Conopco, Inc. dba Unileverv.the Procter & Gamble Company

Patent Trial and Appeal Board

Jun 3, 2014

09558465 (P.T.A.B. Jun. 3, 2014)

Trials@uspto.gov Paper 22
Tel: 571-272-7822 Entered: June 3, 2014

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________
BEFORE THE PATENT TRIAL AND APPEAL BOARD
_______________
CONOPCO, INC. dba UNILEVER
Petitioner

v.

THE PROCTER & GAMBLE COMPANY
Patent Owner
_______________

Case IPR2013-00505
Patent 6,974,569 B2
_______________

Before LORA M. GREEN, GRACE KARAFFA OBERMANN, and
RAMA G. ELLURU, Administrative Patent Judges.

OBERMANN, Administrative Patent Judge.

DECISION
Denying Petitioner’s Request for Rehearing
37 C.F.R. § 42.71

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On February 26, 2014, Conopco Inc., dba Unilever (“Petitioner”) filed a
request for rehearing (Paper 11, “Rehearing Req.”) of our decision denying inter
partes review (Paper 9, “Dec.”) of claims 20-22 of U.S. Patent No. 6,974,569 B2
(Ex. 1001, “the ’569 patent”). The petition (Paper 4, “Pet.”) challenged claims 1-
33 of the ’569 patent. We determined that the information presented, at the
preliminary stage of this proceeding, establishes a reasonable likelihood that
Petitioner would prevail at trial with respect to claims 1-12, 15, 17-19, 23, 26, 28-
30, and 32 of the ’569 patent. We further determined, however, that the
information does not show sufficiently that there is a reasonable likelihood that
Petitioner would prevail at trial with respect to claims 13, 14, 16, 20-22, 24, 25, 27,
31, and 33. Accordingly, we declined to institute trial as to those claims.
Petitioner’s request for rehearing is limited to our decision declining to
institute trial with respect to claims 20-22 of the ’569 patent. For the reasons that
follow, we deny the request for rehearing.

ANALYSIS
When considering a request for rehearing of a decision on a petition, the
Board reviews the decision for an abuse of discretion. 37 C.F.R. § 42.71(c). An
abuse of discretion may arise if a decision is based on an erroneous interpretation
of law, if a factual finding is not supported by substantial evidence, or if an
unreasonable judgment is made in weighing relevant factors. Star Fruits S.N.C. v.
U.S., 393 F.3d 1277, 1281 (Fed. Cir. 2005); Arnold P’ship v. Dudas, 362 F.3d
1338, 1340 (Fed. Cir. 2004); In re Gartside, 203 F.3d 1305, 1315-16 (Fed. Cir.
2000). The party requesting rehearing bears the burden of showing that the
decision should be modified, and “[t]he request must specifically identify all
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matters the party believes the Board misapprehended or overlooked.” 37 C.F.R.
§ 42.71(d).
Petitioner seeks rehearing of the Board’s denial of inter partes review of
claims 20-22 as unpatentable under 35 U.S.C. § 103 over (1) Reid (US 5,085,857
(Feb. 4, 1992) (Ex. 1018)); and (2) Kanebo (JP 9-188614 (July 22, 1997) (English
translation) (Ex. 1006)). Petitioner contends that legal errors made in connection
with those grounds resulted in an abuse of discretion. Rehearing Req. 1. We
address those grounds in turn.
Denial of Review of Claims 20-22 as Obvious over Reid
Claims 20-22, depending from claim 1, require “an anti-dandruff
particulate” in an amount “from about 0.1% to about 4.0%.” Ex. 1001, claims 1,
20-22. Petitioner contends that the Board incorrectly concluded “that Reid does
not suggest a particulate anti-dandruff agent at a concentration of about 0.1% to
about 4.0%.” Rehearing Req. 4 (citing Dec. 15-16).
In the Petition, Petitioner argues that Reid discloses the use of Octopirox in
an amount of 0.5% by weight, but presents no persuasive evidence that Octopirox
is a “particulate.” Dec. 15 (citing Pet. 30). As to the limitation requiring a
particulate, Petitioner argues that Reid discloses the use of zinc pyridinethione
(“ZPT”) as a particulate, but presents no persuasive evidence that Reid suggests
using ZPT in an amount that satisfies claims 20-22. Id. (citing Pet. 30, 34). In
other words, Petitioner directs us to one moiety (Octopirox) for the concentration
of the anti-dandruff agent, and another moiety (ZPT) for the particulate form of the
anti-dandruff agent. Id. at 15-16 (citing Pet. 30, 34-35). On that record, we
determined that Petitioner fails to establish that Reid discloses or suggests an anti-
dandruff particulate in an amount that falls within the weight range required by the
claims. Id. at 15-16; Ex. 1001, claims 1, 20-22.
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Petitioner now contends that Octopirox was highlighted in the Petition “to
show that it would have been obvious to use an anti-dandruff agent (such as
Octopirox or ZPT)” in “a concentration of 0.5% by weight in a shampoo
composition.” Rehearing Req. 5. But the Petition identifies no persuasive
evidence from which we reasonably can conclude that it would have been obvious
to use ZPT in the amount that is disclosed in Reid for Octopirox.
Petitioner also newly argues, in the context of claims 20-22, that “a person
of ordinary skill in the art would have been able to determine the concentration of
the anti-dandruff agent by routine experimentation.” Rehearing Req. 6 (citations
omitted). That argument, however, is not raised in the Petition, which rests on the
proposition that Reid discloses each limitation of claims 20-22, either expressly or
inherently. See Pet. 30, 34-35, 37-38. In the Petition, Petitioner raises the routine
optimization argument only in the context of claim 29, stating that “the
concentration of ZPT recited in claim 29” would have been obvious because a
skilled artisan “would have been able to optimize the formulations taught in the
prior art to achieve the claimed index values.” Id. at 38-39. We did not overlook
that argument as to claims 20-22, because it was not stated in the Petition.

Denial of Review of Claims 20-22 as Obvious over Kanebo
Claims 20-22 specify ranges for the molecular weight and charge density of
the guar derivative component of the shampoo composition. In the Petition,
Petitioner argues that those limitations would have been obvious over the
composition disclosed in Example 10 of Kanebo, which incorporates a cationized
cellulose derivative. Pet. 22-23. In particular, Petitioner contends that a skilled
artisan “would have had a reason to substitute a cationic guar gum for the
cationized cellulose derivative disclosed in Example 10 of Kanebo” as well as “a
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reason to use a guar derivative having a molecular weight in the claimed ranges”
and “the charge density range.” Id. Petitioner fails to articulate adequately such
reasons in the Petition, however, and instead directs us to Bartolo and Sime as
evidence that guar derivatives meeting those limitations were known in the art. Id.
Petitioner now contends that the Board abused its discretion by requiring an
articulated reason to combine the teachings of Kanebo with Bartolo (for claims 20
and 21) or Sime (for claim 22). Rehearing Req. 9 (citing Dec. 14-15). Petitioner
argues that Bartolo and Sime were raised only as “evidence of the general
knowledge in the art relating to the molecular weights and charge densities of
cationic guar derivatives.” Id. (citing Pet. 22-23; Ex. 1003 ¶¶ 86-87). That
contention falls short of establishing an abuse of discretion. “[A]patent composed
of several elements is not proved obvious merely by demonstrating that each of its
elements was, independently, known in the prior art.” KSR Int’l Co. v. Teleflex,
Inc., 550 U.S. 398, 418 (2007).
Critically lacking is any evidence that Example 10 of Kanebo suggests a
shampoo composition formulated with a cationic guar derivative that meets the
molecular weight or charge density limitations of claims 20-22. On this record,
Petitioner does not show that denying inter partes review of those claims, based on
obviousness over Kanebo alone, represents an abuse of discretion.

CONCLUSION
Petitioner’s request for rehearing is denied.

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PETITIONER:
Eldora Ellison
eellison@skgf.com

Robert Stern
rsterne-PTAB@skgf.com

PATENT OWNER:
David Maiorana
dmaiorana@JonesDay.com

John Biernacki
jvbiernacki@jonesday.com

Michael Weinstein
msweinstein@jonesday.com

Steven Miller
miller.sw@pg.com

Kim Zerby
zerby.kw@pg.com

Carl Roof
roof.cj@pg.com

Angela Haughey
haughey.a@pg.com

Calvin Griffith
cpgriffith@jonesday.com