UNITED STATES PATENT AND TRADEMARK OFFICE
`_____________________
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`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`_____________________
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`CONOPCO, INC. dba UNILEVER
`Petitioner
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`v.
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`THE PROCTER & GAMBLE COMPANY
`Patent Owner
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`U.S. Patent No. 6,451,300
`_____________________
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`Inter Partes Review Case No. Unassigned
`_____________________
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`DECLARATION OF ARUN NANDAGIRI
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`Inter Partes Review of USPN 6,451,300
`Declaration of Arun Nandagiri (UNL 1003)
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`TABLE OF CONTENTS
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`
`Introduction .................................................................................................. 1
`I.
`My Background and Qualifications ............................................................. 2
`II.
`List of Documents I Considered in Formulating My Opinion .................... 4
`III.
`Person of Ordinary Skill in the Art .............................................................. 7
`IV.
`The '300 Patent Specification ....................................................................... 8
`V.
`The Claims of the '300 Patent ...................................................................... 9
`VI.
`State of the Art as of May 3, 1999 ............................................................. 11
`VII.
`VIII. Summary Chart of Analysis Over the Art.................................................. 15
`IX.
`Basis of my Analysis with Respect to Anticipation .................................. 15
`X.
`Basis of my Analysis with Respect to Obviousness .................................. 16
`XI.
`Ground 1: Each and Every Element of Claims 1-5, 11, 13, 16-18, 20,
`and 25 of the '300 Patent is Set Forth in Kanebo ....................................... 17
`XII. Ground 2: Claims 1-7, 11, 13, 16-18, 20, and 25 Would Have Been
`Obvious to a POSA in View of Kanebo. ................................................... 31
`XIII. Ground 5: Claims 1-7, 11-13, 16-20, 24, and 25 would have been
`Obvious over Bowser in view of Evans. .................................................... 34
`XIV. Ground 6: Claims 1, 2, 4, 11-13, 16-20, 24, and 25 Would Have Been
`Obvious Over Evans. ................................................................................. 50
`XV. Ground 7: Claims 3, 5, and 8-10 would have been Obvious over Evans
`in view of Coffindaffer. ............................................................................. 58
`XVI. 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). .................. 62
`XVII. Grounds 4 and 9: Claims 21 and 23 would have been Obvious over
`Kanebo (4) or Evans (9) in view of Schwen and Gibson. ......................... 65
`XVIII. Objective Indicia of Nonobviousness ........................................................ 68
`XIX. Conclusion .................................................................................................. 69
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`Inter Partes Review of USPN 6,451,300
`Declaration of Arun Nandagiri (UNL 1003)
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`I, Arun Nandagiri, hereby declare as follows.
`I.
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`Introduction
`I am over the age of eighteen (18) and otherwise competent to make
`1.
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`this declaration.
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`2.
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`I have been retained as an expert witness on behalf of CONOPCO, INC.
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`(UNILEVER) for the above-captioned inter partes review (IPR). I am being
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`compensated for my time in connection with this IPR at my standard legal
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`consulting rate, which003 is $290 per hour. I understand that the petition for inter
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`partes review involves U.S. Patent No. 6,451,300 ("the '300 patent"), UNL 1001,
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`which resulted from U.S. Application No. 09/558,447 ("the '447 application"),
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`filed on April 25, 2000, and alleging a priority date of May 3, 1999. The '300
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`patent names David Scott Dunlop, Susan Marie Guskey, Vincente Eduardo Leyba,
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`and Douglas Allan Royce as the inventors. The
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`'300 patent issued on
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`September 17, 2002, from the '447 application. I further understand that, according
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`to the USPTO records, the '300 patent is currently assigned to The Procter &
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`Gamble Company ("the patentee" or "P&G").
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`3.
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`In preparing this Declaration, I have reviewed the '300 patent and
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`considered each of the documents cited herein, in light of general knowledge in the
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`art. In formulating my opinions, I have relied upon my experience, education and
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`knowledge in the relevant art. In formulating my opinions, I have also considered
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`the viewpoint of a person of ordinary skill in the art ("POSA") (i.e., a person of
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`Inter Partes Review of USPN 6,451,300
`Declaration of Arun Nandagiri (UNL 1003)
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`ordinary skill in the field of shampoos and conditioners, defined further below in
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`Section IV) prior to May 3, 1999.
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`II. My Background and Qualifications
`I am an expert in the field of shampoos and conditioners, including
`4.
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`anti-dandruff conditioning shampoos. I have more than 30 years of experience in
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`formulating shampoos and conditioners and have been personally involved in the
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`formulation of hundreds of hair care products. I received my Masters of Science
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`degree in Pharmacy from Andhra University, India, and my master's thesis was
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`titled "Manufacture of Antibiotics." Additionally, I received my Masters of Science
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`degree in Pharmacy Administration from Brooklyn College of Pharmacy in 1972.
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`From 1970-1972, I was an aerosol chemist at Block Drug company, where I
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`worked with aerosol shampoos and hairsprays.
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`5.
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`From 1972 to 1975, I was a Senior Scientist for the Hair Care and
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`Antiperspirants division of Beecham, Inc. From 1975 to 1982, I was Group Leader
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`of the Hair Care and Antiperspirants division of Shulton, Inc. At both of these
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`positions, I was involved in formulating shampoos and conditioners, and was
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`involved in selecting formulation components and testing of conditioning
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`properties. As Group Leader at Shulton, I also had a group of formulation
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`chemists reporting to me.
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`6.
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`From 1982 to 1989, I was Director of Research and Development for
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`Inter Partes Review of USPN 6,451,300
`Declaration of Arun Nandagiri (UNL 1003)
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`Playtex-Jhirmack, Inc. As Director, I created, planned, delegated and coordinated
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`all research and development activities for the U.S. and Canadian markets. I was
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`actively involved in formulating all types of hair care products, including
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`shampoos and conditioners. In my role in creating shampoo and conditioner
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`formulations, I was involved in determining which components to use in the
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`formulations and at what concentrations. At Playtex-Jhirmack, I worked with anti-
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`dandruff shampoos, including shampoos containing zinc pyrithione and coal tar.
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`7.
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`In 1989, I joined Helene Curtis Industries, Inc., which was acquired
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`by Unilever in 1996. I was Director of the Hair Care Research and Development
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`division of Helene Curtis, and then Unilever, from 1989 to 2000. In this position, I
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`managed and directed all development products in hair shampoos, conditioners and
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`other hair products. I coordinated research activities associated with hair care
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`products and managed a staff of up to 40 scientists, stylists and administrators. I
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`also interacted with research and development personnel to create shampoo and
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`conditioning formulations. I also was involved with research and formulation of
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`anti-dandruff shampoos.
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`8.
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`From 2000 to 2003, I was Director of Hair Care Projects of Unilever
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`de Argentina. In this position, I was on a global team managing Unilever's hair
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`care products around the world. I successfully expanded Unilever's hair care
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`market share in Latin America and established an independently functioning
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`Declaration of Arun Nandagiri (UNL 1003)
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`research team.
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`9.
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`In 2003, I founded Bria Research Labs, a personal care consulting and
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`contract business. Bria Research Labs provides hair care product development and
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`testing services to the personal care industry. I am actively in charge of all of the
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`activities of Bria Research Labs, which include: developing customized shampoo
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`and conditioner formulations; substantiating product claims via hair swatch testing;
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`salon testing of products; providing small scale manufacturing on site; and
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`supporting large scale manufacturing. As founder of Bria, I have been involved in
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`multiple projects formulating shampoos and conditioners from scratch in order to
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`meet client needs. I personally formulated hundreds of shampoo and conditioner
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`formulations and also developed several test methods to evaluate the performance
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`of these products in the laboratory and salon.
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`10. Accordingly, I am an expert in the field of shampoos and conditioners
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`and I was an expert in this field prior to May 3, 1999. My full background is
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`detailed in my curriculum vitae. UNL 1004.
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`III. List of Documents I Considered in Formulating My Opinion
`In formulating my opinion, I have considered the following
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`documents:
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`Unilever
`Exhibit #
`1001
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`1002
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`1003
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`1004
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`1005
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`1006
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`Declaration of Arun Nandagiri (UNL 1003)
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`Description
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`Dunlop et al., U.S. Patent No. 6,451,300, "Anti-Dandruff and
`Conditioning Shampoos Containing Certain Cationic Polymers,"
`(filed April 25, 2000; issued September 17, 2002)
`
`Amendment dated November 13, 2001 from the file history of U.S.
`Patent No. 6,451,300
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`Declaration of Arun Nandagiri
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`Curriculum Vitae of Arun Nandagiri
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`Kanebo, Ltd., Japanese Application No. 9-188614, "Composition
`having Pearl Lustre," (filed January 9, 1996; laid open July 22, 1997)
`(Japanese)
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`Kanebo, Ltd., Japanese Application No. 9-188614, "Composition
`having Pearl Lustre," (filed January 9, 1996; laid open July 22, 1997)
`(English translation)
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`1007 Marsh et al., U.S. Patent No. 7,481,846, "Method of Rapid Hair
`Dyeing," (filed September 22, 2005; issued January 27, 2009)
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`1008
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`1009
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`1010
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`1011
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`Terada, U. S. Patent No. 7,307,050, "Aqueous Hair Cleansing
`Composition Comprising a Sulfate Surfactant Mixture and an
`Amino-Modified Silicone," (filed December 22, 2005; issued
`December 11, 2007)
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`Bowser et al., U.S. Patent No. 5,723,112, "Pyrithione Containing
`Hair Treatment Composition," (filed July 9, 1996; issued March 3,
`1998)
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`Evans et al., WO 97/14405, "Conditioning Shampoos Containing
`Polyalkylene Glycol," (filed October 15, 1996; issued April 24,
`1997)
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`Birkofer, U.S. Patent No. 3,962,418, "Mild Thickened Shampoo
`Compositions with Conditioning Properties," (filed April 8, 1975;
`issued June 8, 1976)
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`Unilever
`Exhibit #
`1012
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`1013
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`1014
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`1015
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`1016
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`1017
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`1018
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`1019
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`1020
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`1021
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`1022
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`1023
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`1024
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`1025
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`1026
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`1027
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`Declaration of Arun Nandagiri (UNL 1003)
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`Description
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`Bartolo et al., U.S. Patent No. 5,202,048, "Personal Cleansing
`Product with Odor Compatible Bulky Amine Cationic Polymer with
`Reduced Odor Characteristics," (filed December 30, 1991; issued
`April 13, 1993)
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`Coffindaffer et al., U.S. Patent No. 5,624,666, "Anti-Dandruff
`Shampoos with Particulate Active Agent and Cationic Polymer,"
`(filed January 20, 1995; issued April 29, 1997)
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`Cardin et al., U.S. Patent No. 5,104,645, "Antidandruff Shampoo
`Compositions," (filed February 2, 1990; issued April 14, 1992)
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`Schwen et al., WO 95/03319, "Cyproterone Acetate Thioacetate,"
`(filed July 13, 1994; issued on February 2, 1995)
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`Intentionally left blank
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`Intentionally left blank
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`Intentionally left blank
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`Intentionally left blank
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`Intentionally left blank
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`Intentionally left blank
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`Intentionally left blank
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`Intentionally left blank
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`Intentionally left blank
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`Polydimethylsiloxane spec. sheet, 5 pages
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`Intentionally left blank
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`Intentionally left blank
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`6
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`Unilever
`Exhibit #
`1028
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`1029
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`1030
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`Declaration of Arun Nandagiri (UNL 1003)
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`Description
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`Intentionally left blank
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`Arch Chemicals ZPT data sheet, 3 pages
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`Gibson, U.S. Patent No. 5,015,470, "Cosmetic Composition," (filed
`December 17, 1987; issued May 14, 1991)
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`IV. Person of Ordinary Skill in the Art
`I understand that a person of ordinary skill in the art ("POSA") is one
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`who is presumed to be aware of all pertinent art, thinks along conventional wisdom
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`in the art, and is a person of ordinary creativity. A POSA of anti-dandruff
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`conditioning shampoos would have had knowledge of the scientific literature
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`concerning use of surfactants as conditioners, as of May 3, 1999. A POSA as of
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`1999 would typically have (i) a Ph.D. or M.S. degree in pharmacy, physical
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`chemistry (colloidal chemistry), chemistry or biochemistry (or a related field) with
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`at least a 2-3 years of experience in the development of shampoo and conditioner
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`formulations, or (ii) a B.S. in pharmacy, chemistry or biochemistry (or a related
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`field) with significant practical experience (4 or more years) in the development of
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`shampoo and conditioner formulations. A POSA may work as part of a multi-
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`disciplinary team and draw upon not only his or her own skills, but also take
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`advantage of certain specialized skills of others in the team, to solve a given
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`problem. For example, a formulator, a colloidal chemist, and a surfactant
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`specialist may be a part of the team.
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`V.
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`The '300 Patent Specification
`13. This declaration is being submitted together with a petition for inter
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`partes review of claims 1-25 of the '300 patent.
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`14.
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`I have considered the disclosure and file history of the '300 patent in
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`light of general knowledge in the art as of the earliest alleged priority date of the
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`'300 patent, May 3, 1999.
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`15. The
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`'300 patent is directed to anti-dandruff and conditioning
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`shampoos. UNL 1001, Abstract. The '300 patent alleges that the shampoo
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`compositions "provide a superior combination of anti-dandruff efficacy and
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`conditioning . . . ." UNL 1001, Abstract. The '300 patent states that:
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`Disclosed are shampoo compositions that provide a
`superior combination of anti-dandruff efficacy and
`conditioning, and a method of cleansing and conditioning
`the hair comprising applying to the hair and scalp an
`amount of said compositions. The anti-dandruff and
`conditioning shampoos comprise: (A) from about 5% to
`about 50%, by weight, of an anionic surfactant; (B) from
`about 0.01% to about 10%, by weight, of a non-volatile
`conditioning agent; (C) from about 0.1% to about 4%, by
`weight, of an anti-dandruff particulate; (D) from about
`0.02% to about 5%, by weight, of at least one cationic
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`Declaration of Arun Nandagiri (UNL 1003)
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`polymer; (E) from 0.005% to about 1.5%, by weight of
`the composition, of a polyalkylene glycol corresponding
`to the formula: H(OCH2-CHR)n-OH, (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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`UNL 1001, Abstract.
`VI. The Claims of the '300 Patent
`16. Claim 1 of the '300 patent is directed to:
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`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:
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`(i) wherein R is selected from the group consisting of
`hydrogen, methyl and mixtures thereof, ii) wherein n is
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`an integer having an average value from about 1,500 to
`about 120,000; and f) water.
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`UNL 1001, 33:47-67.
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`17. Claims 12 and 29 recites that the "anti-dandruff particulate is a zinc
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`salt of 1-hydroxy-2-pyridinethione." It is clear from the specification of the '300
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`patent and the use of this term in the art that a zinc salt of 1-hydroxyl-2-
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`pyridinethione is equivalent to "zinc pyrithione." For example, the '300 patent
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`states that the preferred anti-dandruff agent is the zinc salt of 1-hydroxy-2-
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`pyridinethione, which is "(known as 'zinc pyridinethione' or 'ZPT')." UNL 1001,
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`16:55-59. The Example formulations use the term zinc pyrithione and state in a
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`footnote "ZPT having an average particle size of 2.5 μm, available from
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`Arch/Olin." UNL 1001, 32:30-51, fn. 4. When referring to the anti-dandruff agent
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`later in the '300 patent, the term "zinc pyrithione" is used. The '300 patent states:
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`"[i]t is also contemplated that when the anti-dandruff particulate employed is zinc
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`pyrithione, and/or if other optional hair growth regulating agents are employed, the
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`shampoo compositions of the present invention, may, provide for the regulation of
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`growth of the hair." UNL 1001, 31:41-45. Thus, the '300 patent uses the terms
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`"zinc salt of 1-hydroxy-2-pyridinethione," "ZPT," and "zinc pyrithione" as all
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`referring to the same chemical compound.
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`18. Any term I have not expressly defined above, I have given its plain
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`Declaration of Arun Nandagiri (UNL 1003)
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`and ordinary meaning under a broadest reasonable claim construction.
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`VII. State of the Art as of May 3, 1999
`19. Anti-dandruff shampoos having good conditioning properties were
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`known before 1999. Anti-dandruff agents, such as ZPT, had already been
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`formulated into conditioning shampoos, as evidenced by the disclosures of, for
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`example, Kanebo, Bowser and Evans. UNL 1006, 1009, and 1010, respectively.
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`20. The process of formulating a conditioning anti-dandruff shampoo was
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`well understood by 1999. Conditioning hair involves depositing a cationic
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`polymer along the length of the anionically charged hair shaft in an amount
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`sufficient to make the hair feel conditioned without causing the hair to feel
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`unclean. Effective conditioning while maintaining a good clean feeling is often
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`accomplished by using cationic conditioning polymers with molecular weights
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`("MWs") less than 700,000 g/mol.1
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`21. Treating the hair and scalp for dandruff involves depositing an
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`antimicrobial agent, such as ZPT, along the length of the hair shaft and on the
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`scalp. The anti-dandruff agents approved for use in the U.S. in 1999, including
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`ZPT, are insoluble and generally suspended in formulations to allow for their
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`deposition on the hair and scalp. See, e.g., UNL 1009, 1:15-2:25. It was known as
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`1 All molecular weights referred to are in g/mol unless otherwise noted.
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`of 1999 that water soluble cationic deposition aids could be used to enhance the
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`deposition of insoluble anti-dandruff agents on the hair and scalp. See, e.g., Bowser
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`4:62-67.
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`22.
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`It was also well known by 1999 to use polyalkylene glycols to
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`enhance the spreadability of shampoos on the hair. For example, Evans teaches:
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`"[i]t has also been found that these selected polyalkylene glycols, when added to a
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`silicone-containing shampoo composition, enhance spreadability of the shampoo
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`compositions in hair. Enhanced spreading of the shampoo composition during
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`application provides consumers with a perception of enhanced conditioning
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`performance." UNL 1010, 20:28-32.
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`23. The shampoo formulation field was well developed prior to the EPD.
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`The state of the art was well established with respect to the components of the
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`claimed shampoo compositions.
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`24. Exemplary relevant art that published before May 3, 1999 include the
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`references described below.
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`25. Kanebo. Kanebo is Japanese Patent Application No. 08/019,389.
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`Kanebo was filed January 9, 1996 and published July 22, 1997.2 Kanebo is entitled
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`"Composition Having Pearl Lustre." Kanebo discloses anti-dandruff conditioning
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`2 A certified English translation of Kanebo is provided as UNL 1006. All
`citations will be made to the English translation.
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`shampoos containing 10.0% of the anionic surfactant ammonium lauryl sulphate,
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`5.0% of the conditioning agent dimethyl polysiloxane, 0.5% of the anti-dandruff
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`agent zinc pyrithione, 1.0% of the cationic polymer Catinal HC-200, 0.1% of the
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`polyethylene glycol Polyox WSR-301 and water. 3 UNL 1006, ¶ [0037], pp. 10-11.
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`26. Bowser. Bowser is U.S. Patent No. 5,723,112. Bowser was filed July
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`9, 1996 and issued March 3, 1998. Bowser is entitled "Pyrithione Containing Hair
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`Treatment Composition." Bowser discloses shampoo compositions containing
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`anionic surfactant, non-volatile conditioning agent, and water. UNL 1009, 8:25-
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`27; 8:44-48; 8:49-51; and 6:12-15. Bowser also teaches that the shampoo
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`compositions contain anti-dandruff particulates and cationic polymers. UNL 1009,
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`8:25-34. Bowser also discloses optionally containing "foam boosters." UNL 1009,
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`6:21-31. A POSA would have recognized that the class of foam boosters disclosed
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`by Bowser includes poylalkylene glycols.
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`27.
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` Evans. Evans is International Patent Application Publication WO
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`97/14405. Evans was filed October 15, 1996 and claims priority to U.S. Patent
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`Application No. 08/543,665, which was filed October 16, 1995. Evans is entitled
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`"Conditioning Shampoos Containing Polyalkylene Glycol." Evans discloses a hair
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`conditioning shampoo containing 5 to 30% of an anionic surfactant, 0.05 to 10% of
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`an insoluble silicone conditioning agent and a polyalkylene glycol with an average
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`3 Unless otherwise noted, percentage values referred are percent by weight.
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`n value of from 1,500 to 25,000. UNL 1010, 3:6, 11:3, 32:claim 1. Evans also
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`Declaration of Arun Nandagiri (UNL 1003)
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`discloses optional anti-dandruff agents such as pyridinethione salts at
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`concentrations of 0.1% to 0.4% and cationic polymers as conditioning agents.
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`UNL 1010, 24 and 27.
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`28.
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` Cardin. Cardin is U.S. Patent No. 5,104,645. Cardin was filed
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`February 2, 1990 and issued April 14, 1992. Cardin is entitled "Antidandruff
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`Shampoo Compositions." Cardin discloses anti-dandruff shampoos containing
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`pyridinethione salts, including zinc pyridinethione. UNL 1014, 6:4-26. Cardin
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`discloses that "[t]he pyridinethione salts useful herein take the form of water-
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`insoluble flat platelet particles which have a mean sphericity of less than about
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`0.65, preferably from about 0.20 to about 0.54, and a median particle size of from
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`about 2 µ to about 15 µ, preferably from about 5 µ to about 9 µ, the particle size
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`being expressed as the median equivalent diameter of a sphere of equal volume."
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`UNL 1014, 6:26-36.
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`29. Coffindaffer. Coffindaffer is U.S. Patent No. 5,624,666. Coffindaffer
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`was filed January 20, 1995 and issued April 29, 1997. Coffindaffer is entitled
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`"Anti-Dandruff Shampoos with Particulate Active Agent and Cationic Polymer."
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`Coffindaffer discloses an "anti-dandruff shampoo composition …, wherein said
`
`cationic polymer has a weight average molecular weight of from about 200,000 to
`
`
`
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`14
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`about 5,000,000 and a charge density of from about 0.6 meq/g to about 4 meq/g."
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`Inter Partes Review of USPN 6,451,300
`Declaration of Arun Nandagiri (UNL 1003)
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`UNL 1013, 20:45-48.
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`30. Schwen. Schwen is International Publ. No. WO 95/003319. Schwen
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`was filed July 13, 1994 and published February 2, 1995. Schwen is entitled
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`"Cyproterone Acetate Thioacetate." Schwen discloses shampoos and conditioners
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`containing the hair growth agents cyproterone acetate, minoxidil and finerastide.
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`UNL 1015, 3:4-5, 5:30-31, 11:4-25.
`
`VIII. Summary Chart of Analysis Over the Art
`Grounds 35 U.S.C. (pre-
`Index of Reference(s)
`March 16, 2013)
`§102
`
`Kanebo
`
`1
`
`2
`
`3
`4
`
`5
`6
`
`7
`
`8
`9
`
`§103
`
`§103
`§103
`
`§103
`§103
`
`§103
`
`§103
`§103
`
`Kanebo
`
`Kanebo and Cardin
`Kanebo, Schwen, and
`Gibson
`Bowser and Evans
`Evans
`
`Evans and
`Coffindaffer
`Evans and Cardin
`Evans, Schwen, and
`Gibson
`
`'300 Patent Claims
`
`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
`21, 23
`
`IX. Basis of my Analysis with Respect to Anticipation
`It is my understanding that a reference anticipates a claim if it
`31.
`
`discloses each and every element recited in the claim, arranged as in the claim, so
`
`
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`15
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`
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`
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`as to enable one of skill in the art to make and use the claimed invention without
`
`Inter Partes Review of USPN 6,451,300
`Declaration of Arun Nandagiri (UNL 1003)
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`the need for undue experimentation in light of the general knowledge available in
`
`the art. The factors that I have considered in determining whether a reference sets
`
`forth the elements of a claim in a sufficient manner such that a POSA could have
`
`readily made and used the claimed invention include: the breadth of the claim, the
`
`nature of the invention, the state of the prior art, the level of one of ordinary skill,
`
`the level of predictability in the art, the amount of direction provided by the
`
`reference, the existence of working examples, and the quantity of experimentation
`
`needed to make or use the invention claimed.
`
`X.
`
`Basis of my Analysis with Respect to Obviousness
`I understand that an obviousness analysis involves comparing a claim
`32.
`
`to the prior art to determine whether the claimed invention would have been
`
`obvious to a person of ordinary skill in the art in view of the prior art, and in light
`
`of the general knowledge in the art. I also understand when a person of ordinary
`
`skill in the art would have reached the claimed invention through routine
`
`experimentation, the invention may be deemed obvious. I understand that a finding
`
`of obviousness for a specific range or ratio in a patent can be overcome if the
`
`claimed range or ratio is proven to be critical to the performance or use of the
`
`claimed invention.
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`
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`16
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`33.
`
`I also understand that obviousness can be established by combining or
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`Inter Partes Review of USPN 6,451,300
`Declaration of Arun Nandagiri (UNL 1003)
`
`modifying the teachings of the prior art to achieve the claimed invention. It is also
`
`my understanding that where this is a reason to modify or combine the prior art to
`
`arriving at the claimed invention, there must also be a reasonable expectation of
`
`success in so doing. I understand that the reason to combine prior art references
`
`can come from a variety of sources, not just the prior art itself or the specific
`
`problem the patentee was trying to solve. And I understand that the references
`
`themselves need not provide a specific hint or suggestion of the alteration needed
`
`to arrive at the claimed invention; the analysis may include recourse to logic,
`
`judgment, and common sense available to a person of ordinary skill that does not
`
`necessarily require explication in any reference.
`
`34.
`
`I understand that when considering the obviousness of an invention,
`
`one should also consider whether there are any secondary considerations that
`
`support the nonobviousness of the invention. I understand that secondary
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`considerations of nonobviousness include failure of others, copying, unexpectedly
`
`superior results, perception in the industry, commercial success, and long-felt but
`
`unmet need.
`
`XI. Ground 1: Each and Every Element of Claims 1-5, 11, 13, 16-18, 20, and
`25 of the '300 Patent is Set Forth in Kanebo
`35. As shown in the claim charts and discussion below, each and every
`
`element of claims 1-5, 11, 13, 16-18, 20 and 25 is disclosed in Kanebo and
`17
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`arranged as claimed. Further, the disclosure of Kanebo sets forth the elements
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`Inter Partes Review of USPN 6,451,300
`Declaration of Arun Nandagiri (UNL 1003)
`
`shown in the claim chart in a sufficiently detailed manner such that a POSA could
`
`have made and used the claimed composition without undue experimentation in
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`light of the general knowledge in the art.
`
`36. Claim 1. As shown in the chart and explanation below, a POSA
`
`reading Kanebo would have understood that Kanebo discloses a shampoo
`
`composition comprising an anionic surfactant, a non-volatile conditioning agent,
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`the anti-dandruff agent ZPT, a cationic polymer, a polyalkylene glycol having the
`
`recited formula, and water, all in the amounts claimed.
`
`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%, 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;
`
`Disclosure in Kanebo
`"Example 10 (Anti-dandruff shampoo)
`(in %)"4 (UNL 1006, 10:¶0037)
`Example 10: "Ammonium lauryl sulphate
`10.0 [%]"5 (UNL 1006, 11:1)
`
`Example 10: "Dimethyl polysiloxane
`(10,000 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)
`
`
`4 Boldface type in the claim charts is added for emphasis.
`5 All amounts in Kanebo are % by weight. UNL 1006, 2:[0003].
`18
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`

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`
`
`The '300 Patent
`
`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.
`
`
`
`Inter Partes Review of USPN 6,451,300
`Declaration of Arun Nandagiri (UNL 1003)
`
`Disclosure in Kanebo
`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)
`
`Example 10: "Water balance" (UNL
`1006, 11:16)
`
`37. As shown in the claim chart above, Kanebo discloses every
`
`component of the shampoo composition of claim 1 of the '300 patent. Kanebo
`
`discloses an example formulation with amounts of these claimed components that
`
`fall in the % ranges claimed. The % amounts listed in Kanebo are % by weight.
`
`38. Example 10 of Kanebo is a shampoo composition. The following
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`components in Kanebo meet elements (a)–(f) in claim 1. (a) "Ammonium lauryl
`
`sulphate" is an anionic surfactant, as admitted by patent owner. UNL 1001, 3:3
`
`and 4:5. The terms "sulfate" and "sulphate" are well-known alternative spellings
`
`for the same chemical moiety: SO4. (b) "Dimethyl polysiloxane" is a non-volatile
`
`
`
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`19
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`conditioning
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`Inter Partes Review of USPN 6,451,300
`Declaration of Arun Nandagiri (UNL 1003)
`
`agent.
`
` The
`
`patent
`
`owner
`
`has
`
`also
`
`admitted
`
`that
`
`"[p]olydimethylsiloxane" is a non-volatile, silicone conditioning agent. UNL 1001,
`
`5:62 and 8:19-28. As evidenced by the specification sheet for polydimethyl
`
`siloxane published by the Food and Agriculture Organization of the United
`
`Nations, a POSA would have understood that "Dimethyl polysiloxane" and
`
`"[p]olydimethylsiloxane" are variations of the name for the same compound.6 UNL
`
`1025, 1.
`
`39. Kanebo necessarily discloses "an anti-dandruff particulate" as recited
`
`in claim 1. Example 10 of Kanebo discloses a shampoo composition containing
`
`0.5% zinc pyrithione. UNL 1006, 56:24-30. Zinc pyrithione is a water insoluble
`
`powder. See UNL 1029, 1. As zinc pyrithione is water insoluble, it will always be
`
`present in particulate form in shampoo formulations. Any disclosure of zinc
`
`pyrithione as an AD agent necessarily discloses an AD particulate. (c) Zinc
`
`pyrithione is an anti-dandruff agent that is in particulate form The patent owner
`
`has also admitted that zinc pyridinethione,