Trials@uspto.gov
`Tel: 571-272-7822
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`Paper 10
`Entered: February 12, 2014
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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
`_______________
`
`Case IPR2013-00509
`Patent 6,451,300 B1
`_______________
`
`
`Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
`RAMA G. ELLURU, Administrative Patent Judges.
`
`OBERMANN, Administrative Patent Judge.
`
`
`
`DECISION
`Institution of Inter Partes Review
`37 C.F.R. § 42.108
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`
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`Case IPR2013-00509
`Patent 6,451,300 B1
`
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`I. INTRODUCTION
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`Conopco, Inc. dba Unilever (“Petitioner”) filed a Petition requesting an inter
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`partes review of claims 1-25 of U.S. Patent No. 6,451,300 B1 (Ex. 1001, the ’300
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`patent). Paper 2 (“Pet.”). The Procter & Gamble Company (“Patent Owner”) filed
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`a timely preliminary response. Paper 8 (“Prelim. Resp.”). We have jurisdiction
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`under 35 U.S.C. § 314.
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`The standard for instituting an inter partes review is set forth in 35 U.S.C.
`
`§ 314(a), which provides:
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`THRESHOLD -- The Director may not authorize an inter partes
`review to be instituted unless the Director determines that the
`information presented in the petition filed under section 311 and any
`response filed under section 313 shows that there is a reasonable
`likelihood that the petitioner would prevail with respect to at least 1 of
`the claims challenged in the petition.
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`Based on the information presented, there is a reasonable likelihood that
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`Petitioner would prevail with respect to claims 1-5, 11-13, 16-20, 24, and 25.
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`Accordingly, we authorize an inter partes review of those claims. We deny the
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`Petition as to claims 6-10, 14, 15, and 21-23.
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`
`
`A. Related Proceedings
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`The ’300 patent is the subject of co-pending district court litigation initiated
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`after the filing of the Petition. See Procter & Gamble Co. v. Conopco, Inc., 1:13-
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`cv-00732-TSB (S.D. Oh.) (filed Oct. 10, 2013). Concurrently herewith, we issue
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`Decisions on Petitions in two other inter partes review proceedings involving the
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`same parties. See IPR 2013-00505 (relating to US Patent No. 6,974,569 B2) and
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`IPR 2013-00510 (relating to US Patent No. 6,649,155 B1).
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`Case IPR2013-00509
`Patent 6,451,300 B1
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`B. The ’300 Patent (Ex. 1001)
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`The ’300 patent is directed to a shampoo composition and method for
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`providing a combination of anti-dandruff efficacy and conditioning. Ex. 1001
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`2:20-22. According to the ’300 patent specification, “[t]hese shampoos comprise:
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`(A) from about 5% to about 50%, by weight, of an anionic surfactant; (B) from
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`about 0.01% to about 10%, by weight, of a non-volatile conditioning agent; (C)
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`from about 0.1% to about 4%, by weight, of an anti-dandruff particulate; (D) from
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`about 0.02% to about 5%, by weight, of at least one cationic polymer; (E) from
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`0.005% to about 1.5%, by weight, of a polyalkylene glycol; and (F) water.” Id. at
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`2:22-30. The specification further defines the polyalkylene glycol. Id. at 2:30-33.
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`The specification sets forth five examples of the inventive shampoo
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`composition. Id. at 31:50-33:45. The specification also describes a method for
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`applying the shampoo to the hair and scalp, which preferably has been wetted with
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`water, in an amount that is effective to confer anti-dandruff efficacy and hair
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`conditioning; the shampoo is thereafter rinsed off. Id. at 2:34-37; 31:24-28.
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`
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`C. Representative Claim
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`Petitioner seeks inter partes review of claims 1-25, all of the issued claims
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`of the ’300 patent. The independent claims are drawn to a shampoo composition.
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`Ex. 1001 (claims 1, 19). Also claimed is a method for applying the composition to
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`wet hair to provide anti-dandruff efficacy and hair conditioning (claim 20), and to
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`regulate hair growth (claims 22-23). Independent claims 1 and 19 specify a
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`shampoo composition comprising an anionic surfactant, a non-volatile
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`conditioning agent, an anti-dandruff particulate, a cationic polymer, and a
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`polyalkylene glycol. Weight-percent ranges are specified for those components.
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`Case IPR2013-00509
`Patent 6,451,300 B1
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`Claim 1, reproduced below, is illustrative of the claimed subject matter.
`
`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 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:
`
`
`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.
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`D. The Asserted Grounds of Unpatentability
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`Petitioner challenges claims 1-25 on the following grounds of
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`unpatentability:
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`Reference[s]
`
`Basis
`
`Claims challenged
`
`Kanebo1
`
`Kanebo
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`Kanebo and Cardin2
`
`§ 102(b)
`
`1-5, 11, 13, 16-18, 20, and 25
`
`§ 103
`
`§ 103
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`1-7, 11, 13, 16-18, 20, and 25
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`14, 15, and 22
`
`
`1 Kanebo JP 9-188614 (July 22, 1997) (English translation) (Ex. 1006).
`2 Cardin US 5,104,645 (Apr. 14, 1992) (Ex. 1014).
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`Case IPR2013-00509
`Patent 6,451,300 B1
`
`
`Reference[s]
`
`Kanebo, Schwen,3 and
`Gibson4
`Bowser5 and Evans6
`
`Evans
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`Evans and Coffindaffer7
`
`Evans and Cardin
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`Basis
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`§ 103
`
`Claims challenged
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`21 and 23
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`1-7, 11-13, 16-20, 24, and 25
`
`1, 2, 4, 11-13, 16-20, 24, and 25
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`3, 5, and 8-10
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`14, 15, and 22
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`Evans, Schwen, and Gibson
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`§ 103
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`21 and 23
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`
`
`II. ANALYSIS
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`A. Claim Construction
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`In an inter partes review proceeding, we give claim terms in unexpired
`
`patents their broadest reasonable interpretation in light of the specification of the
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`patent in which they appear. 37 C.F.R. § 42.100(b). Under that standard, we
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`assign claim terms their ordinary and customary meaning, as understood by a
`
`person of ordinary skill in the art, in the context of the entire patent disclosure. In
`
`re Translogic Tech., Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). Any special
`
`definition for a term must be set forth in the specification with reasonable clarity,
`
`deliberateness, and precision. In re Paulsen, 30 F.3d 1475, 1480 (Fed. Cir. 1994).
`
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`3 Schwen WO 95/03319 (Feb. 2, 1995) (Ex. 1015).
`4 Gibson US 5,015,470 (May 14, 1991) (Ex. 1030).
`5 Bowser US 5,723,112 (Mar. 3, 1998) (Ex. 1009).
`6 Evans WO 97/14405 (Apr. 24, 1997) (Ex. 1010).
`7 Coffindaffer US 5,624,666 (Apr. 29, 1997) (Ex. 1013).
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`Case IPR2013-00509
`Patent 6,451,300 B1
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`Neither party advances a special meaning for any claim term. Claims 13,
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`14, and 19 require a “zinc salt of 1-hydroxy-2-pyridinethione.” Petitioner argues,
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`and Patent Owner does not contest at this stage of the proceeding, that the terms
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`“zinc salt of 1-hydroxy-2-pyridinethione” and “zinc pyrithione” interchangeably
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`refer to the same chemical component. Pet. 5 (citing Ex. 1001 16:55-59; 32:30-51,
`
`fn. 4; Ex. 1003 ¶ 17). The evidence of record supports Petitioner’s position on that
`
`point. Id. On this record, we construe each claim term according to its ordinary
`
`and customary meaning, consistent with the specification, and determine that no
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`term needs further interpretation for our purposes in deciding whether to institute
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`trial.
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`
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`B. Anticipation by Kanebo
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`
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`Petitioner contends that Kanebo describes a shampoo composition,
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`comprising components in weight-percent ranges, that anticipates claims 1-5, 11,
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`13, 16-18, 20, and 25 of the ’300 patent. Pet. 10-19. For the reasons that follow,
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`based on the information presented, we initiate an inter partes review of claims 1,
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`2, 4, 5, 11, 13, 16, 17, and 20 based on anticipation by Kanebo; we decline to
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`initiate trial on that ground as to claims 3, 18, and 25.
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`
`
`1. Claims 1, 2, 4, 5, 11, 16, and 17
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`Petitioner’s claim charts, substantive arguments, and supporting Declaration
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`of Arun Nandagiri8 tend to establish that Kanebo in Example 10 describes a
`
`
`8 Dr. Nandagiri has over thirty years of experience in the field of shampoos and
`conditioners, including anti-dandruff conditioning shampoos. Ex. 1003 ¶ 4. In
`particular, Dr. Nandagiri appears to have the requisite familiarity with shampoo
`formulation and testing to opine on the views of a hypothetical person of ordinary
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`Case IPR2013-00509
`Patent 6,451,300 B1
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`shampoo composition comprised of components in weight-percent ranges that
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`meet the limitations of claims 1, 2, 4, 5, 11, 16, and 17. Pet. 10-18; Ex. 1003;
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`Ex. 1006 ¶ 37. At this stage of the proceeding, Patent Owner has not persuaded us
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`otherwise. See generally Prelim. Resp.
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`For example, the evidence sufficiently shows that Kanebo’s Example 10
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`discloses each limitation of claim 1. Pet. 10-11 (claim chart). Claim 1 requires a
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`shampoo comprising, in amounts based on weight of the composition, from about
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`5% to about 50% of an anionic surfactant, from about 0.01% to about 10% of a
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`non-volatile conditioning agent, from about 0.1% to about 4% of an anti-dandruff
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`particulate, from about 0.02% to about 5% of at least one cationic polymer, from
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`0.005% to about 1.5% of a polyalkylene glycol that is further defined, and water.
`
`Based on the information presented, we are persuaded that Kanebo’s
`
`Example 10 discloses a shampoo comprising, in amounts based on weight of the
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`composition, 10% ammonium lauryl sulphate [an anionic surfactant], 5.0%
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`dimethyl polysiloxane (10,000 cSt; 25o C) [a non-volatile conditioning agent];
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`0.5% zinc pyrithione [an anti-dandruff particulate]; 1.0% cationized cellulose
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`derivative (trade name: Catinal HC-200 manufactured by Toho Kagaku Kogyo) [a
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`cationic polymer]; 0.1% highly polymerized polyethylene glycol (trade name:
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`Polox WSR-310; manufactured by UCC); and water. Id. at 10-11 (citing Ex. 1006
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`¶ 37). That evidence is sufficient to establish that Kanebo’s Example 10 discloses
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`each component of the claimed composition in an amount that falls within the
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`weight-percent ranges specified in claim 1. Id. at 13-14 (citing Ex. 1001 3:3; 4:5;
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`5:62; 8:19-28; 16:47-59; 23:49-24:22; Ex. 1003 ¶¶ 38-41). The information
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`
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`skill in the art. See id. at ¶¶ 4-9. Therefore, we credit his testimony at this stage of
`the proceeding.
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`presented also is sufficient to show that dependent claims 2, 4, 5, 11, 16, and 17 are
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`anticipated by the composition described in Kanebo’s Example 10. Pet. 10-18;
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`Ex. 1003; Ex. 1006 ¶ 37.
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`
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`2. Claims 13 and 20
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`The information presented establishes a reasonable likelihood that Kanebo
`
`anticipates claim 13. Claim 13 depends from claim 1 and requires that “said anti-
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`dandruff particulate is a zinc salt of 1-hydroxy-2-pyridinethione.” We are
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`persuaded that the “zinc pyrithione” in Kanebo’s Example 10 (Ex. 1006 ¶ 67) is a
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`synonym for the “zinc salt of 1-hydroxy-2-pyridinethione” required by claim 13.
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`Pet. 12, 14; Ex. 1003 ¶¶ 39, 40; see Pet. 5 (citing Ex. 1001 16:55-59; 32:30-51,
`
`fn. 4; Ex. 1003 ¶ 17).
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`Claim 20 recites “[a] method for providing anti-dandruff efficacy and
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`conditioning hair” and requires “a) wetting said hair with water; b) applying to said
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`hair an effective amount of a shampoo composition according to claim 1; and c)
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`rinsing said shampoo composition from said hair using water.” Kanebo discloses
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`an evaluation of the composition of Example 10 that involves assessing “usability
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`upon rinsing.” Ex. 1006 ¶ 38. Kanebo further discloses a test method for
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`evaluating shampoo that involves hair that is “washed followed by rinsing.” Id. at
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`¶ 21. On this record, we are persuaded that Kanebo teaches wetting hair with
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`water, applying an effective amount of shampoo, and using water to rinse the
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`shampoo from the hair; thus Petitioner is reasonably likely to establish that Kanebo
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`anticipates the method of claim 20. Pet. 17-18; Ex. 1003 ¶ 63.
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`Case IPR2013-00509
`Patent 6,451,300 B1
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`3. Claims 3, 8, and 25
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`The information presented does not show sufficiently that claims 3, 18,
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`and 25 are anticipated by Kanebo. Claim 3, which indirectly depends from
`
`claim 1, requires guar hydroxypropyltrimonium chloride as the guar derivative.
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`Petitioner advances evidence (Ex. 1003 ¶ 49) that this particular guar derivative is
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`a component in Kanebo’s Example 8 (Ex. 1006 ¶ 31 fn. *2) and, further, is an art-
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`recognized, interchangeable alternative for the cationized cellulose derivative used
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`in Kanebo’s Example 10. Pet. 15-16; see Ex. 1006 ¶ 14 (preferred cationic
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`polymers include cationized cellulose derivative and cationized guar gum
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`derivative), ¶ 37 (disclosing use of cationized cellulose derivative in Example 10);
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`see also Ex. 1003 ¶ 49 (explaining Kanebo’s disclosure). On that basis, Petitioner
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`argues that a skilled artisan would have understood that the guar derivative in
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`Kanebo’s Example 8 (and specified in claim 3) is an interchangeable alternative
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`for the cellulose derivative disclosed in Kanebo’s Example 10. Pet. 16.
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`That evidence falls short of establishing that Kanebo anticipates claim 3. In
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`order to arrive at the composition of claim 3, the skilled artisan would have had to
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`engage in “picking and choosing” from among the various components described
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`in two different examples in Kanebo, namely, Examples 8 and 10. In re Arkley,
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`455 F.2d 586, 587 (CCPA 1972); Ex. 1006 ¶¶ 31, 37. In this instance, we are not
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`persuaded that Kanebo discloses a specific embodiment that satisfies all of the
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`claim limitations or otherwise describes the claimed invention with anticipatory
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`specificity. In that regard, Petitioner does not explain how the reference “clearly
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`and unequivocally” discloses the claimed composition or directs the skilled artisan
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`to that composition “without any need for picking, choosing, and combining
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`various disclosures not directly related to each other by the teachings of the cited
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`reference.” In re Arkley, 455 F.2d at 587 (emphasis in original) (quoted with
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`Patent 6,451,300 B1
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`approval in Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1083 (Fed.
`
`Cir. 2008)); Ex. 1006 (Kanebo).
`
`Petitioner’s argument regarding claim 18 (and claim 25, which depends
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`therefrom) similarly is deficient. Pet. 17, 18. Claim 18, which indirectly depends
`
`from claim 1, requires ethylene glycol distearate as the suspending agent, whereas
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`Kanebo’s Example 10 utilizes ethylene glycol dimyristate for that function.
`
`Ex. 1006 ¶ 37. Petitioner contends that these are interchangeable alternative
`
`components, because both appear in lists of preferred glycerol esters in Kanebo’s
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`general disclosure (id. at ¶ 16) and in the ’300 patent specification (Ex. 1001
`
`26:12-16). Pet. 17 (also citing Ex. 1003 ¶ 61). On that basis, Petitioner argues that
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`a skilled artisan would have been led to substitute the distearate for the dimyristate
`
`in Kanebo’s Example 10. Id. That anticipation ground, however, requires
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`“picking and choosing” from a list of preferred glycol esters generally disclosed in
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`Kanebo. In re Arkley, 455 F.2d at 587; see Ex. 1006 ¶ 16 (Kanebo’s list of suitable
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`glycol esters). On this record, Petitioner does not show sufficiently that Kanebo
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`discloses the subject matter of claim 18 (or claim 25, which depends therefrom)
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`with anticipatory specificity.
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`Based on the information presented, we are not persuaded that Kanebo
`
`anticipates the subject matter of claims 3, 18, or 25.
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`
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`C. Obviousness over Kanebo
`
`Petitioner argues that the subject matter of claims 1-7, 11, 13, 16-18, 20,
`
`and 25 would have been obvious over Kanebo. Pet. 19-23. We initiate inter
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`partes review on that ground only as to claims 3, 18, and 25. We decline to initiate
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`review on that ground as to claims 1-2, 4-7, 11, 13, 16, 17, and 20.
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`Case IPR2013-00509
`Patent 6,451,300 B1
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`1. Claims 3, 18, and 25
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`We first turn to claims 3, 18, and 25, which are discussed above in the
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`context of anticipation by Kanebo. We are persuaded at this stage of the
`
`proceeding that Petitioner adequately establishes that the subject matter of those
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`claims would have been obvious over Kanebo. Although “picking and choosing”
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`elements from a prior art disclosure may be insufficient to make out an anticipatory
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`description within the meaning of 35 U.S.C. § 102(a), it “may be entirely proper”
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`in the context of obviousness. In re Arkley, 455 F.2d at 587. For example, in
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`Merck & Co. v. Biocraft Labs., Inc., 874 F.2d 804, 806-807 (Fed. Cir. 1989), the
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`Federal Circuit concluded that a diuretic combination of amiloride and
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`hydrochlorothiazide would have been obvious in view of prior art that
`
`disclosed 1200 combinations, one of which was the claimed combination.
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`On this record, we are persuaded that Kanebo’s Examples 8 and 10 teach all
`
`the components of the shampoo composition required by claim 3. Petitioner also
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`sufficiently shows that a skilled artisan would have recognized that Kanebo’s
`
`Example 8 guar component—that is, guar gum hydroxypropyltrimethyl-
`
`ammonium chloride ether—is, in fact, the same chemical component specified in
`
`claim 3, and would have further recognized the Example 8 guar component as an
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`interchangeable alternative for the cellulose derivative disclosed in Kanebo’s
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`Example 10. Pet. 15-16, 19; Ex. 1003 ¶ 49; Ex. 1006 ¶¶ 14, 31 fn. *2, 37.
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`As to claims 18 and 25, Petitioner comes forward with evidence sufficient to
`
`support a finding that a skilled artisan would have recognized that ethylene glycol
`
`distearate is an interchangeable alternative for the ethylene glycol dimyristate
`
`disclosed in Kanebo’s Example 10. Pet. 17, 19; Ex. 1001 26:12-16; Ex. 1003 ¶ 61;
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`Ex. 1006 ¶¶ 16, 37. Thus, based on the information presented, we are persuaded
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`Case IPR2013-00509
`Patent 6,451,300 B1
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`that Petitioner is reasonably likely to prevail in showing that the subject matter of
`
`claims 3, 18, and 25 would have been obvious over Kanebo.
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`
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`2. Claims 6 and 7
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`Claims 6 and 7, which indirectly depend from claim 1, require that the guar
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`derivative have “a molecular weight from about 50,000 to about 700,000” and “a
`
`charge density from about 0.05 meq/g to about 0.9 meq/g.,” respectively. The
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`information presented does not show sufficiently the obviousness of substituting in
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`Kanebo’s Example 10 a guar derivative within the molecular weight range
`
`specified in claim 6, or within the charge density range specified in claim 7.
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`Petitioner’s claim charts do not identify a disclosure in Kanebo of a guar
`
`derivative exhibiting those features. Pet. 31-32. Instead, Petitioner argues that a
`
`guar derivative, known by the trade name JAGUAR™ C15, satisfies those
`
`limitations, and is disclosed in a different patent—issued to Bartolo.9 Pet. 21
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`(citing Ex. 1012, Table 2, fn.4; Ex. 1003 ¶ 69). Even if we accept that Bartolo
`
`discloses a guar derivative that satisfies the limitations of claims 6 and 7, the
`
`evidence is insufficient to support a conclusion that the subject matter of those
`
`claims would have been obvious over Kanebo. Petitioner fails to articulate an
`
`adequate reason why a skilled artisan would have been led to substitute Bartolo’s
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`JAGUAR™ C15 guar hydroxypropyltriammonium chloride for the cationized
`
`cellulose derivative in Kanebo’s Example 10. Pet. 21-22; see Ex. 1003 ¶¶ 69-70;
`
`Ex. 1006 ¶ 37 (Kanebo’s Example 10); Ex. 1012 1:11-13; Table 2 fn. 4 (Bartolo,
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`disclosing JAGUAR™ C15 as a component in a personal cleaning composition for
`
`personal washing). In that regard, “a patent composed of several elements is not
`
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`9 US 5,202,048 (Apr. 13, 1993) (Ex. 1012).
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`proved obvious merely by demonstrating that each of its elements was,
`
`independently, known in the prior art.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
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`398, 418 (2007). On this record, Petitioner does not show sufficiently that the
`
`subject matter of claims 6 or 7 would have been obvious over Kanebo.
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`
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`3. Claims 1, 2, 4, 5, 11, 13, 16, 17, and 20
`
`Petitioner also contends that claims 1, 2, 4, 5, 11, 13, 16, 17, and 20 would
`
`have been obvious over Kanebo. Pet. 19-23. We deny that obviousness ground as
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`redundant over the anticipation ground on which the Petition to institute inter
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`partes review of those claims is granted.
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`
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`D. Obviousness over Evans
`
`Petitioner argues that the subject matter of claims 1, 2, 4, 11-13, 16-20, 24,
`
`and 25 would have been obvious over Evans. Pet. 38-46. For the reasons that
`
`follow, we initiate trial only as to claims 1, 12, 16, 19, and 24 on the ground that
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`they are obvious over Evans.
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`
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`1. Claims 2, 4, 11, 13, 17, 18, 20, and 25
`
`With respect to claims 2, 4, 11, 13, 17, 18, 20, and 25, Petitioner contends
`
`that Kanebo is “[t]he closest prior art.” Pet. 56. Petitioner identifies no
`
`meaningful distinction between the obviousness ground based on Evans and the
`
`grounds based on Kanebo on which the Petition to institute inter partes review of
`
`those claims is granted. Thus, as to those claims, we deny the ground based on
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`Evans as redundant over the grounds based on Kanebo.
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`Case IPR2013-00509
`Patent 6,451,300 B1
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`2. Claims 1, 12, 16, 19, and 24
`
`Claim 12 depends from claim 1, and claim 24 depends from claims 1 and 16.
`
`Based on the information presented, we are persuaded that Petitioner’s claim
`
`charts, substantive arguments, and Declaration of Arun Nandagiri are sufficient to
`
`establish a reasonable likelihood that Petitioner would prevail in showing that
`
`claims 1, 12, 16, 19, and 24 are unpatentable over Evans. Pet. 38-46; Ex. 1003;
`
`Ex. 1010. That information sufficiently shows that Evans suggests a shampoo
`
`composition comprising components in ranges that meet, are subsumed by, or
`
`overlap the ranges specified in those claims. Pet. 38-46. Furthermore, at this stage
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`of the proceeding, we find reasonable Petitioner’s view that, to the extent that the
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`ranges stated in the claims are critical, a desire to identify in Evans’ composition
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`optimal or workable ranges by routine experimentation would have led a skilled
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`artisan to the specified ranges. Id. at 41-42 (citing Ex. 1003 ¶ 86).
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`Patent Owner responds that Evans solves a problem unrelated to the anti-
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`dandruff efficacy that is of concern in the ’300 patent. Prelim. Resp. 22-23.
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`Nevertheless, as Patent Owner observes, Evans discloses the use of optional anti-
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`dandruff agents; the record thus supports a finding that Evans addresses anti-
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`dandruff efficacy. Id. at 23; see Ex. 1010 28-29 (Evans, disclosing “anti-dandruff
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`aids” and “antidandruff agents such as pyridinethione salts”). On this record, we
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`are persuaded that Petitioner is reasonably likely to show that claims 1, 12, 16, 19,
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`and 24 are unpatentable over Evans under 35 U.S.C. § 103.
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`
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`E. Other Obviousness Grounds
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`Petitioner challenges claims 3 and 5 based on the combined disclosures of
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`Evans and Coffindaffer, but makes no meaningful distinction between that ground
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`and the grounds that rely on Kanebo. Pet. 46-48. We deny the ground based on
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`Case IPR2013-00509
`Patent 6,451,300 B1
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`Evans and Coffindaffer as redundant over the grounds that rely on Kanebo on
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`which the Petition to institute inter partes review of claims 3 and 5 is granted.
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`Petitioner asserts that claims 1-7, 11-13, 16-20, 24, and 25 are unpatentable
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`over the combined disclosures of Bowser and Evans. Id. at 23-38. Regarding
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`claims 1-5, 11-13, 16-20, 24, and 25, Petitioner makes no meaningful distinction
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`between this ground and the grounds based on Kanebo upon which the Petition is
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`granted—for example, Petitioner identifies no relative strengths or weaknesses in
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`the disclosures of the references as applied to the limitations of those challenged
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`claims. Given that lack of distinction, we deny as redundant the ground based on
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`Bowser and Evans as advanced against claims 1-5, 11-13, 16-20, 24, and 25.
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`A question remains whether the subject matter of claims 6 or 7 would have
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`been obvious over the combined disclosures of Bowser and Evans. Id. at 23-25.
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`In support of that ground, Petitioner argues that a skilled artisan would have
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`selected certain shampoo components from a plethora of components disclosed in
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`the applied art to arrive at the compositions specified in claims 6 and 7. Id.
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`Petitioner, however, fails to identify a sufficient reason why a skilled artisan would
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`have selected the particular combination of components specified in claims 6
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`and 7. Id. Petitioner’s observation that both references are directed to “similar”
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`shampoo compositions falls short of an adequate rationale. Id. at 25; see KSR Int’l
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`Co., 550 U.S. at 418 (“it can be important to identify a reason that would have
`
`prompted a person of ordinary skill in the relevant field to combine the elements in
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`the way the claimed new invention does”). On this record, Petitioner fails to show
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`sufficiently that claims 6 or 7 would have been obvious over Bowser and Evans.
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`The other proposed combinations of prior art asserted against claims 8-10,
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`14, 15, and 21-23 suffer the same deficiency. Id. at 43-55. Specifically, for each
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`of the grounds advanced against those claims, Petitioner offers conclusory
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`argument regarding the general feasibility of selecting elements from the
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`disclosures of multiple prior art references, without articulating an adequate reason
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`why a skilled artisan would have thought to incorporate the elements required by
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`the claims. Id. at 46-55. By way of example, Petitioner asserts that each of
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`Kanebo, Evans, Schwen, and Gibson “teaches shampoos for treatment of the
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`scalp,” but does not explain why a skilled artisan would have been prompted to
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`select the precise combination of shampoo components recited in the claims. Id.
`
`at 55. As discussed above, however, “a patent composed of several elements is not
`
`proved obvious merely by demonstrating that each of its elements was,
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`independently, known in the prior art.” KSR Int’l Co., 550 U.S. at 418. On this
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`record, Petitioner fails to show sufficiently that claims 8-10, 14, 15, and 21-23 are
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`unpatentable over the applied prior art references.
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`
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`III. CONCLUSION
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`
`
`Based on the information presented, Petitioner is reasonably likely to prevail
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`at trial with respect to claims 1-5, 11-13, 16-20, 24, and 25. The information is
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`insufficient to establish that Petitioner is reasonably likely to prevail at trial with
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`respect to claims 6-10, 14, 15, or 21-23.
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`At this stage of the proceeding, the Board has not made a final determination
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`as to the patentability of any challenged claim.
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`Patent 6,451,300 B1
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`IV. ORDER
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`It is
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`ORDERED that the petition is granted as to claims 1-5, 11-13, 16-20, 24,
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`and 25 with respect to the following grounds:
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`Claims 1, 2, 4, 5, 11, 13, 16, 17, and 20 as anticipated under 35 U.S.C.
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`§ 102(b) by Kanebo;
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`Claims 3, 18, and 25 as obvious under 35 U.S.C. § 103 over Kanebo;
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`Claims 1, 12, 16, 19, and 24 as obvious under 35 U.S.C. § 103 over Evans;
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`FURTHER ORDERED that the petition is denied as to all other grounds
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`advanced against claims 1-5, 11-13, 16-20, 24, and 25, and no ground other than
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`those specifically granted above is authorized for the inter partes review of claims
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`1-5, 11-13, 16-20, 24, and 25;
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`FURTHER ORDERED that the petition is denied as to claims 6-10, 14, 15,
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`and 21-23 and no trial is instituted with respect to those claims; and
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`FURTHER ORDERED that an initial conference call with the Board is
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`scheduled for 10:00 AM Eastern Time March 7, 2014. The parties are directed to
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`the Office Patent Trial Practice Guide, 77 Fed. Reg. 48756, 48765-66 (Aug. 14,
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`2012) for guidance in preparing for the initial conference call, and should be
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`prepared to discuss any proposed changes to the Scheduling Order entered
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`herewith and any motions the parties anticipate filing during the trial.
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`Case IPR2013-00509
`Patent 6,451,300 B1
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`
`PETITIONER:
`
`Eldora Ellison
`eellison@skgf.com
`
`Robert Sterne
`rsterne-PTAB@skgf.com
`
`PATENT OWNER:
`
`David Maiorana
`dmaiorana@JonesDay.com
`
`John Biernacki
`jvbiernacki@jonesday.com
`
`Michael Weinstein
`msweinstein@jonesday.com
`
`Steven Miller
`miller.sw@pg.com
`
`Kim Zerby
`zerby.kw@pg.com
`
`Carl Roof
`roof.cj@pg.com
`
`Angela Haughey
`haughey.a@pg.com
`
`Calvin Griffith
`cpgriffith@jonesday.com
`
`
`
`
`
`
`
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`18
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`