The subject-matter to be excluded is disclosed in the application as originally filed
The test to be applied is whether the skilled person would, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed (G 2/10
, Headnote 1a).
This test is the same as that applied when the allowability of a limitation of a claim by a positively defined feature is to be determined (see H‑V, 3.2
When it comes to determining whether, after the introduction of the disclaimer, the claim infringes Art. 123(2)
or whether it is in conformity with it, this cannot be decided solely by establishing that the disclaimed subject-matter is disclosed in the application as filed.
Whether the skilled person is presented with new information depends on how he or she would understand the amended claim, i.e. the subject-matter remaining in the amended claim and on whether, using common general knowledge, he or she would regard that subject-matter as at least implicitly disclosed in the application as filed.
What is required is an assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.
In this respect it has to be established whether the disclaiming of subject-matter leads for example to the singling out of compounds or sub-classes of compounds or other so-called intermediate generalisations not specifically mentioned or implicitly disclosed in the application as filed (see G 2/10).
Whether the invention works for the claimed subject-matter and what problem is credibly solved by it are questions which are not relevant for assessing whether this subject-matter extends beyond the content of the application as filed (see T 2130/11).