6.2.1 Anticipation of certain compounds

In T 2350/16, the appellant (opponent) argued that document D1 anticipated the subject-matter of claim 1. Having initially found that D1 disclosed all claim 1's features as such, the board still had to examine whether it also disclosed them in combination. It drew up a table showing where and in what context features 1d to 1h were disclosed and specifying from how many variants a selection had to be made to obtain each feature, and concluded that all the features were disclosed in combination. It also observed that the case law on selections from lists could not be applied in the case in hand, because it did not concern (long) lists of the kind commonly encountered in chemistry but, in each instance, merely a selection from among two or three elements at most. D1 disclosed all claim 1's features in combination and so anticipated the claimed subject-matter. The board also commented on the part played by the skilled person in the assessment of novelty. The respondent (proprietor) had repeatedly contended that D1 was prior art within the meaning of Art. 54(3) EPC and that it was therefore impermissible to keep invoking the skilled person. The board disagreed. Assessing novelty without constantly referring to the skilled person, even if that was not always stated explicitly, was unthinkable. On the other hand, it was not permissible as part of the novelty assessment to invoke the skilled person to settle matters of plausibility or obviousness of the kind which could arise in assessing inventive step.