T 0795/21 (Chemical compounds / NUCANA) vom 24.03.2023

Inventive step - (no) main request, auxiliary requests 1-3, 10-13, 24-27, 34-37, 48-49, 52-53, 60-61, 54-65, 72-75, 84-87, 96-97, 201-103
Divisional application - subject-matter extends beyond content of earlier application
Divisional application - (yes) auxiliary requess 4-9, 14-23, 28-33, 38-47, 50-51, 54-59, 62-63, 66-71, 76-83, 88-95, 98-101, 104-107

Following the explicit reference in G 2/10 to the applicability of the existing jurisprudence regarding the singling out of compounds or sub-classes of compounds or other so-called intermediate generalisations not specifically mentioned nor implicitly disclosed in the application as filed (see G 2/10, section 4.5.4), the Board understands the notion of
"the remaining generic group of compounds differing from the original group only by its smaller size" versus "singling out an hitherto not specifically mentioned sub-class of compounds"
and the notion of
"mere restriction of the required protection" versus "generating another invention" or "suitable to provide a technical contribution to the originally disclosed subject-matter"
as developed in the jurisprudence (see in section Case Law of the Boards of Appeal, supra, section II.E.1.6.3) not as modifications of the "gold standard" for the assessment of amendments in the form of additional or alternative criteria, but rather as considerations which may arise from the application of this standard when assessing amendments by deletion of options from multiple lists and which may affirm the result of such assessment. In particular, the observation that a deletion of options from multiple lists is an amendment suitable to provide a technical contribution to the originally disclosed subject-matter, can be used to support the assessment that this amendment is not in compliance with the "gold standard".