T 0170/87 - Undisclosed disclaimers (prior to G 1/03, G 2/10, G 1/16) - #94

Citation rank: 94
No. of citations: 56

Before the Enlarged Board of Appeals dealt with disclosed and undisclosed disclaimers in G 1/03, G 2/10 and G 1/16, T 170/87 was frequently cited for establishing that undisclosed disclaimers were in principle admissible to establish novelty over prior art, but they must not establish inventive step.

For example, T 159/95 cites T 170/87 as follows:

"According to the established jurisprudence of the Boards of Appeal, it may be permissible to exclude a specific prior art from the claimed subject-matter by means of a disclaimer, even if the original application provides no basis for such an exclusion (see decisions T 170/87, OJ EPO 1989, 441, point 8.4.1 of the reasons; [...])"

Clearly, T 170/87 lost most of its significance when G 1/03 (at least up until G 2/10) clarified the situation around undisclosed disclaimers. This explains the steep drop in citations after G 1/03 came out. Today, of course, G 1/03 and G 1/16 should be referred to regarding admissibility of undisclosed disclaimers.

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Headnote:

1. A figure which serves only to give a schematic explanation of the principle of the subject-matter of the patent and not to represent it in every detail does not allow the sure conclusion that the disclosed teaching purposively excludes a feature not represented. Such a "negative" feature (here: "with no internal fittings") may not subsequently be incorporated into the claim.
2. A disclaimer can be used to make an inventive teaching which overlaps with the state of the art novel but it cannot make an obvious teaching inventive.

 The full text of the decision can be accessed here.