1.7.4 Decisions applying the criteria established by the Enlarged Board in G 2/10 – remaining subject-matter test

The board in T 1224/14 found that an amendment designed to exclude a specific value from a range described as particularly preferred in the application as filed did not meet the G 2/10 criteria for an allowable disclaimer.

In T 2130/11 the disclaimer in the third auxiliary request excluded a disclosed embodiment from a generic class. The board considered that the remaining subject-matter was still generic and could not be considered as a non-disclosed subgroup which had been singled out by means of the disclaimer, so that the remaining general teaching could not be seen as being modified by the disclaimer. Whether the invention worked for the claimed subject-matter and what problem was credibly solved by it were questions which were not relevant for assessing whether this subject-matter extended beyond the content of the application as filed. See however also T 1441/13 and T 1808/13 according to which it had to be established whether the subject-matter of the invention remaining in the claim was available at the filing date.

In T 1577/21, the subject-matter of claim 1 of the main request resulted from the deletion of the proviso present in original claim 1. The deletion of a proviso/disclaimer explicitly disclosed in an application as originally filed as "not forming part" of the invention might not be admissible if the deletion resulted in the "non-part" being still partially claimed or if there was no disclosure in the original application as a whole which rendered the remaining claimed subject-matter directly and unambiguously derivable therefrom. In the present case, the omission of the proviso "provided that such pamoic acid or pharmaceutically acceptable salt thereof is not an active pharmaceutical ingredient" did not extend beyond the content of the application as filed. The main request thus met the requirements of Art. 123(2) EPC.

In T 1660/22 the subject-matter of claim 1 in auxiliary request 5 contained a disclosed disclaimer. The board therefore considered whether the remaining claimed subject-matter was directly and unambiguously disclosed in the application as filed (G 2/10). The original disclosure also included the method for producing HFSI without a catalyst, as it was apparent from the several paragraphs and an example of the description that a catalyst was optional. Therefore, the remaining subject-matter, i.e. the method without a catalyst, met the "gold standard".