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Case Law of the Boards of Appeal

 
 
3.2. Combinations within a prior art document

It is not permissible to combine separate items of prior art together. It is also not permissible to combine separate items belonging to different embodiments described in one and the same document, unless such combination has specifically been suggested (see T 305/87). However, the concept of "seriously contemplating" (see Guidelines G-VI, 8(iii)) may also be used to assess whether individual features in a document can be combined with one another (see T 666/89, T 656/92 and T 632/93) (see also Guidelines G-VI, 1 - version 2012).

A claimed subject-matter would lack novelty only if a "clear and unmistakable teaching" of a combination of the claimed features could be found in a prior art disclosure (see for example unpublished decisions T 450/89, T 677/91, T 447/92 and T 511/92).

When contesting the novelty of a claim, the content of a document must not be treated as something in the nature of a reservoir from which features pertaining to separate embodiments may permissibly be drawn in order to create artificially a particular embodiment which would destroy novelty, unless the document itself suggests such a combination of features. This is confirmed by e.g. T 450/89, in which the board stated that "a conclusion of lack of novelty ought not to be reached unless the prior art document contains a clear and unmistakable disclosure of the subject-matter of the later invention" (in this context, see also T 677/91) (cf. T 763/07).

In T 305/87 (OJ 1991, 429) the board considered it expedient to state that, in order to assess novelty, it was not sufficient to limit oneself to the contents of a single document taken as a whole, but rather it was necessary to consider separately each entity described therein. The board made it clear that it was not permissible to combine separate items belonging to different embodiments described in one and the same document merely because they were disclosed in that one document, unless of course such combination had been specifically suggested there. In the case at issue, the two shears known from the catalogue were therefore definitely two separate entities forming two independent bases for comparison which ought to be considered in isolation when assessing novelty, and it was not admissible to piece together artificially a more relevant state of the art from features belonging to one or both of these entities, even if they were both disclosed in one and the same document (see T 901/90, T 931/92 and T 739/93, T 763/07).

In T 332/87 the board, after having recalled that the disclosure of a document normally had to be considered as a whole, held that, when examining novelty, different passages of one document might be combined, provided that there were no reasons which would prevent a skilled person from making such a combination. In general, the technical teaching of examples might be combined with that disclosed elsewhere in the same document, e.g. in the description of a patent document, provided that the example concerned was indeed representative of, or in line with, the general technical teaching disclosed in the respective document (see also T 1630/07, T 2188/08, T 1239/08).

According to established case law, the disclosure of a patent document does not embrace the combination of individual features claimed in separate dependent claims if such combination is not supported by the description (cf. T 525/99, T 496/96, T 42/92).

In T 42/92 it was explained, in accordance with the boards' established case law, that a pre-published patent specification formed part of the state of the art under Art. 54(2) EPC 1973 only as regards those elements which the person skilled in the relevant art would incontestably infer from the document as a whole. The disclosure of a prior-art patent specification did not however cover combinations of individual features arising from reference back to the claims if those features were claimed separately for patent-law considerations and combining them was not supported by the description, or even - as here - was at odds with the embodiments described.

In decision T 610/95, in view of the objection of lack of novelty, the question to be answered was whether or not the proposed solution in the patent was derivable directly and unambiguously from the disclosure of citation (2), which contained cross-references to the entire content of three patent specifications without giving priority to any of these references. Each of these references offered a plurality of different options for preparing pressure-sensitive layers of medical dressings. The board held that, under these circumstances, it could not be said that the use of the specific product acting as pressure-sensitive material in the claimed invention was directly and unambiguously derivable from the wholly general reference to the three different prior documents quoted in citation (2) and had therefore already been made available to the public.