EPO express
In case a prior art document discloses all of the features of a later filed European patent application and the later filed European patent application does not claim a feature in addition that is not known from the same prior art, the prior art and the later filed European patent application are considered identical, i.e. the prior art destroys the novelty of the later filed European patent application.
In case different words have been used in the prior art and in the later filed European patent application to denominate an identical technical feature this does not change the lack of novelty of the later application. A mere difference in wording (“closed cells having perforated walls” versus “ruptured cellular walls”) is insufficient to establish novelty (T 0114/86 (Foam plastic filter) of 29.10.1986), unless the later filed European patent application would have explicitly attributed to the term in question a different meaning, for example describing a different structure of a material or a device.
When assessing novelty, the disclosure of a particular prior document must always be considered in isolation; in other words it is only the actual content of a document (as understood by a skilled man) which destroys novelty. It is not permissible to "combine" separate items of prior art together. T 0153/85 (Alternative claims) of 11.12.1986
However, in a case, where there is a specific reference in one prior document (the "primary document") to a second prior document, when construing the primary document (i.e. determining its meaning to the skilled man) the presence of such specific reference may necessitate that part or all of the disclosure of the second document be considered as part of the disclosure of the primary document.
It is a general principle of the EPO that when examining the novelty of an application against the state of the art in the same subject area, only technical features are taken into account even if the applicant claims that a different problem is solved by the same technical features. This practice is based on the principle that an object that has already been described in all technical details may not be rewarded with patent protection again. This also applies if an effect was previously undetected. Even after reformulation of a new problem to be solved by the previously undetected effect does not render the known technical features novel (T 0053/82 of 28.6.1982).
This principle has to be disregarded in cases where an anticipation is of a chance nature, in that what is disclosed in a prior document could accidentally fall within the wording of a claim. In such cases where no common technical problem exists, a particularly careful comparison has to be made between what can fairly be considered to fall within the wording of the claim and what is effectively shown in the document (T 0161/82 “Electrical contact” of 26.6.1984). This would be the case for example, if the feature in the prior art document is objectively not suitable for the later filed European patent application. Depending what a person skilled in the art would be taught by the disclosure of the prior art the invention would be novel but may not pass the test for inventive step.
Chemical inventions however claim very often a broad range of of numbers for the reactants, for example. Applying the above rule to the very broad range would block any useful subrange. Therefore the Board of Appeal decided in 1984 that if a patent application claims a ratio of reactants that falls within the range of reactants that was disclosed in an older disclosure describing a chemical production process, but the ratio claimed by the patent application filed after this earlier disclosure is not explicitly mentioned in the earlier disclosure, this may involve a new invention. However, the novelty of the range claimed by the later filed patent application is destroyed if the previous description contains examples which fall within the range that is claimed by the younger application (T 0188/83 (Vinyl acetate) of 30.7.1984).
Similarly, the Board of Appeal decided in T 0198/84 (Thiochloroformates) of 28.2.1985 that if a fairly broad range of numbers delimited by minimum and maximum values (in this case, >0 and <100 mol%) does not necessarily represent a disclosure, ruling out the selection of a subrange, of all the numerical values between these minimum and maximum values if the sub-range selected is narrow (in this case, 0.02 - 0.2 mol%) and sufficiently far removed from the known range illustrated by means of examples (in this case, 2 - 13 mol%). The sub-range was considered novel not by virtue of an effect which occurs only within it; but because this effect permits the inference that what is involved is not an arbitrarily chosen specimen from the prior art but another invention (purposive selection).
As T 0017/85 (Filler) of 6.6.1986 pointed out, if the preferred numerical range in a citation in part anticipates a range claimed in an application, the said claimed range cannot be regarded as novel at least in cases where the values in the examples given in the citation lie just outside the claimed range and teach the skilled person that it is possible to use the whole of this range.
In T 0204/83 (Venturi) of 24.6.1985 the Board had to decide about the novelty of a European patent application relating to an apparatus for uniformly and accurately coating discrete solids by ensuring that a maximum amount of such solids is brought into contact with a minimum amount of coating material for a given period of time. It was clear from the description that the conventional apparatus disclosed in the closest prior art displays the features mentioned in the prior art part of the claim and some of those included in the characterising clause, namely the fact that a cylindrical portion is inserted between narrow ends of a frustoconical granulating chamber and a gas inlet duct which are arranged to taper in opposite directions. At first glance the only difference between the application and the closest prior art lies in the height of the cylindrical portion which is greater than 0.5 d and less than 0.66 d, d being the smallest diameter of the frustoconical portions.
The question that arises is whether this feature is novel or whether this feature may be derived directly and unmistakably from the closest prior art by a person skilled in the art. Article 54(2) EPC lays down that the state of the art comprises everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing of the European patent application. The Board of Appeal took the view that for the purposes of Article 54(2) EPC a written description may also take the form of a drawing. When a feature is shown solely in a drawing without any other clarifying description however, a careful check should be made to establish whether the mere diagrammatic representation enables a person skilled in the art to derive a practical technical teaching therefrom. The Board of Appeal did not engage in laying down general rules as to how this check should be done because the reply in each case will depend on the knowledge of the person skilled in the art and of the way in which the feature is shown in the drawing. Thus, if a drawing is specifically devoted to disclosing a certain feature or if that feature is systematically included in a number of drawings a person skilled in the art will see it as an important item of technical information even if the illustration is unaccompanied by a verbal description or numerical information. If on the other hand, the Board of Appeal concluded, the feature is shown in the drawing merely as an ancillary element of a complicated device a person skilled in the art will sometimes be unable to elicit useful technical information from the drawing, at least without the information supplied in the newly filed patent application.
The Board is of the opinion that in the present case Figure 9 of the closest prior art is one of the latter cases. It shows a Venturi tube surmounted by a chamber terminating in the drawing in a wavy line to indicate that it is only a partial illustration. Furthermore, the space between the frustoconical tube and the walls of the container is largely filled with particles. In addition, particles are shown widely dispersed, mainly above the tube but also on its sides. Thus it is evident from the chain-dotted lines radiating from the tube, as from the two vertical arrows above it to indicate a continuation of the flow, that the function of the tube is to convey a certain substance.
In contrast to the The Examining Division which thought it possible to derive from Figure 9 specific dimensions for the height and diameter of the central cylindrical portion of the Venturi tube not stated elsewhere in the description the Board of Appeal was convinced that this is going beyond the information actually conveyed. The text of the closest prior art describes Figure 9 as a cut-away view of the coating apparatus shown in Figure 8, the latter being a diagrammatic representation of an embodiment of the invention. One must thus conclude that Figure 9 in turn is a diagrammatic representation of the Venturi tube region. The specific description of the closest prior art contains no definition or interpretation of the words "diagrammatic representation" giving cause to depart from the meaning the term generally conveys. In view of a definition given in the Grand Larousse Encyclopédique of1964 the Board of Appeal decided that a diagrammatic representation is confined to the essential features of the object shown and that it allows considerable latitude in the object's practical realisation. The mere diagrammatic representation of a principle that still has to be worked out in detail is not the same for a person skilled in the art as precise instructions equivalent to a technical teaching.
In conclusion the Board considers that by referring to figures as diagrammatic representations a writer helps a person skilled in the art to understand better what is described elsewhere. However, illustrations - useful as they often are for a better understanding of the subject-matter described - cannot be regarded as exact representations of this subject-matter. No one skilled in the art would conceive of measuring a diagram in order reliably to determine the dimensions of the object shown. Dimensions obtained solely by measurements carried out on a diagrammatic representation forming part of a document do not constitute part of the disclosure and cannot, therefore, be regarded as complementing the teaching contained in the description. Thus Figure 9 does not teach that the cylindrical portion of the Venturi tube must have a height greater than 0.5 d and less than 0.66 d. We only discussed here the novelty of a European patent application, and this was just the first hurdle, but of course an important hurdle to pass. In all these cases the next step is to look if the invention, that made it over the novelty hurdle in addition implies an inventive step.
(c) EPO express 2020
We file your European patent application