T 1090/14 - Unsubtantiated requests

Key points

• In this opposition appeal, the Board does not admit Auxiliary Requests 3 to 10.
• "  The statement of grounds of appeal did not contain any explanation why auxiliary requests 3 to 10 overcame the objection of lack of inventive step " 
• Nor was such an explanation provided in reply to the board's communication in which  [patentee] was made aware of the lack of substantiation with regard to these requests. Since it is not self-evident either how auxiliary requests 3 to 10 could remedy the deficiency identified by the opposition division with regard to the previous requests, [patentee] cannot be considered as having "set out clearly and concisely why it is requested that the decision under appeal be set aside".
• The patentee did not attend the oral proceedings.

EPO T 1090/14 - link

Auxiliary requests 3 to 10

23. Article 12(2) RPBA inter alia provides that the statement of grounds of appeal shall contain a party's complete case, that it shall set out clearly and concisely why it is requested that the decision under appeal be set aside and should specify expressly all the facts, arguments and evidence relied on.

24. Auxiliary claim requests 3 to 10 were submitted with appellant I's statement of grounds of appeal. The statement of grounds of appeal did not contain any explanation why auxiliary requests 3 to 10 overcame the objection of lack of inventive step raised in relation to the requests dealt with in the decision under appeal and which were re-filed in the appeal proceedings, i.e. the statement of grounds of appeal has not placed the board or the other party in a position which allows it to understand why the amended subject-matter overcomes this objection. Nor was such an explanation provided in reply to the board's communication in which appellant I was made aware of the lack of substantiation with regard to these requests. Since it is not self-evident either how auxiliary requests 3 to 10 could remedy the deficiency identified by the opposition division with regard to the previous requests, appellant I cannot be considered as having "set out clearly and concisely why it is requested that the decision under appeal be set aside".

25. Consequently, auxiliary requests 3 to 10 do not comply with the requirements of Article 12(2) RPBA and are thus not taken into consideration.

26. Since no request is allowable, the appeal of appellant II is successful, while that of appellant I must be dismissed.