In the case of overlapping ranges (e.g. numerical ranges, chemical formulae) of claimed subject-matter and the prior art the same principles apply for the assessment of novelty as in other cases, e.g. selection inventions (see T 666/89
). It has to be decided which subject-matter has been made available to the public by a prior art disclosure and thus forms part of the state of the art. In this context, it is not only examples, but the whole content of the prior art document which has to be taken into consideration. As to overlapping ranges or numerical ranges of physical parameters, novelty is destroyed by an explicitly mentioned end-point of the known range, explicitly mentioned intermediate values or a specific example of the prior art in the overlap. It is not sufficient to exclude specific novelty destroying values known from the prior art range, it must also be considered whether the skilled person, in the light of the technical facts and taking into account the general knowledge in the field to be expected from him, would seriously contemplate applying the technical teaching of the prior art document in the range of overlap. If it can be fairly assumed that he would do so, it must be concluded that no novelty exists. In T 26/85
, the skilled person could not seriously contemplate working in the area of overlap, since the prior art surprisingly contained a reasoned statement clearly dissuading him from choosing said range, although the latter was claimed in said prior art. The criteria mentioned in (ii)
above can be applied analogously for assessing the novelty of overlapping numerical ranges (see T 17/85
). As far as overlapping chemical formulae are concerned, novelty is acknowledged if the claimed subject-matter is distinguished from the prior art in the range of overlap by a new technical element (new technical teaching), see T 12/90
, point 2.6 of the reasons, for example a specifically selected chemical residue which is covered in general terms by the prior art in the overlapping area, but which is not individualised in the prior art document. If this is not the case, then it must be considered whether the skilled person would seriously contemplate working in the range of overlap and/or would accept that the area of overlap is directly and unambiguously disclosed in an implicit manner in the prior art (see for example T 536/95
). If the answer is yes, then novelty is lacking.