T 0666/89 (Washing Composition) vom 10.09.1991

1. Under the EPC patents are not granted for the sole reason that they are "selections", but only for new and inventive subject-matter of certain defined kinds. Accordingly, there is no fundamental difference between deciding novelty in situations of so-called "overlap" or "selection", and in doing so in other situations (see paragraphs 6 and 8 of the reasons).

2. Matter that is "hidden" in a prior art document, in the sense of being reconditely submerged rather than deliberately concealed. will not have been "made available" to the public (cf. G 02/88). In the case of overlapping numerical ranges of physical parameters between a claim and a prior art disclosure, one useful approach to determining what is "hidden" as opposed to what has been made available, is to consider whether or not a person skilled in the art would, in the light of all the technical facts at his disposal, seriously contemplate applying the technical teaching of the prior art document in the range of overlap (cf. T 26/85). Provided the information in the prior art document, in combination with the skilled persons common general knowledge, is sufficient to enable him to practise the technical teaching, and if it can reasonably be assumed that he would do so, then the claim in question will lack novelty (see paragraph 7 of the reasons).

3. The above concept of "seriously contemplating" moving from a broad to a narrow (overlapping) range, while seemingly akin to one of the concepts used by the Boards for assessing inventive step, namely whether the notional addressee "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, is fundamentally different from this "inventive step concept" because in order to establish anticipation, there cannot be a gap of the above kind (see paragraph 8 of the reasons).

4. Under the EPC novelty must be decided by reference to the total information content of a cited prior document, and in assessing the content for the purpose of deciding whether or not a claim is novel, the Board may employ legal concepts that are similar to those used by them in deciding issues of obviousness without, however, thereby confusing or blurring the distinction between these separate statutory grounds of objection (see paragraph 8 of the reasons).