T 2277/16 - Implicit features and novelty

Key points

• The Board, about novelty: “a prior art document anticipates the novelty of claimed subject-matter if the latter is directly and unambiguously derivable from that document, including any features implicit to a person skilled in the art. A disclosure can only be considered "implicit" if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature forms part of the subject-matter disclosed”.
• I note that  T 0890/17 gave a different summary: “a prior art document is novelty destroying only if the skilled person would derive directly and unambiguously from the whole of that document, using common general knowledge, and seen objectively and relative to the date of said document, a subject-matter falling within the scope of what is claimed”.
• I prefer the approach of T0890/17. In the present case, claim 1 is directed to a composition comprising rozen lactic acid bacteria (LAB) culture which "comprises LAB that are able to utilize sucrose". The question is whether this is the case in document D3. D3 describes an ‘LAB’ bacteria strain (I assume in an enabling way) and according to the present Board the question is “whether document D3 implicitly discloses a LAB strain that can utilise sucrose. An implicit property of a disclosed product, here the specific Lm. cremoris strain ATCC 19254, can be established by evidence in other documents.”
• In terms of T0890/17, the question could be phrases as whether the strain ATCC 19254 at issue would be something falling within the scope of the claim under examination. The capability (or not) of the bacteria strain ATCC 19254 to utilize sucrose is an inherent property which can be established by evidence in other documents.
• I discuss more case law about novelty in my recent article in epi Information. Comments are welcome of course.

EPO T 2277/16 - link

Claim construction - claim 1

1. Claim 1 is directed to a frozen lactic acid bacteria (LAB) culture which is characterised by the following features:

(i) "comprises LAB that are able to utilize sucrose";

(ii) is a mixture of mesophilic LAB, i.e. it contains at least two LAB, having an optimum growth temperature at about 30°C;

(iii) has a weight of at least 50g of frozen material;

(iv) has a content of viable bacteria of at least 10**(9) colony forming units (CFU) per gram of frozen material; and

(v) comprises from 0.5% to 80% of a cryoprotective agent measured as w/w of the frozen material.

5. According to the established case law, a prior art document anticipates the novelty of claimed subject-matter if the latter is directly and unambiguously derivable from that document, including any features implicit to a person skilled in the art. A disclosure can only be considered "implicit" if it is immediately apparent to the skilled person that nothing other than the alleged implicit feature forms part of the subject-matter disclosed (see Case Law, I.C.4.3, 116).

6. Thus, the first issue to be assessed is whether document D3 implicitly discloses a LAB strain that can utilise sucrose. An implicit property of a disclosed product, here the specific Lm. cremoris strain ATCC 19254, can be established by evidence in other documents.