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Case Law of the Boards of Appeal

4.2.1 Difference in wording

In T 114/86 (OJ 1987, 485) the board held that a mere difference in wording was insufficient to establish novelty (see T 12/81, OJ 1982, 296; T 198/84, OJ 1985, 209; T 248/85, OJ 1986, 261). In T 565/90 the appellant submitted that only preferred ranges or examples amounted to a technical disclosure destructive of novelty, and that generic ones could not anticipate the more specific teaching of the patent in dispute. The board did not agree and confirmed earlier case law that the definition of an invention which differed from the prior art only in its wording was insufficient to establish novelty. The board stated that what had to be established was whether or not the state of the art made the subject-matter of the invention available to the skilled person in the form of a technical teaching.

In T 917/94 the board stated that incorporation of a technical feature which is redundant because it does not change the claimed subject-matter does not impart novelty to known subject-matter.

In T 826/94 the board was of the opinion that a claimed measuring device, which showed all the constructive features of a known measuring device and differed from the latter only in name, i.e. in the dimensions to be measured, was novel within the meaning of Art. 54 EPC 1973 if it was only at the level of abstract thought, when the basic principles of the two measuring devices were compared with each other, that the conclusion could be drawn that the two measuring instruments were of the same type.

In T 452/05 the board noted that, in principle, a specific term was not anticipated by a generic term. Nevertheless, in T 870/95 an exception was made if it were proven that, in the light of common general knowledge, the generic term could only be understood in the meaning of the more specific term. Since this was not the case, the board concluded that the generic term ("water permeable membrane") did not anticipate the specific term ("filtering paper").

In T 79/96, an extract from a handbook (D1) disclosed all the features of claim 1 of the patent in issue apart from the use of a "countercurrent gas/gravity classifier". Thus, with respect to novelty it only had to be decided whether a vibrating fluidized bed with an upwards gas flow through the bed of particles as described in D1 should be regarded as a countercurrent gas/gravity classifier. The definition of a countercurrent gas/gravity classifier was given in an extract from another standard handbook on chemical technology (D3). The proprietor of the patent was of the opinion that the definition given in D3 was too broad and that a person skilled in the art would not consider a fluidized bed, being a rather inefficient classifier, as a countercurrent gas/gravity classifier.

The board did not share this view. It held that, when assessing novelty of the claimed subject-matter, an expression in a claim should be given its broadest technically sensible meaning. On that basis, any gas/gravity classifier, including a fluidized bed, satisfied the classification requirements of the claim 1 of the patent at issue. The subject-matter therefore lacked novelty over D1 (see also T 452/11, T 1126/05, T 596/96).