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Case Law of the Boards of Appeal

3.4. Taking intrinsic features into account

In T 59/87 (OJ 1991, 561) the respondent had contended that a particular document inherently disclosed the claimed invention and was therefore destructive of novelty. However, the board stressed that decision G 2/88 (OJ 1990, 93, Corr. 469) emphasised that the question to be decided was what had been made available to the public, not what might have been inherent in what was made available to the public. Furthermore, when considering how far the teaching in a written description also made the inevitable result of carrying out such teaching available to the public, in each case "a line must be drawn between what is in fact made available and what remains hidden or otherwise has not been made available". Thus, the board decided that whether a previously undisclosed technical effect, which in fact inevitably occurred when a previously disclosed technical teaching in a written description was carried out, had been made available to the public by reason of the teaching in the written description was a question of fact which had to be decided in the context of each individual case.

G 1/92 (OJ 1993, 277) further stipulated that a commercially available product did not per se implicitly disclose anything beyond its composition or internal structure. Other characteristics, which were only revealed when the product was exposed to interaction with specifically chosen outside conditions in order to provide a particular effect or result, or to discover potential results or capabilities, therefore pointed beyond the product per se as they were dependent on deliberate choices being made and thus could not be considered as already having been made available to the public.

Further to this decision, the board held in T 977/93 (OJ 2001, 84) that a product made available to the public was not reproducible within the meaning of G 1/92, and thus did not belong to the state of the art, if the skilled person could not establish that the reproduced product was identical to the commercially available one, because the intrinsic and extrinsic features of the product were not accessible and there was a high probability of variation upon reproduction.