Key points
- Claim 1 is directed to a solvent-free polyisocyanate mixture. Claim 4 is directed to a method of preparing lightfast polyurethane compositions by reacting the polyisocyanate mixture of claim 1 with (slightly simplified) a polyol. Claim 9 is directed to the use of the lightfast polyurethane composition for producing transparent mouldings. The mouldings can be used as a lightweight glass substitute e.g. as optical lense (claims 10 and 11).
- The Board, in translation: “2.1.4 In this context, the arguments put forward by the [opponent] Respondent against the applicable claim 1 in accordance with Section X a), last paragraph, must be viewed in the light of the case law relating to intermediate products (case law, supra: I.D.9.8.4, in particular T 65/82, OJ 1983, 327). In particular, in the present case, two different areas are to be considered as prior art with regard to the intermediates defined in claim 1 (namely the polyisocyanate mixtures A) which can be used for the production of polyurethane compositions, see e.g. claim 4 of the main request). On the one hand, the "intermediate product-related" state of the art has to be considered. These are all polyisocyanate mixtures whose chemical constitution comes close to the intermediate products and the task to be solved with the intermediate products. On the other hand, the "product-related" state of the art must also be taken into account. These are those compounds which, in their chemical constitution, come close to the products for further processing, namely the polyurethanes produced with them, and the problem to be solved with these products. From this prior art, it should first be determined which documents are relevant in view of the task set in the patent in suit. From these documents, the one that requires the fewest structural and functional changes should then be identified.”
- The parties debated about whether D9 was suitable as closest prior art. The Board: “Document D9, which is disputed between the parties, relates to two-component, solvent-free polyurethane adhesives for composite films with an excellent appearance and stable adhesive properties, even after a sterilization treatment carried out at high temperature. However, D9 does not relate to the "intermediate product" task mentioned in the patent in suit of providing solvent-free, low-monomer polyisocyanate mixtures containing a polyisocyanate based on highly viscous or solid araliphatic diisocyanates, nor the "product-related" task mentioned in the patent in suit of the solvent-free production of lightfast, weather-resistant polyurethane compositions which can be used for the production of transparent compact or foamed moldings.
- After some further detailed analysis, the Board finds that D9 is neither similar to the intermediate, nor similar to the end product. The Board concludes: “Since D9 does not represent a suitable state of the art for the subject matter of claim 1 of the main request, the objection of lack of inventive step based on D9 cannot be successful.”
- T 65/82 is not cited very frequently, perhaps precisely because it is settled case law. T65/82 is also instructive about obviousness and the technical effect of intermediate compounds.
EPO - T 1365/18
Link to the decision after the jump, as well as an extract of the decision text.
source http://justpatentlaw.blogspot.com/2022/02/t-136518-inventive-step-of-intermediate.html
