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Guidelines for Examination

 
 

1. State of the art pursuant to Art. 54(2)

An invention is considered to be new if it does not form part of the state of the art. For a definition of "state of the art", see G‑IV, 1. It should be noted that in considering novelty (as distinct from inventive step, see G‑VII, 8), 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, theThe concept of "seriously contemplating" (see G‑VI, 8(iii)) may alsobe used to assess novelty in the case of overlapping ranges of claimed subject-matter and the prior artwhether individual features in a document can be combined with one another (see T 666/89, T 656/92 and T 632/93). This concept is fundamentally different from the concept used for assessing inventive step, namely whether the skilled person "would have tried, with reasonable expectation of success", to bridge the technical gap between a particular piece of prior art and a claim whose inventiveness is in question (see G‑VII, 5.3), because in order to establish anticipation, there cannot be such a gap.

Furthermore, any matter explicitly disclaimed (with the exception of disclaimers which exclude unworkable embodiments) and prior art acknowledged in a document, insofar as explicitly described therein, are to be regarded as incorporated in the document.

It is further permissible to use a dictionary or similar document of reference in order to interpret a special term used in a document.