T 1625/17 - What substantiation entails

Key points

• The Board does not admit the AR's filed by patentee which aim to overcome the lack of inventive step of the main request because the requests were submitted with insufficient substantiation. 
• The substantiation for AR-1 was that the claims were "inventive, for essentially the same reasons given for the Main Request, above".
• The Board: “Under Article 12(2) RPBA 2007, the statement of grounds of appeal and the reply must contain a party's complete case.  This would have required in the present case to explain whether and how the additional features contained in the independent claims introduced additional distinguishing features over the closest prior art, were meant to lead to a different formulation of the problem successfully solved over it, and to a different assessment of the obviousness of the claimed solution, in particular why the additional features were not already implied by the measures whose obviousness was argued by the opposing parties in relation to the requests of higher ranking. ”
• “This would also have necessitated an indication of the pertinent passages of the relevant prior art and their assessment in order to allow for the Board and the opposing parties to make a link between the arguments submitted by the patent proprietor and the disclosure of those documents, allowing thereby the Board and the opposing parties to understand whether the amendments inserted by the patent proprietor could overcome the lack of inventive step found in respect of the auxiliary requests of higher ranking. ”

• “This is not only true in respect of the objection of inventive step over D3 addressed in the present decision, but also in respect of the additional objections for lack of inventive step starting from the disclosure of any of D8/D7, D8/D32 or D10 which have been raised against the main request and fully substantiated by opponents 1 and 2. ”
• “The submissions made by the patent proprietor in respect of the auxiliary requests, devoid of a clear analysis, require therefore from the Board and the opposing parties an unreasonable effort to form an opinion of whether the elements of reasoning invoked by the patent proprietor if considered in a full analysis of inventive step would be convincing or not, which contrary to the RPBA runs counter the requirements of a fair procedure and efficient processing of the case. ”

EPO T 1625/17 -  link



5th and 10th auxiliary requests

10. The 5th auxiliary request comprises only the methods defined in claims 8 and 9 of the present main request, whereas the 10th auxiliary request comprises only said methods, but restricted to their first embodiment. As indicated above, both the first and second embodiments of those method claims lack an inventive step. The 5th and 10th auxiliary requests are therefore not allowable either for the same reasons as outlined for the main request.

1st to 4th, 6th to 9th and 11th to 14th auxiliary requests

11. The 1st auxiliary request differs from the main request in that the independent claims define that the primer composition is applied in wet form. The patent proprietor indicated that the claims of the 1st auxiliary request were "inventive, for essentially the same reasons given for the Main Request, above" (statement of grounds, top of page 5).

The 2nd auxiliary request differs from the 1st auxiliary request in that the primer composition is defined in all independent claims to comprise "20-35 % by solids volume of zinc". The patent proprietor submitted that the claims of the 2nd auxiliary request were "inventive, for essentially the same reasons given for the Main Request, above". It was noted in addition that "high levels of primer (e.g. Hempadur Zinc 17320) provide suitable dry-to-walk-on times (Table 8 of the patent), while failing the corrosion test in Table 9 of the patent" (statement of grounds, bottom of page 5).

The 3rd auxiliary request differs from the 2nd auxiliary request in that the independent claims define that the polyurea-based binder system comprises an isocyanate-reactive component of the formula (I) indicated in above point VI. Concerning inventive step, the same arguments as those submitted for the 2nd auxiliary request were submitted and it was added that no pointer in references D3, D8, D9, D17, D10, D11 or D29 that polyaspartic esters having said the structure of claim 4 as filed should be used as secondary amines and that D9 rather pointed towards the advantages of using primary amines as curing agents (statement of grounds, bottom of page 6).

The 4th auxiliary request differs from the 3rd auxiliary request in that the independent claims define that the dry film thickness of the first layer is higher than the dry film thickness of the second layer and that rust creep of the dry coating system as determined according to ISO 12944-6 according to the corrosion category C5-M, High, ist at the most 1 mm. In addition to the inventive step submissions made for the 3rd auxiliary requests the patent proprietor added for the 4th auxiliary request that no single reference teaches the subject-matter of granted claims 2 and 6, i.e. that the primer composition comprises 20-35 % by solids volume of zinc and that the rust creep of the dry coating system as determined according to ISO 12944-6 according to the corrosion category C5-M, High, is at the most 1 mm, respectively. It was also held that "to arrive at the subject-matter of the claims of the enclosed 4th Auxiliary Request, the skilled person has to artificially construct the claims from a variety of references, using hindsight knowledge of the claimed invention" (statement of grounds, bottom of page 7).

As indicated by the patent proprietor, the 6th to 9th auxiliary requests correspond to the above-mentioned 1st to 4th auxiliary requests, in which claims directed to coating systems have been cancelled and the 11th to 14th auxiliary requests correspond to the above 6th to 9th auxiliary requests in which the second embodiment of the independent method claim has been deleted. No additional submissions on inventive step were made for these requests.

12. Under Article 12(2) RPBA 2007, the statement of grounds of appeal and the reply must contain a party's complete case.

This would have required in the present case to explain whether and how the additional features contained in the independent claims introduced additional distinguishing features over the closest prior art, were meant to lead to a different formulation of the problem successfully solved over it, and to a different assessment of the obviousness of the claimed solution, in particular why the additional features were not already implied by the measures whose obviousness was argued by the opposing parties in relation to the requests of higher ranking. 

This would also have necessitated an indication of the pertinent passages of the relevant prior art and their assessment in order to allow for the Board and the opposing parties to make a link between the arguments submitted by the patent proprietor and the disclosure of those documents, allowing thereby the Board and the opposing parties to understand whether the amendments inserted by the patent proprietor could overcome the lack of inventive step found in respect of the auxiliary requests of higher ranking. 

This is not only true in respect of the objection of inventive step over D3 addressed in the present decision, but also in respect of the additional objections for lack of inventive step starting from the disclosure of any of D8/D7, D8/D32 or D10 which have been raised against the main request and fully substantiated by opponents 1 and 2. 

The submissions made by the patent proprietor in respect of the auxiliary requests, devoid of a clear analysis, require therefore from the Board and the opposing parties an unreasonable effort to form an opinion of whether the elements of reasoning invoked by the patent proprietor if considered in a full analysis of inventive step would be convincing or not, which contrary to the RPBA runs counter the requirements of a fair procedure and efficient processing of the case. 

Although the lack of substantiation of the auxiliary request was communicated to the patent proprietor, no additional submissions were made in this respect, the patent proprietor merely indicating that they would not attend the oral proceedings. Under these circumstances the 1st to 4th, 6th to 9th and 11th to 14th auxiliary requests are held inadmissible under Article 12(4) RPBA 2007 as they do not meet the requirement of Article 12(2) RPBA 2007 (Case Law, supra, V.A.4.12.5).

Order

For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The patent is revoked.