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Case Law of the Boards of Appeal

 
 
3.7. Taking examples into account

In T 12/81 (OJ 1982, 296) the board held that the teaching of a cited document was not confined to the detailed information given in the examples of how the invention was carried out, but embraced any information in the claims and description enabling a person skilled in the art to carry out the invention (see also T 562/90). In T 424/86 the board stated that the disclosure of a document was not to be construed only on the basis of the examples thereof; rather, the entire document had to be taken into consideration (see also T 373/95). In T 68/93 the board stated that it was not allowable to take a particular example out of context. In T 12/90, the board decided that the disclosure in a prior document likely to affect the novelty of a claim was not necessarily limited to the specific working examples, but also comprised any reproducible technical teaching described in the document (see also T 247/91 and T 658/91).

In T 290/86 (OJ 1992, 414) the board decided that what was "made available to the public" by specific detailed examples included in a document was not necessarily limited to the exact details of such specific examples but depended in each case upon the technical teaching which was "made available" to a skilled reader. The amendment of a claim by including a disclaimer in respect of such specific detailed examples could not render the claim novel.

In T 365/89 the board held that Art. 54(1) EPC 1973 did not require that a technical teaching had to be disclosed in detail, e.g. by working examples. Thus, the presence or absence of such more detailed information did not influence the answer to the question whether or not the relevant disclosure in a particular document belonged to the state of the art.

In T 666/89 (OJ 1993, 495) the respondent argued that the examples of a particular prior art document lay outside the scope of a particular claim and that the generic disclosure therein could not be held to be an anticipation of this claim. As a result, only the examples of a document should be regarded as state of the art. The board stated that the respondent had ignored the established jurisprudence of the boards of appeal, according to which it was necessary to consider the whole content of a citation when deciding the question of novelty. In applying this principle, the evaluation was therefore not to be confined merely to a comparison of the claimed subject-matter with the examples of a citation, but had to extend to all the information contained in the earlier document.

In T 1049/99 the board noted that, according to Art. 54(2) EPC 1973, the state of the art comprised "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". In the case of a "written description" open to public inspection, what is made available is all the information contained in that description. In some cases, the information contained in the written description, such as teaching on ways of carrying out a process, also provides access to other information necessarily resulting from the application of that teaching (T 12/81, OJ 1982, 296; T 124/87, OJ 1989, 491; T 303/86).