PCT International Search and Preliminary Examination Guidelines
PART III EXAMINER CONSIDERATIONS COMMON TO BOTH THE INTERNATIONAL SEARCHING AUTHORITY AND THE INTERNATIONAL PRELIMINARY EXAMINING AUTHORITY
Chapter 12 Novelty
12.01 For the purposes of the opinion given by an international preliminary examination, the invention, as defined by a claim, lacks novelty if every element or step is explicitly or inherently disclosed within the prior art defined in Rule 64.1 (see paragraphs 11.01 and 11.04), including any features implicit to a person skilled in the art (see paragraph 13.11 for a definition of the “person skilled in the art”). Inherency requires that the extrinsic evidence relied on by the examiner must make clear that the missing descriptive matter is necessarily present in the reference, and that it would be so recognized by persons skilled in the art. Inherency, however, may not be established by probabilities or possibilities. The mere fact that a certain thing may result from a given set of circumstances is not sufficient. Well-known equivalents not disclosed within a prior art document are not considered when assessing novelty; this is a matter of obviousness (see Chapter 13 – Inventive Step). Naturally the same considerations apply when producing a written opinion and in selecting documents for inclusion in the international search report (except that in this case the relevant date may be different, see paragraphs 11.02 and 11.05).
12.02 The prior art disclosure must enable a person skilled in the art to carry out the claimed invention. Ordinarily, enablement may be inferred by the examiner when considering patent documents (published applications and issued patents) within the prior art. When considering non-patent literature that on its face raises a question as to enablement, the examiner should determine that the prior art would have enabled a person skilled in the art to carry out the claimed invention. When determining whether a particular document is enabling and therefore defeats novelty, knowledge from outside the prior art document may be considered where appropriate. See the appendix to this chapter for additional guidance regarding what knowledge from outside the prior art document may be considered when making this determination. A chemical compound, the name or formula of which was mentioned in a document, is not considered as known unless the information in the document, together, where appropriate, with other knowledge generally available to a person skilled in the art, enable it to be prepared and separated or, for instance in the case of a product of nature, only to be separated. A prior art document that does not defeat novelty because it is not enabling for the claimed invention may nonetheless be relied upon in determining whether the claimed invention lacks inventive step. See Chapter 13.