5.2.6 Generic disclosure

It is established case law that a specific disclosure destroys the novelty of a generic feature in a claim but that a generic disclosure does not destroy the novelty of a specific feature (see T 651/91, T 776/07, T 1174/05, T 6/04, T 776/07). A generic disclosure does not normally deprive a claimed specific embodiment of novelty (T 1786/09).

In T 651/91 the board pointed out that a generic disclosure did not normally deprive any specific example falling within that disclosure of novelty. A disclosure could be generic even where it only left open the choice between two alternatives. In T 508/91 the board held that, on the other hand, the prior disclosure of the subset "vegetables" deprived the wider set "fruits and plants" of novelty (see also T 1204/00).

The disclosure "rastered halftone images, such as portraits" of prior art document D3 necessarily included portraits which fall under the understanding of the feature "at least one digitised mark made of at least one set of dots appearing as a three dimensional mark when viewed in transmitted light" as defined in the patent in suit. The fact that, in addition, there might be portraits which fall under the disclosure of document D3 but which did not correspond to the claimed feature did not invalidate the existence of those that do: the wording of the claimed feature was even more generic than the disclosure in document D3 and was thus anticipated by it (T 687/14).