Takeaway: In arguing obviousness as a ground of unpatentability, it is not enough to show that each element of a claim was independently known in the prior art. You must show a reason to combine the references.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision denying inter partes review of claims 6, 14, and 15 of the ’300 Patent. Previously, the Board had granted review as to claims 1-5, 11, 13, 16-20, 24, and 25 of the ’300 Patent, but declined to institute review as to claims 6-10, 14, 15, and 21-23. Petitioner only requested rehearing as to the decision not to institute review of claims 6, 14, and 15.

The Board reviews a request for rehearing of a decision on institution for abuse of discretion, which arises 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. Petitioner sought rehearing of the Board’s denial of review of claim 6 as obvious over Kanebo, and claims 14 and 15 as obvious over Kanebo or Evans in view of Cardin.

Claim 6 requires a guar derivative having a certain molecular weight. Petitioner argued that that limitation would have been obvious of Kanebo alone in view of general knowledge in the art, but did not direct the Board to any suggestion within Kanebo of a guar derivative having the requisite molecular weight. Instead, Petitioner directed the Board to Bartolo, but argued that it was improper for the Board to require that the Petition articulate a specific reason to combine the two references because Bartolo was exemplary of the general knowledge in the art. Citing to KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), the Board found that was not enough to establish obviousness.

Claims 14 and 15 require an anti-dandruff component in platelet particle form with a requisite particle size. In the Decision on Institution, the Board determined that Petitioner only offered conclusory arguments regarding the general feasibility of selecting elements for the disclosure of multiple references without demonstrating why a skilled artisan would have thought to incorporate the requisite elements. Petitioner generally repeated the same argument raised in the Petition, and the Board once again rejected it.

Conopco, Inc. dba Unilever v. The Proctor & Gamble Company, IPR2013-00509
Paper 25: Decision Denying Petitioner’s Request for Rehearing
Dated: June 3, 2014
Patent 6,451,300 B1
Before: Lora M. Green, Grace Karaffa Obermann, and Rama G. Elluru
Written by: Obermann

Takeaway: All evidence supporting all grounds for unpatentability must be laid out in the Petition. If they are first brought up in a request for rehearing, they will not be considered.

In its Decision, the Board denied Petitioner’s Request for Rehearing of the Board’s decision denying inter partes review of claims 20-22 of the ’569 Patent. The Board had previously granted the Petition as to claims 1-12, 15, 17-19, 23, 226, 28-30, and 32 of the ’569 Patent, but declined to institute review of claims 13, 14, 16, 20-22, 24, 25, 27, 31, and 33. Petitioner only requested rehearing as to the decision not to institute review as to claims 20-22.

The Board reviews a request for rehearing of a decision on institution for abuse of discretion, which arises 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. Petitioner sought rehearing of the Board’s denial of claims 20-22 as unpatentable under 35 U.S.C. § 103 over Reid and Kanebo, separately, asserting that legal errors made in connection with those grounds resulted in an abuse of discretion.

Examining first the denial of review of claims 20-22 as obvious over Reid, Petitioner argued 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%, as required by the claims. In the Petition, Petitioner argued that Reid disclosed the use of Octopirox at a certain concentration, but did not present evidence that Octopirox is a particulate. Instead, Petitioner argued that Reid discloses the use of zinc pyridinethione (“ZPT”) as a particulate, but presented no evidence that Reid suggests using ZPT at the requisite concentration. Therefore, the Board determined that Petitioner failed to establish that Reid disclosed the required limitation of claims 20-22. Petitioner newly argued that Octopirox was highlighted in the Petition to show it would have been obvious to use an anti-dandruff agent in the required concentration, but the Board found there was no persuasive evidence in the Petition to support this statement. Petitioner also newly argued that a person of ordinary skill would have been able to determine the requisite concentration by routine experiment. However, because that argument was not in the Petition, the Board had not overlooked it originally and it was not ripe for consideration at the rehearing stage.

The Board then discussed the denial of review of claims 20-22 as obvious over Kanebo. Claims 20-22 also specify the ranges for the molecular weight and charge density of the guar derivative component of the shampoo composition, and Petitioner argued in its Petition that those limitations would have been obvious over the composition disclosed in Example 10 of Kanebo. However, the Board found that the Petitioner failed to articulate the reasons that this would have been obvious, instead directing the Board to two other pieces of prior art as evidence that the limitation was known in the art. Petitioner newly contended that the Board erred by requiring articulated reasons for combining Kanebo with the two prior art references because those references were only raised as evidence of knowledge in the art. Citing to KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 418 (2007), the Board found that was not enough to establish obviousness.

Conopco, Inc. dba Unilever v. The Proctor & Gamble Company, IPR2013-00505
Paper 22: Decision Denying Petitioner’s Request for Rehearing
Dated: June 3, 2014
Patent 6,974,569 B2
Before: Lora M. Green, Grace Karaffa Obermann, and Rama G. Elluru
Written by: Obermann