, INC. DBA
`
`UNILEVER; UNILEVER, PLC; UNILEVER NV.
`
`Notice of Related Matters (37 C.F.R. § 42.8(b)(2)): Administrative
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`

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`matters: In Petitions filed concurrently herewith, Petitioner seeks IPR of P&G's (i)
`
`U.S. Pat. No. 6,974,569, and (ii) U.S. Pat. No. 6,451,300, 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)):
`
`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
`
`Notice of Service Information (37 C.F.R. § 42.8(b)(4)): Please direct all
`
`correspondence regarding this Petition to lead counsel at the above address.
`
`Petitioner consents to service by email at: eellison-PTAB@skgf.com and
`
`rsterne-PTAB@skgf.com.
`
`V.
`
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR (37 C.F.R. § 42.22(a))
`
`Petitioner requests IPR and cancellation of claims 1-23. Petitioner's full
`
`statement of the reasons for the relief requested is set forth in detail in § VIII.
`
`VI. CLAIM CONSTRUCTION
`Under 37 C.F.R. § 42.100(b), the challenged claims must be given their
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`broadest reasonable interpretations ("BRI") in light of the patent specification.
`
`The BRI for the claim term "anti-dandruff particulate is a zinc salt of 1-
`
`hydroxy-2-pyridinethione" encompasses "zinc pyrithione". The '155 patent states
`
`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,
`
`17:17-24. 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, 33:35-47,
`
`fn. 3.) When referring to the anti-dandruff agent later in the '155 patent, the term
`
`"zinc pyrithione" is used. (UNL 1001, 28:11-13.) Thus, as confirmed by Mr.
`
`Nandagiri, the '155 patent uses the terms "zinc salt of 1-hydroxy-2-pyridinethione,"
`
`"ZPT," and "zinc pyrithione" as all referring to the same chemical compound.
`
`All other terms of all challenged claims are presumed to take on their
`
`ordinary and customary meanings.
`
`VII. PERSON OF SKILL IN THE ART & STATE OF THE ART
`A person of ordinary skill in the art ("POSA") is one who is presumed to be
`
`aware of all pertinent art, thinks along conventional wisdom in the art, and is a
`
`person of ordinary creativity. A person of ordinary skill in the art of antidandruff
`
`and conditioning shampoos would have had knowledge of the scientific literature
`
`concerning use of surfactants and conditioners as of 1999. A POSA as of 1999
`
`would typically have (i) a Ph.D. or M.S. degree in pharmacy, physical chemistry
`
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`(or a related field) with at least 2 years of experience in the development of
`
`shampoo formulations or (ii) a B.S. in pharmacy, physical chemistry (or a related
`
`field) with significant practical experience (4 or more years) in the development of
`
`shampoo formulations. A POSA may 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 having significant practical experience in the development of
`
`antidandruff and conditioning shampoos, a colloidal chemist and a surfactant
`
`specialist can be part of the team. (UNL1003, ¶12.)
`
`As confirmed by Mr. Nandagiri, anti-dandruff shampoos having good
`
`conditioning properties were known before 1999. (UNL1003, ¶19.) Anti-dandruff
`
`agents, such as ZPT, had already been formulated into conditioning shampoos, as
`
`evidenced by the disclosures of, for example, Bowser (UNL1009), Reid
`
`(UNL1018) and Evans (UNL1010). The process of formulating a conditioning
`
`anti-dandruff shampoo was also well understood by 1999. (UNL1003, ¶20.)
`
`It was also well known in 1999 to use coacervate conditioning systems in
`
`shampoos to deliver both conditioners and anti-dandruff agents to the hair and
`
`scalp. Coacervate silicone polymer systems have been used in shampoos since at
`
`least 1976. See (UNL1019, 3:11-18). Bowser and Reid disclose coacervate system
`
`shampoos that contain an anionic surfactant, a non-volatile conditioning agent,
`
`- 7 -
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`

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`anti-dandruff particulates and a cationic polymer, such as a cationic guar gum
`
`derivative. (UNL1009, 8:25-34; 8:44-48; 8:49-51 and UNL1018, 5:10-18, 8:11-
`
`21.) Evans also discloses coacervate system shampoos that contain an anionic
`
`surfactant, an insoluble silicone conditioning agent, anti-dandruff agent and a
`
`cationic polymer, such as a cationic guar gum derivative (UNL1010, 3, 11, 24, 25,
`
`27 and 32).
`
`As evidenced by the references described herein, prior to May 3, 1999, the
`
`EPD of the '155 patent, the subject matter claimed in claims 1-23 was well known
`
`and would have been obvious to a POSA.
`
`VIII. Identification of Challenge (37 C.F.R. § 42.104(b))
`IPR is requested on the grounds 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 (UNL1003), which explains what the art
`
`would have conveyed to a POSA.
`
`Ground 35 U.S.C.
`1
`§102(b)
`2
`§103
`3
`§103
`4
`§103
`5
`§102(b)
`6
`§103
`7
`§103
`
`'155 patent claims
`Index of Reference(s)
`1-5, 7, 9-11, 19, 20 and 22
`Bowser
`1-5, 7, 9-11, 19, 20 and 22
`Bowser
`1-11, 19, 20 and 22
`Bowser and Cardin
`Bowser, Schwen and Gibson 1-5, 7, 9-11 and 19-23
`Reid
`1-5, 7, 9-13, 19, 20 and 22
`Reid
`1-5, 7, 9-13, 19, 20 and 22
`Reid and Bowser
`1-5, 7, 9-13, 19, 20 and 22
`
`- 8 -
`
`

`

`Ground 35 U.S.C.
`8
`§103
`9
`§103
`10
`§103
`11
`§103
`12
`§103
`13
`§103
`
`
`Index of Reference(s)
`Reid and Cardin
`Reid, Schwen and Gibson
`Evans
`Evans and Bowser
`Evans and Cardin
`Evans, Schwen and Gibson
`
`'155 patent claims
`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
`
`As cited in the context of specific anticipation grounds of unpatentability,
`
`each anticipatory reference discloses each element of the noted claims arranged as
`
`claimed, in a sufficiently detailed manner so as to enable a POSA to practice the
`
`claimed invention without engaging in undue experimentation, in light of the
`
`general knowledge available in the art. In the accompanying Declaration, Mr.
`
`Nandagiri provides a thorough discussion of the state of the art at the time of this
`
`alleged "invention." (UNL1003.) All of the challenged claims lack invention, not
`
`only because shampoo compositions containing combinations of each of the
`
`claimed elements were known, but also because a POSA would have had reason to
`
`prepare the claimed shampoo compositions and perform the claimed methods with
`
`a reasonable expectation of success. And the properties of the shampoo
`
`compositions were neither surprising nor unexpected. (UNL1003.) See Atlas
`
`Powder Co. v. Ireco Inc., 190 F.3d 1342, 1347 (Fed. Cir. 1999).
`
`- 9 -
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`

`

`Ground 1: Claims 1-5, 7, 9-11, 19, 20 and 22 are Anticipated by Bowser
`
`U.S. Patent No. 5,723,112 to Bowser, titled "Pyrithione containing hair
`
`treatment composition" issued March 3, 1998 (UNL1009). Bowser issued more
`
`than one year before the EPD of the '155 patent and qualifies as prior art under 35
`
`U.S.C. §§102(b) and 102(e).
`
`As shown in the following claim charts and discussion herein, each and
`
`every element of claims 1-5, 7, 9-11, 19, 20 and 22 is disclosed in Bowser,
`
`arranged as claimed, so as to enable a POSA to make and use the claimed
`
`invention without undue experimentation in light of the general knowledge
`
`available in the art. (UNL1003, ¶¶35-64.)
`
`'155 patent, Claim 1 '155 patent, Claim 19
`1. A shampoo
`19. A shampoo
`composition
`composition
`comprising:
`comprising:
`
`a) from about 5% to
`about 50%, by
`weight of the
`composition, of an
`anionic surfactant;
`
`a) from about 10% to
`about 25%, by
`weight of the
`composition, of an
`anionic surfactant;
`
`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.) 1
`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
`
`
`1 Emphasis added throughout citations in the document unless otherwise noted.
`
`- 10 -
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`

`

`'155 patent, Claim 1 '155 patent, Claim 19
`
`b) from about
`0.01% to about
`10%, by weight of
`the composition, of
`a non-volatile
`conditioning agent;
`
`b) from about 0.01%
`to about 10%, by
`weight of the
`composition, of an
`insoluble, non-
`volatile silicone
`conditioning agent;
`
`c) from about 0.1%
`to about 4%, by
`weight of the
`composition, of an
`anti-dandruff
`particulate;
`
`c) from about 0.3%
`to about 2%, by
`weight of the
`composition, of a
`zinc salt of 1-
`hydroxy-2-
`pyridinethione;
`
`d) from about
`0.02% to about 5%,
`
`d) from about 0.1%
`to about 5%, by
`
`Disclosure of Bowser
`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 preferred conditioning
`agent." (UNL1009, 4:37-38.)
`Bowser teaches the preparation of a
`shampoo compositions containing
`Dimethicone at 3.34%, 1.7% and 1%,
`w/w. (UNL1009, 6:35 to 7:19.)
`Claim 1 of Bowser recites: "An
`antimicrobial hair treatment composition
`comprising: … (b) from 0.001 to 5% by
`weight of fine particles of an insoluble
`particulate metal pyrithione; . . . ."
`(UNL1009, 8:25-32.)
`Bowser states: "[t]his invention relates
`to antimicrobial hair treatment
`compositions for topical applications to
`human hair for the treatment of, for
`example, dandruff." (UNL1009, 1:6-8.)
`Bowser states: "[i]t has now been found
`that … excellent anti-dandruff activity
`can be obtained by utilizing fine
`particles of insoluble particulate metal
`pyrithione in combination with a
`deposition aid." (UNL1009, 2:26-31.)
`Bowser teaches the preparation of a
`shampoo compositions containing zinc
`pyrithione particulate at 2.08%, and
`1%, w/w. (UNL1009, 6:35 to 7:19.)
`Claim 1 of Bowser recites: "1. An
`antimicrobial hair treatment composition
`
`- 11 -
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`

`

`'155 patent, Claim 1 '155 patent, Claim 19
`by weight of the
`weight of the
`composition, of a
`composition, of a
`cationic guar
`cationic guar
`derivative;
`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;
`
`i) wherein said
`cationic guar
`derivative has a
`molecular weight
`from about 100,000
`to about 400,000;
`and
`ii) wherein said
`cationic guar
`derivative has a
`charge density from
`about 0.4 meq/g to
`about 1.0 meq/g;
`
`e) water.
`
`e) water.
`
`
`
`Disclosure of Bowser
`comprising: (c) from 0.01 to 5% by
`weight of a polymeric, water-soluble
`cationic deposition aid . . . ." (UNL1009,
`8.)
`Claim 4 of Bowser recites: "A
`composition according to claim 1 in
`which the deposition aid is a cationic
`derivative of guar gum . . ."(UNL1009,
`8.)
`Bowser states: "[s]uitable cationic guar
`gum derivatives are those given the
`CTFA designation guar hydroxypropyl
`trimonium chloride, available
`commercially for example as . . .
`JAGUAR C15, having a moderate
`degree of substitution and a low
`viscosity, . . . ." (UNL1009, 5:14-24.)
`Bowser states: "[p]referably the cationic
`charge density of the deposition aid . . . is
`at least 0.1 meq/g, . . . preferably less
`than 2 meq/g. . . . Preferred deposition
`aids are cationic derivatives of guar
`gum, . . . ." (UNL1009, 5:4-13.)
`Bowser states: "[t]he hair treatment
`compositions . . . suitably comprise
`water . . . ." (UNL1009, 4:12-15.)
`
`'155 patent claims
`2. A shampoo composition according to
`claim 1, wherein said composition further
`comprises from about 0.1% to about 10%, by
`weight of the composition, of a suspending
`agent.
`3. A shampoo composition according to
`claim 2, wherein said suspending agent is
`ethylene glycol distearate.
`
`Disclosure of Bowser
`See discussion of claim 1, above.
`Bowser states: "[t]he composition
`may further comprise from 0.1 to 5%
`of a suspending agent." (UNL1009,
`5:31-32.)
`Bowser teaches the preparation of
`shampoo formulations containing
`ethylene glycol distearate at 1.5%,
`1.8% and 2.0% w/w. (UNL1009, 2-5
`
`- 12 -
`
`

`

`'155 patent claims
`
`4. A shampoo composition according to
`claim 1, wherein said non-volatile
`conditioning agent is a silicone.
`5. A shampoo composition according to
`claim 1, wherein said anti-dandruff
`particulate is a zinc salt of 1-hydroxy-2-
`pyridinethione.
`7. A shampoo composition according to
`claim 1, comprising from about 0.3% to
`about 2%, by weight of the composition, of
`said anti-dandruff particulate.
`9. A shampoo composition according to
`claim 1, wherein said cationic guar derivative
`has a charge density from about 0.1 meq/g to
`about 1.0 meq/g.
`10. A shampoo composition according to
`claim 1, wherein said cationic guar derivative
`has a molecular weight from about 50,000 to
`about 300,000.
`11. A shampoo composition according to
`claim 1, comprising from about 0.1% to
`about 1.0% of said cationic guar derivative.
`20. A method for providing anti-dandruff
`efficacy and for 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.
`
`22. A method for regulating the growth of
`the hair comprising:
`a) wetting said hair with water;
`b) applying to said hair an effective amount,
`
`- 13 -
`
`Disclosure of Bowser
`at 5:51 to 7:68.)
`See discussion of claim 1,
`particularly claim 1(b), above.
`
`See discussion of claim 1,
`particularly claim 1(c), above.
`
`See discussion of claim 1,
`particularly claim 1(c), above.
`
`See discussion of claim 1,
`particularly claim 1(d), above.
`
`See discussion of claim 1,
`particularly claim 1(d), above.
`
`See discussion of claim 1,
`particularly claim 1(d), above.
`
`See discussion of claim 1, above.
`Bowser states: "[t]he compositions of
`the invention are preferably rinse-off
`compositions, i.e., suitable for
`applying to the hair and/or scalp, left
`thereon for an appropriate period of
`time and then rinsed off with water.
`Thus, shampoos are a particularly
`preferred product form for
`compositions of the invention."
`(UNL1009, 6:16-20.)
`See discussion of claim 5, above.
`Bowser states: "[t]he compositions of
`the invention are preferably rinse-off
`compositions, i.e., suitable for
`
`

`

`'155 patent claims
`of a shampoo composition according to
`claim 5;
`c) rinsing said shampoo composition from
`said hair using water.
`
`Disclosure of Bowser
`applying to the hair and/or scalp, left
`thereon for an appropriate period of
`time and then rinsed off with water.
`Thus, shampoos are a particularly
`preferred product form for
`compositions of the invention."
`(UNL1009, 6:16-20.)
`
`Bowser inherently discloses the recited cationic guar derivative: Bowser
`
`discloses that the cationic guar derivative JAGUAR C15 is a particularly suitable
`
`component of the shampoo composition. As admitted by P&G in U.S. Patent No.
`
`5,202,048, JAGUAR C15 has a molecular weight of 200,000 ± 75,000. (UNL1012,
`
`7:12-37 (Table 2, footnote 4;UNL1003, ¶37.) Bowser also discloses that the
`
`charge density of the cationic guar gum derivative is "at least 0.1 meq/g, . . .
`
`preferably less than 2 meq/g." UNL1009, 5:4-13. A POSA would have understood
`
`that the disclosure in Bowser of a cationic guar gum derivative having a charge
`
`density of for example, "at least 0.1 meq/g . . . preferably less than 2 meq/g"
`
`constitutes a disclosure of a cationic guar derivative having "a charge density from
`
`about 0.05 meq/g to about 1.0 meq/g."
`
`Bowser discloses that JAGUAR C15 has a moderate degree of cationic
`
`group substitution. (UNL1009, 5:15-28.) Bowser also discloses that JAGUAR C13
`
`and JAGUAR C162 (both having a low degree of cationic group substitution) and
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`JAGUAR C17 (having a high degree of cationic group substitution) suitable
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`components of the shampoo compositions. (UNL1014, 5:26-27; UNL1003, ¶38.)
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`The term “charge density" refers to the ratio of the number of positive charges on a
`
`polymer to the molecular weight of the polymer. As disclosed in P&G European
`
`Patent No. EP1513485 B1, the charge density of JAGUAR 162 and JAGUAR C13,
`
`(each having a low degree of cationic group substitution), is 0.3 and 0.5 meq/gm,
`
`respectively. And the charge density of Jaguar 17 (having a high degree of cationic
`
`group substitution), is 0.9 meq/gm. (UNL1032,3-4.) As such, by having a
`
`moderate degree of cationic substitution, JAGUAR C15 must necessarily have a
`
`charge density between 0.5 and 0.9 meq/g. Thus, as corroborated by disclosure in
`
`P&G's own issued patents, the Jaguar C15 component of the shampoo
`
`compositions have a molecular weight of 200,000 ± 75,000 (i.e., "from about
`
`50,000 to about 700,000") and a charge density of between 0.5 and 0.9 meq/g (i.e.,
`
`"from about 0.05 meq/g to about 1.0 meq/g"). Thus, Bowser inherently discloses
`
`the cationic guar derivative recited in claim 1. Titanium Metals Corp. of Am. v.
`
`Banner, 778 F.2d 775, 782 (Fed. Cir. 1985).
`
`Bowser Discloses the Components Recited: Bowser discloses a shampoo
`
`formulation having all of the components recited in claims 1 and 19. As discussed
`
`above in Section VI, the BRI "1-hydroxy-2-pyridinethione" encompasses zinc
`
`pyrithione. A POSA would have understood that the two terms are synonyms for
`
`the same chemical compound. (UNL1003, ¶17.)
`
`Bowser Discloses Concentrations Falling In the Claimed Ranges: It is "an
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`- 15 -
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`

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`elementary principle of patent law that when, as by a recitation of ranges or
`
`otherwise, a claim covers several compositions, the claim is 'anticipated' if one of
`
`them is in the prior art." Titanium Metals, 778 F.2d 775 at 782 . And in the absence
`
`of extenuating circumstances, a prior art range that overlaps or entirely subsumes a
`
`claimed range anticipates that claimed range. (Id.) ). The Federal Circuit has found
`
`that the patentee must establish that the claimed range was "critical" or that there
`
`was a considerable difference between the range taught in the prior art and the
`
`claimed range. See ClearValue, Inc. v. Pearl River Polymers, 668 F.3d at 1344-45
`
`(Fed. Cir. 2012). P&G cannot show criticality.
`
`The disclosure and prosecution history of the '155 patent fail to establish the
`
`"criticality" of any of the concentration ranges recited for the components of the
`
`claimed shampoo compositions. Likewise, the disclosure and prosecution history
`
`are insufficient to establish a considerable difference at different points between
`
`any of the claimed concentration ranges and the concentration ranges of the
`
`corresponding components in Bowser (or other prior art shampoo compositions
`
`described herein). Indeed, a POSA would have understood the disclosed
`
`concentration ranges of Bowser (to constitute a disclosure of the corresponding
`
`shampoo component ranges recited in the claims of the '155 patent. In view of the
`
`above, a POSA would have understood that the disclosure in Bowser of, for
`
`example, "from 0.1 to 50% by weight of an anionic surfactant" constitutes a
`
`- 16 -
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`

`

`disclosure of "from about 5% to about 50% by weight of an anionic surfactant" as
`
`claimed and the disclosure of for example, "from about 0.001% to 5% by weight"
`
`of particulate metal pyrithione in Bowser, constitutes a disclosure of "from about
`
`0.1% to about 4% by weight" of an anti-dandruff particulate, as claimed. And, a
`
`POSA would have understood that the disclosure in Bowser of for example, "0.01
`
`to 5% by weight" of a cationic deposition aid, such as a cationic guar derivative,
`
`constitutes a disclosure of "from about 0.02% to about 5% by weight," of a cationic
`
`guar derivative. (UNL1003, ¶39.)
`
`Similarly, the disclosure and prosecution history of the '155 patent fail to
`
`establish the criticality of either the molecular weight ranges or the charge density
`
`ranges recited for the cationic guar derivative component of the claimed shampoo
`
`composition. In particular, during prosecution P&G repeatedly argued that the
`
`claimed molecular weight range of the cationic guar derivative is critical, but the
`
`Office correctly found P&G's arguments and supporting Declaration to be
`
`unpersuasive and insufficient to establish this asserted criticality. In particular, the
`
`Office maintained that "Applicant has not show [sic.] data establishing unexpected
`
`and/or unusual results over the teaching ranges." And that the supporting
`
`Declaration was insufficient to overcome the art-based rejection because "it does
`
`not show that the objective evidence of nonobviousness is commensurate with the
`
`teaching range in the prior art." (See, e.g., Reply and Declaration 10/8/02, 2-3;
`
`- 17 -
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`

`

`RCE 10/18/02, 3-4 (UNL1002.)
`
`As such, the existence of extenuating circumstances has not been established
`
`for any of the claimed ranges and accordingly, each shampoo composition range in
`
`Bowser that overlaps with a range recited in the claims of the '155 patent,
`
`anticipates that claimed range. As shown in the claim charts, Bowser discloses
`
`shampoos containing ranges that overlap with the concentration ranges of the
`
`anionic surfactant, anti-dandruff particulate and cationic guar derivative
`
`components of the claimed shampoo compositions. Therefore, each of these recited
`
`ranges is anticipated by the disclosure of Bowser. See, ClearValue, 668 F.3d at
`
`1344-45.
`
`Claims 1 and 19: As set forth in the claim chart and discussion above,
`
`Bowser discloses all of the elements of claims 1 and 19 arranged as claimed.
`
`Moreover, Bowser discloses each of the elements shown in the claim charts in a
`
`sufficiently detailed manner such as to enable a POSA to practice at least one
`
`claimed embodiment without engaging in undue experimentation. (UNL1003,
`
`¶¶35-42, 59-61.) For example, the nature of the invention contains antidandruff
`
`and conditioning shampoos, which the prior art demonstrates as a well-developed
`
`field prior to the EPD. The claims are directed to shampoo compositions
`
`comprising 5 components (i.e., an anionic surfactant; a cationic guar derivative; an
`
`nonvolatile silicone particulate conditioning agent; and a zinc pyridinethione
`
`- 18 -
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`

`

`particulate and water) methods of using these compositions. The state of the art
`
`was also well established with respect to the components of the claimed shampoo
`
`compositions. (UNL1003, ¶¶41-42.) And although the level of skill of a POSA was
`
`high as of the EPD, POSA's routinely formulated and optimized shampoo
`
`compositions, such as antidandruff and conditioning shampoos. No more than
`
`routine experimentation would have been needed to prepare a claimed shampoo
`
`composition (UNL1003, ¶¶41-42.) Additionally, Bowser provides a detailed
`
`disclosure of suitable anionic surfactants, (UNL1009, 3), nonvolatile conditioning
`
`agents (UNL1009, 4), antidandruff particulates, such as zinc pyrithione (UNL1009,
`
`2), and cationic polymer deposition aids (preferably cationic guar derivatives)
`
`(UNL1009, 5). Bowser also provides working examples demonstrating the
`
`preparation of shampoo compositions that display statistically-improved zinc
`
`deposition in a standard deposition test. (UNL1009, 6:65-8:22; UNL1003, ¶41.)
`
`Thus, when viewed in light of the general knowledge in the field, Bowser
`
`sets forth the elements of claims 1 and 19 (as well as claims 2-5, 7, 9-11, 20 and
`
`22) in a sufficient manner such that a POSA would have prepared the claimed
`
`compositions without engaging in undue experimentation. (UNL1003, ¶42.)
`
`Thus, Bowser discloses all of the elements of claims 1 and 19 arranged as
`
`claimed and enabled to a POSA.
`
`- 19 -
`
`

`

`Claims 2-5, 7, 9-11, 20 and 22: Claims 2-5, 7, 9-11, 20 and 22 depend
`
`directly or indirectly, from claim 1, which is anticipated for the reasons discussed
`
`above. Claims 2-5, 7, 9-11, 20 and 22 include additional features that, as shown by
`
`the claim chart and discussion herein, are anticipated by Bowser. (UNL1003, ¶¶43-
`
`58, 62-65.)
`
`Claims 2 and 3: As shown in the claim chart, the shampoo composition of
`
`claim 2 additionally contains 0.1 to 5% of a suspending agent and in the shampoo
`
`composition of claim 3, the suspending agent is ethylene glycol distearate. Bowser
`
`teaches the preparation of shampoo compositions containing ethylene glycol
`
`distearate at 1.5%, 1.8% and 2.0% (UNL1009, 2-5 at 5:51 to 7:68; UNL1003,
`
`¶¶43-46.) Bowser therefore anticipates claims 2 and 3.
`
`Claims 4 an