4. Determining the disclosure of the relevant prior art

In G 0001/23 the Enlarged Board answered the referred questions as follows:

"1. A product put on the market before the date of filing of a European patent application cannot be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced by the skilled person before that date.

2. Technical information about such a product which was made available to the public before the filing date forms part of the state of the art within the meaning of Article 54(2) EPC, irrespective of whether the skilled person could analyse and reproduce the product and its composition or internal structure before that date.

3. In view of the answers to Questions 1 and 2 an answer is not required."

The Enlarged Board decided that in interpreting the referred questions, it was not needed to treat analysability independently from reproducibility. The questions turned on the requirement of reproducibility and whether this was indeed a valid condition of an available product for forming part of the state of the art. The Enlarged Board highlighted that the prior art status of non-reproducible man-made products put on the market and non-reproducible naturally occurring materials can be assessed similarly. In addition, the term "reproduce" could cover two possibilities: obtaining again a product put on the market in its readily available form, as well as for the skilled person to manufacture the product themselves. In the context of the referral, the EBA understood the term "reproduce" in the latter, more limited sense. In any event, "reproducibility" was to be understood as being only on the basis of the common general knowledge the skilled person has before the filing date.

The EBA concluded that both interpretations of G 1/92 proposed by the referring board and existing case law lead to absurd results. The first interpretation postulated that non-reproducible but otherwise existing and commercially available products do not belong to the state of the art. The EBA saw this interpretation as establishing a legal fiction overriding facts and which was not explicitly stated in the law. The second interpretation, according to which only the composition of a non-reproducible product is excluded from the prior art, was also seen to lead to absurd results. All starting materials used by the skilled person must be selected on the basis of their desired properties, which in turn are determined by the composition of the material. Also the very first raw material in the production chain inevitably had to come from a natural source. Its composition must be known and consciously exploited by the skilled person, even where they would not be able to reproduce the composition by a different route. The non-reproducible property, the composition, could not be ignored or disregarded, or else there would be no material left for the skilled person to work with.

The EBA therefore provided the correct interpretation of G 1/92 and held that the expected reproducibility of the product must be understood in a broader sense, namely as the ability of the skilled person to obtain and possess the physical product. This meant that the requirement would be inherently fulfilled by a product put on the market. The proper reading of the answer of G 1/92 was set out as follows: "The chemical composition of a product is part of the state of the art when the product as such is available to the public and can be analysed by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition."

In turn, this meant that all analysable properties of a product put on the market become public alone by the possibility that they can been analysed, because the product was physically accessible. If the composition can be analysed, this becomes part of the state of the art as well, also if the skilled person is not in the position to reproduce it on their own.

The EBA also explained that prior art that is not considered relevant does not mean that the prior art does not exist. Something that belongs to the existing state of the art need not be relevant for any invention and for all provisions of the EPC where the state of the art is to be taken into account. That a non-reproducible product belongs to the state of the art does not necessarily mean that the product or its features must be taken into account equally when assessing novelty or inventive step.

In T 1816/22 the appellant's objection of lack of novelty of claim 1 as granted was based on the disclosure provided in D1 and a sentence which referred to D2 by stating: "Perfumes are generally described in U.S. Patent No. 7,186,680 at column 10, line 56, to column 25, line 22". In the opinion of the appellant, this sentence disclosed all the perfumes mentioned in the portions of this document that were specifically identified above, thus also "ethyl vanillin", listed for example at the top of the table in column 13 of D2, which was also present in both of the only two fully formulated examples "Enduring Perfume A" and "Enduring Perfume B" disclosed in D2. Accordingly, a single selection — if any — among the perfumes implicitly disclosed in D1 (through its reference to D2) would be sufficient to arrive at the laundry product of claim 1 of the opposed patent.

For the board, the reference to D2 was so vague that it could not be equated to a (albeit implicit, but nevertheless) direct and unambiguous disclosure that the "perfume" components of the prior art fabric treatment composition described in D1 could be any one of the specific perfumes disclosed in the cited portion of D2.

According to the board, already upon reading the wording "generally described" in the reference to D2 per se, a skilled person might expect that such a reference pertains exclusively to the general definitions of groups/ classes of perfumes (e.g., in terms of their chemical classes, origin, type of scent, or other properties) possibly provided in D2.

This at least seemingly possible — if not more probable — interpretation of the reference to D2 made in D1 appeared also consistent with the actual disclosure in the specific portions of D2 identified in D1.

Even when considering the entire portion of D2 identified in D1, the board found the reference to D2 too vague, as it remained at least possible that the intention was to refer only to the groups or classes of perfumes described in general.

Since the reference to D2 did not render part of the direct and unambiguous disclosure of the prior art in D1 the possible use of any specific perfumes disclosed in D2 (including the "ethyl vanillin" cited by the appellant), the subject-matter of claim 1 was not anticipated in D1.