T 0542/92 (Bis(3-aminophenoxy) aromatics/MITSUI) 08-06-1993
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Bis(3-aminophenoxy) aromatics and method of preparing the same
Remittal to Examining Division - new evidence
Decision re appeals - remittal (yes)
I. European patent application No. 86 301 210.0 (publication No. 0 192 480) was filed on 20 February 1986.
II. By a decision dated 21 January 1992, the Examining Division rejected the application on the ground that the compounds of Claims 12 to 15 did not involve an inventive step since they neither possessed new and unexpected or surprising properties nor did the Examining Division consider there was a technical prejudice or insurmountable difficulties connected with their preparation.
Oral proceedings were held on 25 November 1991. However, it is not clear from the file whether a decision was reached during these proceedings.
III. An appeal was lodged against this decision on 23 March 1992 with payment of the prescribed fee. In his statement of grounds of appeal filed on 1 June 1992, the Appellant argued that he was entitled to claim some of the more useful novel compounds obtained by the inventive process since there was strong prejudice against any attempt to make such compounds because of the difficulties of reacting meta groups and the special, exotic and poisonous materials needed to try.
With a letter filed on 21 April 1993, the Appellant submitted the results of experiments in which the properties of polyimide resins prepared from the compounds of Claims 12 to 14 and a compound analogous to the compounds of Claim 15 were compared with the polyimide resins obtained from the corresponding compounds in which the amino groups were in the para position with respect to the ether linkage.
IV. The Appellant requests that the decision under appeal be set aside and a patent granted on the basis of Claims 1 to 15 and pages 1 to 41 of the description filed on 1 June 1992. Claims 12 to 15 read as follows:
"12) 4,4'-Bis(3-aminophenoxy)biphenyl.
13) 1-[4-(3-Aminophenoxy)phenyl]-1,3,3-trimethyl-6-(3- aminophenoxy)-indan.
14) 6,6'-Bis(3-aminophenoxy)-3,3,3',3'-tetramethyl- 1,1'-spirobiindan.
15) A methyl substituted 2,2-bis[4-(3- aminophenoxy)phenyl]propane represented by the following general formula:
(FORMULA)
where R1, R2 and R3 are H, or CH3."
1. The appeal is admissible.
2. The only question to be decided in this appeal is whether the subject-matter of Claims 12 to 15 involves an inventive step.
3. With a view to demonstrating the surprising and advantageous properties of the compounds claimed in Claims 12 to 15, the Appellant submitted with his letter filed on 21 April 1993 an experimental report in which certain physical properties of the polyimides obtained from the compounds of Claims 12 to 14 and a compound analogous to those claimed in Claim 15 were compared with those of the polyimides prepared from diamines in which the amino groups are in the para position with respect to the ether linkages. However, it is not clear from the documents at present on file whether the compounds 4,4'- bis(4-aminophenoxy)biphenyl, 1-[4-(4-aminophenoxy)pheny]- 1,3,3-trimethyl-6-(4-aminophenoxy)indan, 6,6'-bis(4- aminophenoxy)-3,3,3',3'-tetramethyl-1,1'-spirobisindan and 2,2-bis[4-(4-aminophenoxy)phenyl]propane used in the comparative tests belong to the state of the art. Therefore, the Board is unable to take the results of these comparative tests into account in establishing whether the subject-matter of Claims 12 to 15 involve an inventive step.
In these circumstances the Board has decided to exercise its power under Article 111(1) EPC to remit the case to the Examining Division for further prosecution.
4. With respect to the claims and description filed on 1 June 1992, at least the following amendments are necessary:
(a) The symbol R3 in the left-hand benzene ring of the formula in Claim 15 and on page 8 should be amended to read R1,
(b) the number "1-" should be inserted at the end of line 3 on page 8,
(c) the reference to "tris(3-oxabutyl)amine on line 3 of page 10 should be deleted (n = 0),
(d) the elemental analysis on page 23 should be amended to read C25H20N2O3.
ORDER
For these reasons, it is decided that:
1. The decision under appeal is set aside.
2. The case is remitted to the Examining Division for further prosecution on the basis of Claims 1 to 15 and pages 1 to 41 of the description filed on 1 June 1992.