T 0666/89 - Whole content of a prior art document must be considered - #35

Citation rank: 35
No. of citations: 114

T 666/89 is concerned with the question of how to properly assess the disclosure of a prior art document. The decision is most often cited for holding that the whole content of a citation must be considered for deciding the question of novelty of a claim over that citation.

In the underlying opposition case, claim 7 related to a shampoo composition defined by its chemical components and their respective concentration ranges.

The Board considered a document "D3a" (which was prior art under Art. 54(3)) relevant for the question of novelty of claim 7.

The proprietor-respondent's argument with respect to novelty of claim 7 over D3a was that the examples of D3a lay outside the scope of Claim 7. The generic disclosure of the shampoo compositions of D3a could not be held to be an anticipation of this claim.The Board disagreed.

They stated:

"Insofar as the respondent submitted that generic information in connection with compositions has practically no meaning and that only the examples of a document should be regarded as state of the art in this respect, he had ignored the established jurisprudence of the Boards of Appeal, according to which it is necessary to consider the whole content of a citation when deciding the question of novelty (see e.g. T 4/83, OJ EPO 1983, 498, para. 4 of the reasons, T 198/84, OJ EPO 1985, 209 and T 124/87, OJ EPO 1989, 491, para. 3.2 of the reasons).

In applying this principle, the evaluation must therefore not be confined to a comparison of the claimed subject-matter with only the examples of a citation, but must extend to all the information contained in the earlier document (T 332/87, para. 2.2, of 23 November 1990, unpublished, confirming T 424/86, para. 4.2, of 11 August 1988, unpublished)." (point 5 of the reasons)

Applying these principles, the Board referred to different parts of the description of D3a, each disclosing certain elements of the claimed shampoo composition, and concentration ranges the end points of which could be combined to a composition falling under claim 7, and found that the sum of these parts anticipated claim 7. No additional disclosure would be required to draw the skilled person's attention to make the combination of the different parts of the disclosure, let alone to induce him to do so. In a case where overlapping numerical ranges of certain parameters exist between a claim and a prior art document, the prior art document would anticipate the claim, if the skilled person would "seriously contemplate" applying the technical teaching of the prior art document in the range of overlap (point 7 of reasons).

Since claim 7 lacked novelty, and all requests on file contained the same claim 7, the patent was revoked.

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Headnote:

1. Under the EPC patents are not granted for the sole reason that they are "selections", but only for new and inventive subject- matter of certain defined kinds. Accordingly, there is no fundamental difference between deciding novelty in situations of so-called "overlap" or "selection", and in doing so in other situations (see paragraphs 6 and 8 of the reasons).
2. Matter that is "hidden" in a prior art document, in the sense of being reconditely submerged rather than deliberately concealed, will not have been "made available" to the public (cf. G 2/88). In the case of overlapping numerical ranges of physical parameters between a claim and a prior art disclosure, one useful approach to determining what is "hidden" as opposed to what has been made available, is to consider whether or not a person skilled in the art would, in the light of all the technical facts at his disposal, seriously contemplate applying the technical teaching of the prior art document in the range of overlap (cf. T 26/85). Provided the information in the prior art document, in combination with the skilled person's common general knowledge, is sufficient to enable him to practise the technical teaching, and if it can reasonably be assumed that he would do so, then the claim in question will lack novelty (see paragraph 7 of the reasons).
3. The above concept of "seriously contemplating" moving from a broad to a narrow (overlapping) range, while seemingly akin to one of the concepts used by the Boards for assessing inventive step, namely, whether the notional addressee "would have tried, with reasonable expectation of success" to bridge the technical gap between a particular piece of prior art and a claim whose inventiveness is in question, is fundamentally different from this "inventive-step concept" because in order to establish anticipation, there cannot be a gap of the above kind (see paragraph 8 of the reasons).
4. Under the EPC novelty must be decided by reference to the total information content of a cited prior document, and in assessing the content for the purpose of deciding whether or not a claim is novel, the Board may employ legal concepts that are similar to those used by them in deciding issues of obviousness, without, however, thereby confusing or blurring the distinction between these separate statutory grounds of objection (see paragraph 8 of the reasons).

The full text of the decision is here.

Quotes from decisions citing T 666/89 can be found here.