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. 6,451,300 to Dunlop et al.
`Issue Date: September 17, 2002
`Title: Anti-Dandruff and Conditioning Shampoos Containing
`Polyalkylene Glycols and Cationic Polymers
`_____________________
`
`CASE IPR: Unassigned
`_____________________
`
`
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,451,300 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
`INTRODUCTION .......................................................................................... 1
`I.
`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)) ...................................... 3
`V.
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR (37 C.F.R. §42.22(a)) ............................................ 4
`VI. THE '300 PATENT ........................................................................................ 4
`VII. PERSON OF ORDINARY SKILL IN THE ART & STATE OF THE
`ART ................................................................................................................ 6
`VIII. IDENTIFICATION OF CHALLENGE (37 C.F.R. §42.104(b)) ................... 9
`A. Ground 1: Claims 1-5, 11, 13, 16-18, 20 and 25 are
`Anticipated by Kanebo. .......................................................................10
`B. Ground 2: Claims 1-7, 11, 13, 16-18, 20, and 25 Would
`Have Been Obvious to a POSA in View of Kanebo. ..........................19
`C. Ground 5: Claims 1-7, 11-13, 16-20, 24, and 25 would have
`been Obvious over Bowser in View of Evans. ...................................23
`D. Ground 6: Claims 1, 2, 4, 11-13, 16-20, 24, and 25 Would
`Have Been Obvious Over Evans. ........................................................38
`Ground 7: Claims 3, 5, and 8-10 would have been Obvious
`over Evans in View of Coffindaffer. ...................................................46
`Grounds 3 and 8: In View of Cardin, claims 14, 15, and 22
`would have been Obvious over Kanebo (Ground 3) or Evans
`(Ground 8). ..........................................................................................50
`G. Grounds 4 and 9: Claims 21 and 23 would have been
`Obvious over Kanebo (4) or Evans (9) in View of Schwen
`and Gibson. ..........................................................................................52
`IX. OBJECTIVE INDICIA OF NONOBVIOUSNESS ..................................... 56
`XI. CONCLUSION ............................................................................................. 58
`
`
`E.
`
`F.
`
`ii
`
`

`
`I.
`
`INTRODUCTION
`
`CONOPCO, INC. dba UNILEVER's ("Petitioner") Petition for Inter Partes
`
`Review ("Petition") seeks cancellation of claims 1-25 ("challenged claims") of
`
`U.S. Pat. No. 6,451,300 to Dunlop et al., titled "Anti-Dandruff and Conditioning
`
`Shampoos Containing Polyalkylene Glycols and Cationic Polymers" ("the '300
`
`patent"). (UNL 1001.)
`
`II. OVERVIEW
`
`As shown herein, the challenged claims of the '300 patent 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 '300 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 '300
`
`patent have properties and uses recognized prior to the earliest possible priority
`
`date (EPD) of the patent. The Procter & Gamble Company ("P&G") obtained the
`
`'300 patent by drafting shampoo composition claims that purport to be complicated
`
`– reciting broad concentration ranges of several components. But, the claims of the
`
`'300 patent merely recite shampoo compositions, and methods of using them, that
`
`1
`
`

`
`were known or, at best, simple and obvious variations of known shampoo
`
`compositions prior to the EPD of the '300 patent.
`
`The '300 patent's claims relate to anti-dandruff and conditioning shampoos.
`
`P&G purported, during prosecution of the application, that "[b]y using a shampoo
`
`comprising cationic polymer, anti-dandruff particulates and polyalkylene glycol in
`
`particular amounts, the inventors have found that they can provide the conditioning
`
`benefits of a cationic polymer-containing shampoo while still getting adequate
`
`coverage of the anti-dandruff material on the scalp." (UNL 1002, 5:¶4.) But such a
`
`formulation had already been prepared, and all of the components, % ranges, and
`
`properties recited in the claims were well known prior to the EPD of the '300
`
`patent. Thus, the claims of the '300 patent recite shampoo compositions containing
`
`known combinations of components having entirely expected properties, and
`
`known methods of using such compositions.
`
`Petitioner is reasonably likely to prevail in showing anticipation and/or
`
`obviousness over the prior art. Inter partes review of the '300 patent should be
`
`instituted.
`
`III. GROUNDS FOR STANDING (37 C.F.R. §42.104(a)); PROCEDURAL
`STATEMENTS
`
`
`
`Petitioner certifies that (1) the '300 patent is available for IPR; and (2)
`
`Petitioner is not barred or estopped from requesting IPR of any claim of the '300
`
`patent on the grounds identified herein. This Petition is filed in accordance with
`
`2
`
`

`
`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))
`
`Real Parties-In-Interest (37 C.F.R. §42.8(b)(1)) are: CONOPCO, INC.
`
`dba UNILEVER; UNILEVER PLC; and UNILEVER BV.
`
`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. Patent No. 6,649,155 and
`
`(ii) U.S. Patent No. 6,974,569, each issuing from distinct applications filed on the
`
`same day and claiming priority to distinct applications filed on the same day, over
`
`prior art 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
`
`3
`
`

`
`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.
`
`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 1-25 of the '300 patent
`
`based on one or more of the grounds under 35 U.S.C. §§102 and/or 103 set forth
`
`herein. Petitioner's detailed statement of the reasons for the relief requested is set
`
`forth in §VIII below.
`
`VI. THE '300 PATENT
`
`The '300 patent issued on September 17, 2002, and claims benefit to May 3,
`
`1999. According to the USPTO's electronic-assignment records, P&G owns the
`
`'300 patent by assignment. Independent claim 1 recites: "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 at least one cationic polymer; e)
`
`from 0.005% to about 1.5%, by weight of the composition, of a polyalkylene
`
`glycol corresponding to the formula:
`
`4
`
`

`
`
`
`
`
`(i) wherein R is selected from the group consisting of hydrogen, methyl and
`
`mixtures thereof, ii) wherein n is an integer having an average value from about
`
`1,500 to about 120,000; and f) water." (UNL 1001, 33:47-67.)
`
`In accordance with 37 C.F.R. §42.100(b), the challenged claims must be
`
`given their broadest reasonable interpretations ("BRI") in light of the specification
`
`of the '300 patent.
`
`The BRI for the claim term "anti-dandruff particulate is a zinc salt of 1-
`
`hydroxy-2-pyridinethione" encompasses "zinc pyrithione." The '300 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,
`
`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 '300 patent uses the terms "zinc salt of 1-hydroxy-2-
`
`pyridinethione," "ZPT," and "zinc pyrithione" as all referring to the same chemical
`
`compound. (UNL 1003, ¶17.)
`
`All other terms of all challenged claims are presumed to take on their
`
`ordinary and customary meanings.
`
`5
`
`

`
`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. A person of ordinary skill in the art of anti-dandruff (AD)
`
`conditioning shampoos would have had knowledge of the scientific literature
`
`concerning use of surfactants as conditioners, as of May 3, 1999. (UNL 1003, ¶12.)
`
`A POSA as of May 3, 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 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. (UNL 1003, ¶12.) 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. (UNL 1003, ¶12.) For example, a formulator, a
`
`colloidal chemist and a surfactant specialist may be part of the team. (UNL 1003,
`
`¶12.)
`
`Anti-dandruff shampoos having good conditioning properties were known
`
`before May 3, 1999. (UNL 1003, ¶19.) Anti-dandruff agents, such as ZPT, had
`
`already been formulated into conditioning shampoos, as evidenced by the
`
`6
`
`

`
`disclosures of, for example, Kanebo, Bowser and Evans. (UNL 1006, 1009, and
`
`1010, respectively; UNL 1003, ¶19.)
`
`The process of formulating a conditioning anti-dandruff shampoo was well
`
`understood before May 3, 1999. (UNL 1003, ¶20) Conditioning shampoos
`
`typically deposit a cationic polymer along the length of the anionically charged
`
`hair shaft in an amount sufficient to make the hair feel conditioned without causing
`
`the hair to feel unclean. (UNL 1003, ¶20) Effective conditioning while maintaining
`
`a good clean feeling was often accomplished by using cationic conditioning
`
`polymers with molecular weights ("MWs") less than 700,000 g/mol.1 (UNL 1003,
`
`¶20)
`
`Treating the hair and scalp for dandruff involves depositing an antimicrobial
`
`agent, such as ZPT, on the hair and on the scalp. (UNL 1003, ¶21.) Certain anti-
`
`dandruff ("AD") agents, such as ZPT, are insoluble and are generally suspended in
`
`formulations to allow for their deposition on the hair and scalp. (UNL 1009, 1:15-
`
`2:25, UNL 1003, ¶21.) It was known as of the EPD that water soluble cationic
`
`deposition aids could be used to enhance the deposition of insoluble anti-dandruff
`
`agents on the hair and scalp. (UNL 1009, 4:62-67; UNL 1003, ¶21.)
`
`
`1 All molecular weights referred to are in g/mol unless otherwise noted.
`
`7
`
`

`
`It was also well known before the EPD to use conditioning systems to
`
`deliver both conditioners and anti-dandruff agents to the hair and scalp. (UNL
`
`1003, ¶19.) For example, Kanebo discloses that an object of the invention is to
`
`provide excellent usability and conditioning effect to the hair, including an AD
`
`shampoo containing an anionic surfactant, a silicone conditioning agent, an AD
`
`agent, and a cationic polymer. (UNL 1006, 3:¶[0004] and 10-11:¶[0037].) Bowser
`
`discloses AD shampoos containing an anionic surfactant, a non-volatile silicone
`
`conditioning agent, AD particulates and cationic polymers. (UNL 1009, 8:25-34;
`
`8:44-48; 8:49-51.) Evans discloses conditioning shampoos containing an anionic
`
`surfactant, a silicone conditioning agent, polyalkylene glycols, cationic polymers,
`
`and an AD agent. (UNL 1010, 3, 11, 19, 24, 27 and 32.) A POSA would have
`
`understood that each of Kanebo, Bowser and Evans discloses a combination of
`
`ingredients that forms conditioning, AD shampoos. (UNL 1003, ¶19.) This is
`
`discussed in more detail below in the context of each reference.
`
`It was also well known by May 3, 1999, to use polyalkylene glycols to
`
`enhance the spreadability of shampoos on the hair. (UNL 1003, ¶22.) For example,
`
`Evans teaches: "[i]t has also been found that these selected polyalkylene glycols,
`
`when added to a silicone-containing shampoo composition, enhance spreadability
`
`of the shampoo compositions in hair. Enhanced spreading of the shampoo
`
`8
`
`

`
`composition during application provides consumers with a perception of enhanced
`
`conditioning performance." (UNL 1010, 20:28-32; UNL 1003, ¶22.)
`
`The shampoo formulation field was well developed prior to the EPD. (UNL
`
`1003, ¶23.) The state of the art was well established with respect to the
`
`components of the claimed shampoo compositions. (UNL 1003, ¶23.)
`
`VIII. IDENTIFICATION OF CHALLENGE (37 C.F.R. §42.104(b))
`
`IPR of the challenged claims of the '300 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. (pre-
`March 16, 2013)
`§102
`
`1
`
`2
`
`3
`4
`
`5
`6
`
`7
`
`8
`
`§103
`
`§103
`§103
`
`§103
`§103
`
`§103
`
`§103
`
`Index of Reference(s)
`
`'300 Patent Claims
`
`Kanebo
`
`Kanebo
`
`Kanebo and Cardin
`Kanebo, Schwen, and
`Gibson
`Bowser and Evans
`Evans
`
`Evans and
`Coffindaffer
`Evans and Cardin
`
`1-5, 11, 13, 16-18, 20,
`25
`1-7, 11, 13, 16-18, 20,
`25
`14, 15, 22
`21, 23
`
`1-7, 11-13, 16-20, 24, 25
`1, 2, 4, 11-13, 16-20, 24,
`25
`3, 5, 8-10
`
`14, 15, 22
`
`9
`
`

`
`Grounds 35 U.S.C. (pre-
`March 16, 2013)
`§103
`
`9
`
`Index of Reference(s)
`
`'300 Patent Claims
`
`Evans, Schwen, and
`Gibson
`
`21, 23
`
`A. Ground 1: Claims 1-5, 11, 13, 16-18, 20 and 25 are Anticipated by
`Kanebo.
`Japanese Appl. No. 08/019,389 to Kanebo, Ltd., titled "Composition Having
`
`Pearl Lustre," was laid-open on July 22, 1997 as JP Laid-Open No. 9-188,614A
`
`("Kanebo".) (UNL 1005.) Because the JP laid-open application is in Japanese, the
`
`certified English language translation will be referred to herein. (UNL 1006.)
`
`Kanebo qualifies as prior art to the '300 patent under 35 U.S.C. §102(b) because it
`
`published more than one year prior to the EPD of the '300 patent.
`
`As shown below, each and every element of claims 1-5, 11, 13, 16-18, 20,
`
`and 25 is disclosed in Kanebo, 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. (UNL 1003, ¶35.)
`
`The '300 Patent
`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%, Example 10: "Dimethyl polysiloxane (10,000
`
`Disclosure in Kanebo
`"Example 10 (Anti-dandruff shampoo) (in
`%)" (UNL 1006, 10:¶0037)2
`Example 10: "Ammonium lauryl sulphate
`10.0 [%]"3 (UNL 1006, 11:1)
`
`
`2 Boldface type in the claim charts is added for emphasis.
`3 All amounts in Kanebo are % by weight. (UNL 1006, 2:[0003].)
`
`10
`
`

`
`The '300 Patent
`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 at
`least one cationic polymer;
`
`e) from 0.005% to about 1.5%, by
`weight of the composition, of a
`polyalkylene glycol corresponding
`to the formula:
`
`Disclosure in Kanebo
`cSt; 25ºC) 5.0 [%]" (UNL 1006, 11:5)
`
`Example 10: "Zinc pyrithione 0.5 [%]" (UNL
`1006, 11:10)
`
`Example 10: "Cationized cellulose derivative
`(Trade name: Catinal HC-200 manufactured
`by Toho Kagaku Kogyo) 1.0 [%]" (UNL
`1006, 11:6-7)
`Example 10: "Highly polymerized
`polyethylene glycol (Trade name: Polyox
`WSR-301; manufactured by UCC) 0.1 [%]"
`(UNL 1006, 11:11-12)
`
`
`
`i) wherein R is selected from the
`group consisting of hydrogen,
`methyl and mixtures thereof,
`ii) wherein n is an integer having
`an average value from about 1,500
`to about 120,000; and
`f) water.
`
`2. A shampoo composition
`according to claim 1, wherein said
`at least one cationic polymer
`component is selected from the
`group consisting of guar
`derivatives, cellulose derivatives,
`and mixtures thereof.
`3. A shampoo composition
`according to claim 2, wherein at
`least one of said guar derivatives is
`guar hydroxypropyltrimonium
`chloride.
`
`Example 10: "Water balance" (UNL 1006,
`11:16)
`See claim 1.
`Example 10: "Cationized cellulose
`derivative (Trade name: Catinal HC-200
`manufactured by Toho Kagaku Kogyo) 1.0
`[%]" (UNL 1006, 11:6-7)
`
`See claim 2.
`"The high molecular compound (excluding
`dimethyl polysiloxane) used in the present
`invention . . . . The high molecular compound
`as such may be . . . and, for achieving the
`best conditioning effect, it is preferred to use
`a cationic polymer such as cationized
`cellulose derivative, cationized guar gum
`
`11
`
`

`
`The '300 Patent
`
`4. A shampoo composition
`according to claim 2, wherein at
`least one of said cellulose
`derivatives is polyquaternium-10.
`
`5. A shampoo composition
`according to claim 1, comprising
`from about 0.1% to about 1%, by
`weight of the composition, of said
`at least one cationic polymer.
`11. A shampoo composition
`according to claim 1, wherein said
`non-volatile conditioning agent
`comprises silicone.
`13. A shampoo composition
`according to claim 1, wherein said
`anti-dandruff particulate is a zinc
`salt of 1-hydroxy-2-pyridinethione.
`16. 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.
`17. 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.
`18. A shampoo composition
`according to claim 17, wherein said
`suspending agent is ethylene glycol
`distearate.
`
`Disclosure in Kanebo
`derivative . . . ." (UNL 1006, 5:6-16)
`Kanebo provides other shampoo formulations
`containing: "*2: Guar gum
`hydroxypropyltrimethylammonium
`chloride ether . . ." (UNL 1006, 8:fn. *2.)
`See claim 2.
`Example 10: "Cationized cellulose
`derivative (Trade name: Catinal HC-200
`manufactured by Toho Kagaku Kogyo) 1.0
`[%]" (UNL 1006, 11:6-7)
`See claim 1.
`Example 10: "Cationized cellulose derivative
`(Trade name: Catinal HC-200 manufactured
`by Toho Kagaku Kogyo) 1.0 [%]" (UNL
`1006, 11:6-7)
`See claim 1.
`Example 10: "Dimethyl polysiloxane (10,000
`cSt; 25ºC) 5.0 [%]" (UNL 1006, 11:5)
`
`See claim 1.
`Example 10: "Zinc pyrithione 0.5 [%]"
`(UNL 1006, 11:10)
`
`See claim 1.
`Example 10: "Zinc pyrithione 0.5 [%]" (UNL
`1006, 11:10)
`
`See claim 1.
`Example 10: "Ethylene glycol dimyristate 2.0
`[%]" (UNL 1006, 11:8)
`
`See claim 17.
`Example 10: "Ethylene glycol dimyristate 2.0
`[%]" (UNL 1006, 11:8)
`"Although there is no particular limitation for
`
`12
`
`

`
`The '300 Patent
`
`20. A method for providing anti-
`dandruff efficacy and 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.
`
`25. A shampoo composition
`according to claim 18, comprising
`from about 0.025% to about 1.5%,
`by weight of the composition, of
`said polyalkylene glycol.
`
`Disclosure in Kanebo
`the pearl lustre agent used in the present
`invention, it is preferred to use a fatty acid
`glycol ester such as a linear or branched fatty
`acid glycol diester (e.g., ethylene glycol
`distearate, ethylene glycol dimyristate, . . .
`." (UNL 1006, 5:25-28)
`See claim 1.
`Example 10: "The anti-dandruff shampoo of
`the above composition was prepared
`according to the conventional method and
`evaluation was conducted for its spreadability
`and running of the fingers through the hair
`upon application, usability upon rinsing,
`feeling of the finish and dispersing stability
`whereupon any of those characteristic
`properties was excellent showing good
`results." (UNL 1006, 11:17-22)
`See claim 18.
`"Highly polymerized polyethylene glycol
`(Trade name: Polyox WSR-301;
`manufactured by UCC) 0.1 [%]" (UNL 1006,
`11:11-12)
`
`Claim 1: Example 10 of Kanebo is a shampoo composition. (UNL 1003,
`
`¶38.) In addition, the following components in Kanebo meet elements (a)–(f) in
`
`claim 1, as confirmed by Mr. Nandagiri. (a) "Ammonium lauryl sulphate" is an
`
`anionic surfactant as admitted by patent owner (UNL 1001, 3:3 and 4:5; UNL
`
`1003, ¶38.) The terms "sulfate" and "sulphate" are well-known alternative spellings
`
`for the same chemical moiety: SO4. (UNL 1003, ¶38) (b) "Dimethyl polysiloxane"
`
`is a non-volatile conditioning agent. (UNL 1003, ¶38) The patent owner has also
`
`admitted that "[p]olydimethylsiloxane" is a non-volatile silicone conditioning
`
`13
`
`

`
`agent.
`
`(UNL 1001, 5:62 and 8:19-28.) "Dimethyl polysiloxane" and
`
`"[p]olydimethylsiloxane" are variations of the name for the same compound. (UNL
`
`1003, ¶38) (c) A POSA would have understood that zinc pyrithione is an anti-
`
`dandruff agent that is in particulate form. (UNL 1003, ¶39) The patent owner has
`
`also admitted that zinc pyridinethione, also known as ZPT, is the zinc salt of 1-
`
`hydroxy-2-pyridinethione, which are "[p]yridinethione anti-dandruff particulates."
`
`(UNL 1001, 16:47-59.) (d) Cationized cellulose derivatives, such as Catinal HC-
`
`200, are cationic polymers. (UNL 1003, ¶40) The patent owner also lists
`
`"[c]ationic [c]ellulose [d]erivatives" as cationic polymers. (UNL 1001, 17:31 and
`
`19:61.) (e) Polyox WSR-301 is a polyethylene glycol, which is a type of
`
`polyalkylene glycol. (UNL 1003, ¶41) According to the patent owner, PEG 90M is
`
`a polyethylene glycol polymer that has the claimed formula and Polyox WSR®
`
`301 is an example of "PEG 90M, wherein R is hydrogen and n has an average
`
`value of about 90,000." (UNL 1001, 23:49 to 24:22.) (f) Example 10 of Kanebo
`
`also contains water. (UNL 1006, 11:16, UNL 1003, ¶41.)
`
`The amount of each component in the shampoo composition of Kanebo that
`
`meets the recited component in claim 1 also falls within the claimed % range. As
`
`such, the shampoo composition of Kanebo meets the % range limitation of each of
`
`the components recited in claim 1. (UNL 1003, ¶42) It is "an elementary principle
`
`of patent law that when, as by a recitation of ranges or otherwise, a claim covers
`
`14
`
`

`
`several compositions, the claim is 'anticipated' if one of them is in the prior art."
`
`Titanium Metals Corp. v. Banner, 778 F.2d 775, 782 (Fed. Cir. 1985).
`
`From the explanation above, it is clear that a single example in Kanebo,
`
`Example 10, meets each and every element of claim 1, arranged as claimed.
`
`Claims 2, 5, 11, 13, and 16 depend from claim 1. As shown in the claim
`
`chart above, Kanebo discloses a shampoo composition that meets the limitations of
`
`claims 2, 5, 11, 13, and 16. For the reasons provided above for claim 1 and from
`
`the claim chart, a POSA would have recognized that Kanebo discloses the subject
`
`matter of claims 2, 5, 11, 13, and 16. (UNL 1003, ¶46, ¶52, ¶54, ¶56, ¶58, ¶65.)
`
`Claim 3 depends from claim 2, and requires that the guar derivative is guar
`
`hydroxypropyltrimonium
`
`chloride, which
`
`is
`
`a
`
`synonym
`
`for
`
`guar
`
`hydroxypropyltrimonium chloride. (UNL 1006, [0031], fn. *2; UNL 1003, ¶49)
`
`Example 10 discloses a cationized cellulose derivative, and as shown by the claim
`
`chart above, Kanebo discloses that the high molecular weight compound can be a
`
`"cationic polymer such as cationized cellulose derivative, cationized guar gum
`
`derivative . . . ." (UNL 1006, 5:6-16.) Kanebo also discloses other shampoo
`
`formulations containing "[g]uar gum hydroxypropyl-trimethylammonium chloride
`
`ether." (UNL 1006, 8:fn. *2.) Thus, a POSA would have recognized that a
`
`cationized cellulose derivative and a cationized guar gum derivative can be
`
`interchanged. (UNL 1003, ¶49) A POSA would have also understood that Kanebo
`
`15
`
`

`
`discloses use of guar hydroxypropyltrimonium chloride as a cationic polymer.
`
`(UNL 1003, ¶49.) Thus, the limitations of claim 3 would have been disclosed to a
`
`POSA, arranged as claimed. And a POSA would have been able to make and use
`
`the claimed invention without 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 is a cationic polymer contemplated for
`
`use in the shampoo compositions taught by Kanebo. (UNL 1003, ¶49) Thus,
`
`Kanebo discloses each element of claim 3, arranged or combined in the same way
`
`as in the claim. Net Moneyin v. Verisign, 545 F.3d 1359 (Fed. Cir. 2008)
`
`("'arranged as in the claim' requirement applies to all claims and refers to the need
`
`for an anticipatory reference to show all of the limitations of the claims arranged or
`
`combined in the same way as recited in the claims, not merely in a particular
`
`order").
`
`Claim 4 depends from claim 2, and recites that the cellulose derivative is
`
`polyquaternium-10. Claims 1 and 2 are discussed above. U.S. Patent No. 7,481,846
`
`("Marsh") is merely cited here to demonstrate that Catinal HC-200, as disclosed in
`
`Kanebo, is a cellulose derivative that is a polyquaternium-10: "Polyquaternium-10,
`
`such as the products sold under the name . . . Catinal HC-200 . . . ." (UNL 1007,
`
`23:60-63, UNL 1003, ¶51.) In re Donohue, 766 F.2d 531 (Fed. Cir. 1985) (holding
`
`that the properties of the prior art's compounds are inherently the same as those of
`
`16
`
`

`
`the claimed invention in the absence of proof to the contrary).
`
`Claim 17 specifies that the composition includes a suspending agent.
`
`Claim 18 depends from claim 17, and recites that the suspending agent is ethylene
`
`glycol distearate. The shampoo composition in Example 10 of Kanebo contains
`
`ethylene glycol dimyristate. (UNL 1006, 11:8.) Kanebo explains that "it is
`
`preferred to use a fatty acid glycol ester such as a linear or branched fatty acid
`
`glycol diester (e.g., ethylene glycol distearate, ethylene glycol dimyristate . . . ."
`
`(UNL 1006, 5:¶[0016].) The patent owner has admitted that "[p]referred acyl
`
`derivative suspending agents . . . are glycerol esters . . . . More preferred are the
`
`ethylene glycol stearates, both mono- and di-stearate, most preferred is ethylene
`
`glycol di-stearate . . . ." (UNL 1001, 26:12-16, emphasis added.) Thus, a POSA
`
`would have recognized from Kanebo that both ethylene glycol distearate and
`
`ethylene glycol dimyristate are glycerol esters and interchangeable. (UNL 1003,
`
`¶61.) As the '300 patent admits that glycerol esters are suspending agents, a POSA
`
`would have understood ethylene glycol dimyristate to be a suspending agent.
`
`(UNL 1003, ¶61) Thus, Kanebo discloses every element of claims 17 and 18,
`
`arranged as claimed. (UNL 1003, ¶61)
`
`Claim 20 depends from claim 1, which is discussed above. Example 10 of
`
`Kanebo discloses that the shampoo was evaluated by applying to hair and rinsing.
`
`(UNL 1006, 11:[0038].) Kanebo also discloses test methods in which "the hair was
`
`17
`
`

`
`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, ¶63.)
`
`Claim 25 depends from claim 18, and for the reasons provided in the claim
`
`chart and the discussion of claim 18 above, is anticipated by Kanebo. (UNL 1003,
`
`¶64)
`
`As addressed above, each and every element of claims 1-5, 11, 13, 16-18,
`
`20, and 25 is disclosed in Kanebo, arranged as claimed. Kanebo discloses the
`
`components of the shampoo composition in Example 10, including the amounts,
`
`and states that the "composition was prepared according to the conventional
`
`method." (UNL 1006, 10:¶[0037] to 11:¶[0038].) Methods for making conditioning
`
`shampoos were well-known as of the EPD. (UNL 1003, ¶65) For example, a
`
`method for making a conditioning shampoo is disclosed in Evans that is very
`
`similar to the method described in the '300 patent. (UNL 1010, 27:Examples, and
`
`UNL 1001, 31-32:Examples, UNL 1003, ¶65.) Thus, a POSA could have made the
`
`shampoo composition of Kanebo without undue experimentation. (UNL 1003, ¶65)
`
`Given the disclosure in Kanebo and the general knowledge in the art, as
`
`evidenced by Evans, no more than routine experimentation would have been
`
`needed to prepare the claimed shampoo compositions. (UNL 1003, ¶66) Thus,
`
`18
`
`

`
`Kanebo is an enabling disclosure and each of claims 1-5, 11, 13, 16-18, 20, and 25
`
`is anticipated by Kanebo.
`
`B. Ground 2: Claims 1-7, 11, 13, 16-18, 20, and 25 Would Have Been
`Obvious to a POSA in View of Kanebo.
`As discussed above, claims 1-5, 11, 13, 16-18, 20, and 25 are anticipated by
`
`Kanebo. Example 10 of Kanebo discloses a shampoo composition that contains all
`
`the components recited in these claims, in % amounts that fall within the claimed
`
`% ranges. "[A] disclosure that anticipates . . . also renders the claim invalid under
`
`§103, for anticipation is the epitome of obviousness." Connell v. Sears, Roebuck &
`
`Co., 722 F.2d 1542, 1548 (Fed. Cir. 1983) (citations and internal quotation marks
`
`omitted); see also Johns Hopkins Univ. v. Cellpro, Inc., 152 F.3d 1342, 1357 n. 21
`
`(Fed. Cir. 1998) (a disclosure that anticipates also renders a claim obvious).
`
`Thus, even if Kanebo were not found to anticipate claims 1-5, 11, 13, 16-18,
`
`20 and 25, these claims would have been prima facie obvious over Kanebo alone.
`
`A POSA would have wanted to optimize the shampoo compositions and would
`
`have had a reasonable expectation of success modifying the formulations in
`
`Kanebo to arrive at the claimed compositions. (UNL 1003, ¶67.)
`
`As shown by the following claim chart and discussion herein, claims 6, 7,
`
`20, and 25 would also have been prima facie obvious over Kanebo to a POSA.
`
`The '300 Patent
`6. A shampoo composition
`according to claim 2, wherein said
`
`Disclosure in Kanebo
`See claim 2 above.
`Kanebo states: "The high molecular
`
`19
`
`

`
`The '300 Patent
`guar derivatives have a molecular
`weight from