T 0124/87 (Copolymers) of 09.08.1988

1. Article 54(1) EPC does not allow what already forms part of the state of the art to be patented. When part of the state of the art is a written document, what has to be considered is whether the disclosure of the document as a whole is such as to make available to a skilled man as a technical teaching the subject-matter for which protection is sought in the claims of the disputed patent (cf. Decisions T 12/81 "Diastereomers", OJ EPO 1982, 296, paragraph 5, and T 198/84 "Thiochloroformates", OJ EPO 1985, 209, paragraph 4 of the Reasons) (see point 3.2 of the Reasons).

2. If a prior document describes a process for the production of a class of compounds, the members of the class being defined as having any combination of values of particular parameters within numerical ranges for each of those parameters, and if all the members of the defined class of compounds can be prepared by a skilled man following such teaching, all such members are thereby made available to the public and form part of the state of the art, and a claim which defines a class of compounds which overlaps the described class lacks novelty. This holds even when the specifically described examples in the prior document only prepare compounds whose parameters are outside the claimed class (see point 3.2 to 3.5 of the Reasons). The above does not imply any deviation from the principle of selection inventions.

3. An argument which is presented for the first time at an oral hearing, which combines particular previously filed evidence with a particular previously cited document, may not be admitted for consideration in the exercise of discretion under Article 114(2) EPC (see point 4 of the Reasons).