6. Chemical inventions and selection inventions

In T 2350/16, the appellant (opponent) argued that document D1 anticipated the subject-matter of claim 1. Having initially found that D1 disclosed all claim 1's features as such, the board still had to examine whether it also disclosed them in combination. It drew up a table showing where and in what context features 1d to 1h were disclosed and specifying from how many variants a selection had to be made to obtain each feature, and concluded that all the features were disclosed in combination. It also observed that the case law on selections from lists could not be applied in the case in hand, because it did not concern (long) lists of the kind commonly encountered in chemistry but, in each instance, merely a selection from among two or three elements at most. D1 disclosed all claim 1's features in combination and so anticipated the claimed subject-matter. The board also commented on the part played by the skilled person in the assessment of novelty. The respondent (proprietor) had repeatedly contended that D1 was prior art within the meaning of Art. 54(3) EPC and that it was therefore impermissible to keep invoking the skilled person. The board disagreed. Assessing novelty without constantly referring to the skilled person, even if that was not always stated explicitly, was unthinkable. On the other hand, it was not permissible as part of the novelty assessment to invoke the skilled person to settle matters of plausibility or obviousness of the kind which could arise in assessing inventive step.

In T 1085/13 the board decided that a claim defining a compound as having a certain purity lacks novelty over a prior-art disclosure describing the same compound only if the prior art discloses the claimed purity at least implicitly, for example by way of a method for preparing said compound, the method inevitably resulting in the purity as claimed. Such a claim, however, does not lack novelty if the disclosure of the prior art needs to be supplemented, for example by suitable (further) purification methods allowing the skilled person to arrive at the claimed purity. The question of whether such (further) purification methods for the prior-art compound are within the common general knowledge of those skilled in the art and, if applied, would result in the claimed purity, is not relevant to novelty, but is rather a matter to be considered in the assessment of inventive step. Further, the board was convinced that the rationale of T 990/96 (OJ EPO 1998, 489) and T 728/98 (OJ EPO 2001, 319) was not in line with G 2/88 (OJ EPO 1990, 93) and G 2/10 (OJ EPO 2012, 376).