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 IPR: Unassigned
`_____________________
`
`
`
`PETITION FOR INTER PARTES REVIEW OF
`U.S. PATENT NO. 6,974,569 UNDER 35 U.S.C. §§ 311-319 and
`37 C.F.R. §§ 42.1-.80, 42.100-.123
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`
`
`Mail Stop "PATENT BOARD"
`Patent Trial and Appeal Board
`U.S. Patent and Trademark Office
`P.O. Box 1450
`Alexandria, VA 22313-1450
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`DNA Genotek, Inc. Exhibit 2003 Page 1
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`Petition for Inter Partes Review of USPN 6,974,569
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`TABLE OF CONTENTS
`INTRODUCTION .......................................................................................... 1 
`I. 
`II.  OVERVIEW ................................................................................................... 1 
`III.  GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)); PROCEDURAL
`STATEMENTS .............................................................................................. 2 
`IV.  MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1)) ..................................... 3 
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`V. 
`REASONS THEREFOR (37 C.F.R. § 42.22(a)) ........................................... 4 
`VI.  CLAIM CONSTRUCTION ........................................................................... 4 
`VII.  PERSON OF ORDINARY SKILL IN THE ART AND STATE OF THE
`ART ................................................................................................................ 6 
`VIII.  IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b)) .................. 9 
`A.  Ground 1: Claims 16, and 20 – 22 would have been obvious
`over Kanebo and Kalla ........................................................................ 10 
`B.  Ground 2: Claim 27 would have been obvious over Kanebo,
`Kalla and Evans ................................................................................... 25 
`C.  Ground 3: Claims 20 – 22 Would Have Been Obvious to a
`POSA Over Kanebo, Sime and Hoshowski Hair Care ....................... 28 
`D.  Ground 4: Claims 14 and 16 would have been Obvious over
`Kanebo, Sime and Cardin. ................................................................... 33 
`Ground 5: Claims 20 and 21 Would Have Been Obvious
`Over Kanebo, Cseh and Cosmedia ...................................................... 37 
`Ground 6: Claims 24 and 25 Would Have Been Obvious
`Over Kanebo and Cothran ................................................................... 39 
`G.  Ground 7: Claim 13 Would Have Been Obvious Over
`Kanebo, Ramachandran and Hoeschele .............................................. 43 
`H.  Ground 8: Claims 31 and 33 Would Have Been Obvious
`Over Kanebo, Ramachandran and Bar-Shalom .................................. 45 
`K.  Ground 9: Claims 20 - 22 would have been obvious over
`Reid, Sime and Cardin ........................................................................ 48 
`IX.  Objective Indicia of Nonobviousness ........................................................... 58 
`X. 
`CONCLUSION ............................................................................................. 59 
`
`E. 
`
`F. 
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`ii
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`I.
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`INTRODUCTION
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`Petition for Inter Partes Review of USPN 6,974,569
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`
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`CONOPCO, INC'S ("Petitioner") Petition for Inter Partes Review seeks
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`cancellation of claims 13, 14, 16, 20 – 22, 24, 25, 27, 31 and 33 ("challenged
`
`claims") of U.S. Pat. No. 6,974,569 to Dunlop et al. ("the '569 patent") (UNL
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`1001), which is owned by the Procter & Gamble Company ("P&G").
`
`II. OVERVIEW
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`As shown herein, the challenged claims of the ‘569 patent should never have
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`been issued because they are unpatentable over the art cited herein. The '569 patent
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`is an attempt to re-claim known shampoo compositions by claiming index values
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`allegedly achieved by the claimed formulations. The claimed index values are
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`allegedly related to the conditioning and antidandruff ("AD") properties of the
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`claimed compositions. But
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`this petition demonstrates
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`that
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`the claimed
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`compositions were merely obvious variants of prior art compositions. Additionally,
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`a person of skill in the art would have been led to conduct routine experiments to
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`optimize for the desirable properties reflected by the claimed index values –
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`namely, anti-dandruff efficacy (i.e., bioavailability and coverage), wet hair comb-
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`ability, clean hair feel, and antimicrobial activity. As the PTAB held in IPR2013-
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`00505, Paper No. 9 (dated February 12, 2014), a skilled artisan would have
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`recognized that each of these properties is desirable, at least one test for optimizing
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`each property was available at the time the invention was made, and optimizing for
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`1
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`such properties would have been a matter of routine experimentation.
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`Petition for Inter Partes Review of USPN 6,974,569
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`
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`This petition is submitted with a Motion for Joinder within one month of the
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`institution of trial to join the petitioned Grounds with those instituted in IPR2013-
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`00505. The petition provides information that addresses the concerns previously
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`expressed by the Board in denying inter partes review of the challenged claims of
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`this petition. As shown herein, prior art references such as Kalla and Sime show
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`that cationic guar derivatives having the molecular weights and charge densities
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`recited in the claims of the '569 patent were known in the art and had been used to
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`improve the efficacy of AD dandruff shampoos by improving deposition of the AD
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`agent. As also shown herein, a POSA would have known that the common AD
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`agent zinc pyrithione is inherently in particulate form in shampoo formulations and
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`that the claims of the '569 patent recite well-known concentrations of particulate
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`AD agent.
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`Petitioner is reasonably likely to prevail in showing obviousness over the
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`prior art. Inter partes review of the '569 patent should be instituted.
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`III. GROUNDS FOR STANDING (37 C.F.R. § 42.104(a)); PROCEDURAL
`
`STATEMENTS
`
`Petitioner certifies that (1) the '569 patent is available for IPR; and (2)
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`Petitioner is not barred or estopped from requesting IPR of any claim of the '569
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`patent on the grounds identified herein. This Petition is filed in accordance with 37
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`2
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`
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`CFR § 42.106(a). Concurrently filed herewith are a Power of Attorney and Exhibit
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`Petition for Inter Partes Review of USPN 6,974,569
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`
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`List pursuant to § 42.10(b) and § 42.63(e), respectively. The required fee is paid
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`through online credit card payment. Please charge any fee deficiencies or credit
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`overpayments to Deposit Acct. No. 19-0036 (Customer ID No. 45324).
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`IV. MANDATORY NOTICES (37 C.F.R. § 42.8(a)(1))
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`Each Real Party-In-Interest (37 C.F.R. § 42.8(b)(1)) is: CONOPCO, INC.
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`DBA UNILEVER; UNILEVER, PLC; UNILEVER NV.
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`Petitioner Provides Notice of Related Matters (37 C.F.R. § 42.8(b)(2)):
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`Judicial matters: Procter & Gamble Co. v. Conopco Inc., 13-cv-00732, U.S.
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`District Court, Southern District of Ohio. Administrative matters: Inter partes
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`review IPR2013-00505 for the '569 patent, in which trial on claims 1-12, 15, 17-
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`19, 23, 26, 28-30 and 32 was instituted; Inter partes review IPR2013-00509 for
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`U.S. Pat. No. 6,451,300, ("the '300 patent") which issued from a distinct
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`application having overlapping inventors and claiming priority to distinct
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`applications filed on the same day as the provisional application to which the '569
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`patent claims priority, in which trial on claims 1-5, 11-13, 16-20, 24 and 25 was
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`instituted. In another Petition filed concurrently herewith, Petitioner seeks inter
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`partes review of the '300 patent over references including those cited herein. Inter
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`partes review IPR2013-00510 for U.S. Pat. 6.649,155, which also issued from a
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`distinct application having overlapping inventors and claiming priority to distinct
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`3
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`applications filed on the same day as the provisional application to which the '569
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`Petition for Inter Partes Review of USPN 6,974,569
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`patent claims priority.
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`Designation of Lead and Back-Up Counsel (37 C.F.R. § 42.8(b)(3)):
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`Lead Counsel
`Eldora L. Ellison (Reg. No. 39,967)
`STERNE, KESSLER, GOLDSTEIN &
`FOX P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`202.772.8508 (telephone)
`202.371.2540 (facsimile)
`eellison-PTAB@skgf.com
`
`Back-Up Counsel
`Robert Greene Sterne (Reg. No. 28,912)
`STERNE, KESSLER, GOLDSTEIN & FOX
`P.L.L.C.
`1100 New York Avenue, NW
`Washington, DC 20005
`202.772.8555 (telephone)
`202.371.2540 (facsimile)
`rsterne-PTAB@skgf.com
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`Petitioner Provides Notice of Service Information (37 C.F.R. §
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`42.8(b)(4)): Please direct all correspondence to lead counsel at the above address.
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`Petitioner consents to email service at: eellison-PTAB@skgf.com and rsterne-
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`PTAB@skgf.com.
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`V.
`STATEMENT OF THE PRECISE RELIEF REQUESTED AND THE
`REASONS THEREFOR (37 C.F.R. § 42.22(a))
`Petitioner requests IPR and cancellation of claims 13, 14, 16, 20 – 22, 24,
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`25, 27, 31 and 33. Petitioner's full statement of the reasons for the relief requested
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`is set forth in § VIII below.
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`VI. CLAIM CONSTRUCTION
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`Under 37 C.F.R. § 42.100(b), the challenged claims must be given their
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`broadest reasonable interpretations ("BRI") in light of the patent specification.
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`The BRI of
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`the claim
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`term "bioavailability/coverage
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`index value"
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`4
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`encompasses results from skin disk diffusion assays that were well known by May
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`Petition for Inter Partes Review of USPN 6,974,569
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`3, 1999, the earliest possible priority date ("EPD"). (See UNL 1023, 1337-1340;
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`UNL 1020, 4:53-56.) The '569 patent discloses a testing method where skin disks
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`treated with shampoo compositions are contacted with agar plates and the average
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`area colonized on the plate is assessed, a method comparable to skin disk diffusion
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`tests known in the art. (UNL 1001, 34:42-36:10; UNL 1043, ¶18.)
`
`The BRI of the claim term "first conditioning index value" encompasses
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`results from combing force assays that known by the EPD. (See UNL 1021, 25:36-
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`61.) The '569 patent discloses a testing method where the force needed to pull a
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`comb through a swatch of hair is measured by a force transducer, a method
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`comparable to combing force tests known in the art. (UNL 1001, 37:31-38:58;
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`UNL 1043, ¶19.)
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`The BRI of the claim term "second conditioning index value" encompasses
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`results from clean hair feel assays that were known by the EPD. (See UNL 1021,
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`22:12-44.) The '569 patent discloses a testing method where a panel of testers
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`evaluates the clean hair feel of swatches of hair by touch, a method comparable to
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`clean hair feel tests known in the art. (UNL 1001, 40:28-42:11; UNL 1043, ¶20.)
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`The BRI of the claim term "minimal inhibitory concentration index value"
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`encompasses results from minimal inhibitory concentration ("MIC") assays that
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`were well known in 1999. (See UNL 1020, 6:59-7:17.) The '569 patent discloses a
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`5
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`standard MIC assay for determining the minimal concentration at which an agent
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`Petition for Inter Partes Review of USPN 6,974,569
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`prevents antimicrobial growth. (UNL 1001, 42:50-43:11; UNL 1043, ¶21.)
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`As recognized by the Board in IPR2013-00505, the claimed index values are
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`"not limited to any particular method of assessing the values of the indices." (Paper
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`No. 9 dated 2/12/14, 12.)
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`The BRI for the claim term "anti-dandruff particulate is a zinc salt of 1-
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`hydroxy-2-pyridinethione" encompasses "zinc pyrithione." The '569 patent states
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`that the preferred AD agent is the zinc salt of 1-hydroxy-2-pyridinethione, which is
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`"(known as 'zinc pyridinethione' or 'ZPT')." (UNL 1001, 16:55-59.) The Example
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`formulations use the term "zinc pyrithione" and state in a footnote "ZPT having an
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`average particle size of 2.5 μm…." (UNL 1001, 32:30-51, fn. 4.) Thus, the '569
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`patent uses the terms "zinc salt of 1-hydroxy-2-pyridinethione," "ZPT," and "zinc
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`pyrithione" as all referring to the same compound. (UNL 1043, ¶22.)
`
`A POSA would also understand that the specification of the '569 patent does
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`not provide a specific method for measuring molecular weights of polymers. (UNL
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`1043, ¶23.)
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`All other terms of all challenged claims are presumed to take on their
`
`ordinary and customary meanings.
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`VII. PERSON OF ORDINARY SKILL IN THE ART AND STATE OF THE
`ART
`
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`A person of ordinary skill in the art (“POSA”) is a hypothetical person who
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`is presumed to be aware of all pertinent art, thinks along conventional wisdom in
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`Petition for Inter Partes Review of USPN 6,974,569
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`the art, and is a person of ordinary creativity. With respect to the '569 patent, a
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`POSA would have had knowledge of the scientific literature concerning use of
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`surfactants as conditioners, as of 1999. A POSA as of 1999 would typically have
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`(i) a Ph.D. or M.S. degree in pharmacy, physical chemistry (colloidal chemistry),
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`chemistry or biochemistry (or a related field) with at least a 2-3 years of experience
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`in the development of shampoo and conditioner formulations, or (ii) a B.S. in
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`pharmacy, chemistry or biochemistry (or a related field) with significant practical
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`experience (4 or more years) in the development of shampoo and conditioner
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`formulations. A POSA may work as part of a multi-disciplinary team and draw
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`upon not only his or her own skills, but also take advantage of certain specialized
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`skills of others in the team, to solve a given problem. For example, a formulator, a
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`colloidal chemist and a surfactant specialist might be part of the team. (UNL 1043,
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`¶13.)
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`AD shampoos having good conditioning properties were known before
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`1999. AD agents, such as ZPT, had already been formulated into conditioning
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`shampoos, as evidenced by the disclosures of, for example, Kanebo (UNL 1006),
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`Sime (UNL 1028), Reid (UNL 1018) and Evans (UNL 1010). The process of
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`formulating a conditioning AD shampoo was also well understood by 1999. (UNL
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`1043, ¶25.)
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`7
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`AD shampoos containing cationic guar derivatives having molecular weights
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`of about 50,000 to about 2,500,000 and charge densities of about 0.1 me/q to about
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`0.9 meq/g were also known before 1999. For example, Kalla (UNL 1031), which
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`recites AD shampoos, states that "[t]he cationic guar polymers for use in the
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`shampoo compositions are cationically substituted galactomannan (guar) gum
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`derivatives. The molecular weight of such derivatives ranges generally from about
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`2,000 to about 3,000,000." (UNL 1031, 14:15-17.) Sime (UNL 1028), which
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`recites AD shampoos, also discloses that the "cationic polymers employed in this
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`invention have a molecular weight within the range from about 2,000 to about
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`3,000,000." (UNL 1028, 2:39-42.) Cothran (UNL 1044) a Procter & Gamble
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`application, discloses cationic guar derivatives and states that the "cationic
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`polymers hereof will generally have a weight average molecular weight which is at
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`least about 200,000 … more preferably about 800,000 to about 2 million" (UNL
`
`1044, 17.) Uchiyama (UNL 1045), a Procter & Gamble application, discloses
`
`cationic guar derivatives and states that the "cationic polymers hereof will
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`generally have a weight average molecular weight which is at least about 5,000, …
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`Preferably, the molecular weight is from about 100,000 to about 2 million." (UNL
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`1045, 18.) Thus, it is clear from the teachings in the art that the molecular weight
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`ranges for cationic guar derivatives recited in the claims were well-known in the
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`art. (UNL 1043, ¶68.)
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`Sime also states that "cationic derivatives are obtained by reaction between
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`the hydroxyl groups of the polygalactomannan and reactive quaternary ammonium
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`compounds. The degree of substitution of the cationic groups is sufficient to
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`provide a cationic charge density of 0.0001 to 0.0017 [0.1 to 1.7 meq/g]." (UNL
`
`1028, 2:66-68.) Thus, a POSA would have known to use the cationic guar
`
`derivatives having a charge density of about 0.1 me/q to about 0.9 meq/g in
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`formulating AD shampoos.
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`
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`As evidenced by the references described herein, as of May 3, 1999, the
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`earliest possible priority date of the '569 patent, the subject matter claims in claims
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`13, 14, 16, 20 – 22, 24, 25, 27, 31 and 33 was well known to a POSA.
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`VIII. IDENTIFICATION OF CHALLENGE (37 C.F.R. § 42.104(b))
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`IPR of the challenged claims of the '569 patent is requested on the grounds
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`for unpatentability listed in the index below. Per 37 C.F.R. § 42.6(d), copies of the
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`references are filed herewith. In support of
`
`the proposed grounds for
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`unpatentability, this Petition is accompanied by a declaration of expert Mr. Arun
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`Nandagiri (UNL 1043), which explains what the prior art would have conveyed to
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`a POSA. In related IPR2013-00505, the Board credited Mr. Nandagiri's expert
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`testimony on the '569 patent and prior art. (Paper No. 9 dated 2/12/14, 10, fn. 11.)
`
`'569 Patent Claims
`Grounds Index of Reference(s)
`16, 20 – 22
`1
`Kanebo and Kalla
`27
`2
`Kanebo, Kalla and Evans
`3
`Kanebo, Sime and Hoshowski Hair Care 20 – 22
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`Petition for Inter Partes Review of USPN 6,974,569
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`'569 Patent Claims
`Grounds Index of Reference(s)
`14, 16
`4
`Kanebo, Sime and Cardin
`20, 21
`5
`Kanebo, Cseh and Cosmedia
`24, 25
`6
`Kanebo and Cothran
`13
`7
`Kanebo, Ramachandran and Hoeschele
`8
`Kanebo, Ramachandran and Bar-Shalom 31, 33
`9
`Reid, Sime and Cardin
`20 - 22
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`A. Ground 1: Claims 16, and 20 – 22 would have been obvious over
`Kanebo and Kalla
`Japanese Appl. No. 08/019,389 to Kanebo, Ltd. was laid-open on July 22,
`
`1997 as Laid-Open No. 09/188,614A (“Kanebo”). (UNL 1005, certified English
`
`language translation provided as UNL 1006.) International Publ. No. WO
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`97/26854 to Kalla et al. ("Kalla"; UNL 1031) published on July 31, 1997. Both
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`Kanebo and Kalla qualify as prior art to the ‘569 patent under 35 U.S.C. § 102(b).
`
`Kanebo discloses AD conditioning shampoos preferably containing cationic
`
`guar derivatives and having improved pearl lustre and spreadability. (UNL 1006,
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`[0014], [0037].) Kalla discloses AD shampoos containing cationic guar derivatives
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`for enhancing the deposition of antimicrobial agents. (UNL 1031, 14:3-5.)
`
`As shown by the following claim charts and discussion herein, claims 16,
`
`and 20 – 22 would have been obvious to a POSA over the teachings of Kanebo and
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`Kalla. As discussed below, independent claim 1 and intervening claims 12 and 18
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`would have been obvious to a POSA over Kanebo alone.
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`The Board has already instituted trial on claims 1, 12 and 18 of the '569
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`patent over Kanebo in related IPR2013-00505. (Paper No. 9 dated 2/12/14, 13 and
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`10
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`18.) Thus, the Board has already recognized that Petitioner has a reasonable
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`Petition for Inter Partes Review of USPN 6,974,569
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`likelihood in showing that claims 1, 12 and 18 would have been obvious over
`
`Kanebo alone.
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`For the reasons discussed below, claims 16, and 20 – 22 would have been
`
`obvious over Kanebo and Kalla. Before turning to the challenged dependent
`
`claims, petitioner first provides a discussion of claim 1 and intervening claims 12
`
`and 18, from which the challenged claims directly or indirectly depend. The claim
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`chart for base claim 1 below shows disclosures from Kalla to show the common
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`components between the shampoo formulations provided in Kanebo and Kalla and
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`provides further support for a reason to combine Kanebo and Kalla.
`
`The '569 patent
`1. A shampoo composition
`comprising:
`
`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;
`
`Disclosure of Kanebo and Kalla
`Kanebo: "Example 10 (Anti-dandruff
`shampoo) (in %)" (UNL 1006, [0037])
`Kalla: "Disclosed are anti-dandruff shampoo
`compositions with improved deposition of
`antimicrobial agents." (UNL 1031, Abstract)
`Kanebo: Example 10: "Ammonium lauryl
`sulphate [an anionic surfactant] 10.0 [%]"
`(UNL 1006, [0037])
`Kalla, under the heading "Anionic Surfactant"
`states: "Concentrations of anionic surfactant
`can range from about 7% to about 30%."
`(UNL 1031, 3:9-10)
`Kanebo: Example 10: "Dimethyl
`polysiloxane [a non-volatile conditioning
`agent] (10,000 cSt; 25ºC) 5.0 [%]" (UNL
`1006, [0037])
`Kalla: "Optional components include …
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`The '569 patent
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`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 a cationic polymer;
`
`e) water;
`
`f) from about 0.1% to about 10%,
`by weight of the composition, of a
`suspending agent; … [See
`discussion of index values
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`Petition for Inter Partes Review of USPN 6,974,569
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`Disclosure of Kanebo and Kalla
`conditioning agents…." (UNL 1031, 16:8)
`Kanebo: Example 10: "Zinc pyrithione 0.5
`[%]" (UNL 1006, [0037])
`Kalla: "Effective concentrations of such
`antimicrobial agents generally range from
`about 0.1% to about 5%." "Particularly
`preferred are 1-hydroxy-2pyridine salts in
`platelet particle form… Pyridinethione
`antimicrobial agents are well known in the
`shampoo art…." (UNL 1031, 10:30-31; 11:18-
`19; 11:22-23)
`Kanebo: Example 10: "Cationized cellulose
`derivative (Trade name: Catinal HC-200
`manufactured by Toho Kagaku Kogyo) 1.0
`[%]" (UNL 1006, [0037])
`Kanebo: "for achieving the best conditioning
`effect, it is preferred to use a cationic polymer
`such as cationized cellulose derivative,
`cationized guar derivative…." (UNL 1006,
`[0014])
`Kalla discloses: "The cationic guar polymers
`for use in the shampoo compositions are
`cationically substituted galactomannan (guar)
`gum derivatives." (UNL 1031, 14:16-18)
`Kanebo: Example 10: "Water…" (UNL
`1006, [0037])
`Kalla: "The shampoo compositions of the
`present invention are aqueous systems which
`comprise from about 40% to about 92% …
`water by weight of the compositions." (UNL
`1031, 15:19-22)
`Kanebo: Example 10: "Ethylene glycol
`dimyristate 2.0 [%]" (UNL 1006, [0037])
`Kalla: "In general, effective concentrations of
`the crystalline suspending agent range from
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`12
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`below].
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`The '569 patent
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`Petition for Inter Partes Review of USPN 6,974,569
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`Disclosure of Kanebo and Kalla
`about 0.5% to about 10%.... Suitable
`suspending agents for use in the shampoo
`compositions herein include ethylene glycol
`fatty esters …. More preferred are the ethylene
`glycol stearates, both mono and distreate…."
`(UNL 1031, 12:13-33)
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`Kanebo discloses "an anti-dandruff particulate": Example 10 of Kanebo
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`discloses a shampoo composition containing 0.5% zinc pyrithione. (UNL 1006,
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`11:24-30.) A POSA would have understood that zinc pyrithione ("ZPT"), a well-
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`known antidandruff agent, necessarily forms particulates, as ZPT is water-
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`insoluble and thus always is in particulate form in shampoo compositions. (UNL
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`1043, ¶53; UNL 1029, 1.) In instituting trial on claim 1 of the '569 patent in
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`IPR2013-00505, the Board recognized that ZPT disclosed by Kanebo is the same
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`AD agent claimed. (Paper No. 9 dated 2/12/14, 13.) Thus, Kanebo discloses an AD
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`particulate as recited in claim 1.
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`Kanebo discloses the components claimed: As shown in the claim chart
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`above, Kanebo discloses a shampoo formulation having all of the components
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`recited in claim 1. Kanebo discloses ammonium lauryl sulphate. (UNL 1006,
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`[0037].) The '569 patent discloses that ammonium lauryl sulphate is an anionic
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`surfactant. (See UNL 1001, 4:19 and 5:21.)
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`Kanebo discloses dimethyl polysiloxane. (UNL 1006, [0037].) The '569
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`patent states that: "[n]on-volatile polyalkylsiloxane fluids that may be used include,
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`for example, low molecular weight polydimethylsiloxanes" and lists silicones such
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`as polydimethyl siloxane as preferred conditioning agents. (UNL 1001, 7:13 and
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`9:38-47.) A POSA would have understood that dimethyl polysiloxane, as taught by
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`Kanebo, is an alternative chemical name for polydimethyl siloxane and that both
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`names refer to the same chemical compound. (UNL 1043, ¶54.) A POSA would
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`have also understood that Kanebo discloses cationic guar derivatives as cationic
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`polymers for use in AD conditioning shampoos. (UNL 1043, ¶54.) The Board has
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`recognized that Kanebo discloses cationic guar derivatives for use in AD
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`conditioning shampoos, as evidenced by the Board's institution of trial on claim 19
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`as obvious over Kanebo. (Paper No. 9 dated 2/12/14, 13.) Thus, as shown in the
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`claim chart above, Kanebo discloses all of the components of clauses (a)-(f) of
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`claim 1.
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`Kanebo discloses concentrations falling in the claimed ranges: As shown
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`in the claim chart above, each component in the shampoo composition in Kanebo
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`falls within the claimed concentration range for each of the corresponding elements
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`in claim 1. As such, the shampoo composition of Kanebo meets the concentration
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`range limitations of each of the components recited in claim 1. (UNL 1043, ¶55.)
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`A POSA would have had a reason to modify Kanebo to obtain the index
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`values of claim 1: A POSA would have had a reason to arrive at the index values
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`claimed, as the index values were known in the art to be associated with the
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`properties of AD and conditioning shampoos. (UNL 1043, ¶56.) A higher
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`bioavailability/coverage value was known to be associated with better deposition
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`of AD agent. (UNL 1020, 7:19-49; UNL 1043, ¶60.) A lower combing force, as
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`represented in the first conditioning index value was known to be associated with
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`better conditioning. (UNL 1021, 26:1-53; UNL 1043, ¶61.) A higher sensory hair
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`feel value was known to be associated with better conditioning. (UNL 1021, 21:64
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`-23:26; UNL 1043, ¶62.) And a higher MIC value was known to be associated with
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`better antimicrobial activity of AD agent. (UNL 1020, 6:58-7:17; UNL 1043, ¶60.)
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`Tests for the claimed index values were known in the art: U.S. Patent
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`5,886,031 to Shin et al. (UNL 1020), which was filed in 1997, provides
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`bioavailability/coverage and MIC index values similar to those claimed in the '569
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`patent. Shin discloses conditioning shampoos, stating "[t]he hair-care compositions
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`according to the present invention may be formulated into, for example, shampoos,
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`… hair-conditioners, … and the like." (UNL 1020, 4:53-56.) Experimental
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`Example 2 of Shin discloses a test comparable to the bioavailability/coverage test
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`disclosed in the '569 patent and provides product sample results that give an index
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`value of 3.54. (UNL 1020, 7:19-49; compare the mean inhibition zone of Example
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`6 with the mean inhibition zone of Comparative Example 2 in Table 2 of Shin
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`(38.59/10.88 = 3.54); UNL 1043, ¶60.) Example 1 of Shin discloses an MIC test
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`comparable to MIC test disclosed in the '569 patent and provides product sample
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`results that are about 0.50. (UNL 1020, 6:58-7:17; compare the MIC value for
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`Example 4 with Comparative Example 2 (2.14/5.87 = 0.37); UNL 1043, ¶60.)
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`U.S. Patent 5,137,715 to Hoshowski et al. (UNL 1021), which issued in
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`1992, provides first and second conditioning index values similar to those claimed
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`in the '569 patent. Example 11 of Hoshowski provides combing force tests
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`comparable to the first conditioning test disclosed in the '569 patent and provides
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`index values of 0.76. (UNL 1021, 26:1-53; compare the average combining load of
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`Example 12H in Table IV with control Example 12A (0.7884/1.0291= 0.76); UNL
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`1043, ¶61.) Hoshowski also discloses a subjective test referred to as a combing test
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`where conditioned hair was rated by trained judges in a ranking system from 1
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`(worst) to 5 (best). The trained judges evaluated, among other things, properties
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`such as wet feel, residue and overall condition. (UNL 1021, 22:28-43.)
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`The subjective test in Hoshowski is similar to that disclosed in the '569
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`patent for the second conditioning index value, as testing for wet feel and residue
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`equate to the clean feel of the hair. The subjective test results are provided in Table
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`I of Hoshowski – where the subjective test values for product are as high as 5.0
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`times those of the control. (UNL 1021, Table I; compare Example 2 with control
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`Example 1 (5.0/1.0 = 5.0).) Thus, a POSA would have had a reasonable
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`expectation of success in obtaining the index values claimed as these values had
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`already been achieved in conditioning shampoos. (UNL 1043, ¶62.)
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`Reason to combine: A POSA would have had a reason to combine the
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`teachings of Kanebo and Kalla. Kanebo teaches an AD conditioning shampoo
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`containing cationic guar derivatives. (UNL 1006, [0014], [0037].) Kanebo also
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`discloses that cationic guar derivatives can be used for enhancing the dispersion
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`properties of the shampoo. (UNL 1006, [0015].) Enhanced dispersion of AD
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`agents in the shampoo improves AD efficacy, because if the AD agents are more
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`evenly dispersed throughout the shampoo it will be more evenly deposited on the
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`scalp. (UNL 1043, ¶85.) Kalla teaches that cationic guar derivatives having a
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`molecular weight of 2,000 to 3,000,000 and charge densities of 0.1 meq/g to about
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`2 meq/g enhance the deposition of particulate AD agents on the scalp, and teaches
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`that enhanced deposition improves AD efficacy by helping the AD agent stick to
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`the scalp. (UNL 1031, 1:16-22, 11:11-14, 14:3-5; UNL 1043, ¶57.)
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`A POSA would have known that enhanced dispersion of an AD agent in
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`shampoo will enhance AD efficacy if there is a deposition mechanism to promote
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`depositing of the AD agents on the scalp. (UNL 1043, ¶58.) A POSA would look
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`to improve AD efficacy of the shampoos of Kanebo, as such improvements would
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`be desirable. And a POSA reading Kanebo would have looked to Kalla's teaching
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`of cationic guar derivatives that lead to improved deposition of particulate AD
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`agents and thus, improved AD efficacy. (UNL 1043, ¶58.) Thus, a POSA would
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`have had a reason to combine the teachings of Kanebo and Kalla.
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`Index values: A POSA would have had a reasonable expectation of success
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`in arriving at a shampoo that met all four index values. (UNL 1043, ¶59.) As
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`shown in the claim chart above, Kanebo and Kalla disclose shampoos having the
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`claimed components. And it has long been the law that "where the general
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`conditions of a claim are disclosed in the prior art, it is not inventive to discover
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`the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d
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`454, 456 (CCPA 1955); see also In re Kubin, 561 F.3d 1351, 1358 (Fed. Cir. 2009)
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`A POSA would have also had a reasonable expectation of success in
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`obtaining the claimed index values through routine experimentation as these values
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`are typical as demonstrated by the art. As discussed in Section VI, the tests needed
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`to obtain the claimed index values were all well known in the art. (UNL 1043, ¶60-
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`63; UNL 1020, 7:19-49, 6:58-7:17; UNL 1021, 26:1-53, 22:28-43.)
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`Further, at the very least, a POSA would have been able to optimize the
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`formulations taught in the prior art to achieve the claimed index values with a
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`reasonable expectation of success. (UNL 1043, ¶63.) As discussed above, the
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`claimed index values were known in the art to be associated with the properties of
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`AD conditioning shampoos. And as discussed above, a POSA would have had a
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`reason to modify the