Résumé de EPC2000 Art 076 pour la décision T0795/21 du 24.03.2023

In T 795/21 the parent application as originally filed defined variables X and Y for the compounds of formula I as follows: "X and Y are independently selected from the group comprising H, F, Cl, Br, I, OH and methyl (-CH3)". It was not in dispute that amended claim 1 of auxiliary request 4 included the limitation of the meaning of Y to F in combination with the deletion of H from the list of options for X with respect to the compounds of formula I. The board observed that, in accordance with established jurisprudence regarding the deletion of meanings from multiple lists defining variables in a generic formula, it was not sufficient that the remaining subject-matter still related to a generically defined group of compounds. In order to comply with Art. 123(2) EPC the deletion must not result in a particular combination of specific meanings which was not originally disclosed and which thereby generates another invention. In other words, the amendment may not lead to a particular combination which was not derivable from the originally disclosed subject-matter and was therefore potentially suitable to provide a technical contribution. In the patent as granted, the definition of the compounds of formula I had already been limited by restricting Y to a single meaning. Whilst such limitation was not objectionable as sole amendment, the combination of this limitation of Y with the further deletion of H from the list of options for X in claim 1 of auxiliary request 4 singled out a sub-group of compounds which was well suitable to provide a technical contribution generating another invention. The original disclosure did not provide any pointer to this sub-group of compounds. The board noted that in G 2/10 (point 4.3 of the Reasons) the Enlarged Board explained that the notion of a "technical contribution", as referred to in G 1/93 (point 16 of the Reasons) in the context of conflicting requirements under Art. 123(2) and (3) EPC and in G 1/03 (points 2.6 and 4 of the Reasons) in the context of disclaimers for undisclosed subject-matter, was not intended to modify the "gold standard" for the assessment of amendments. The board agreed with the considerations in T 1937/17 that, accordingly, in the context of an amendment which was found to be allowable or not allowable under the "gold standard" any investigation as to the potential for a technical contribution was without relevance. However, the deletion of options from multiple lists of separate characteristics inherently included an aspect of combination and potentially involved an aspect of arbitrariness, which may complicate the assessment of whether such amendments remained within the limits of what the skilled person would directly and unambiguously derive from the original disclosure. 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, point 4.5.4 of the Reasons), the board understood in this context 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 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. Accordingly, the board considered that the observation that the deletion of options for X and Y in accordance with claim 1 of auxiliary request 4 was suitable to provide a technical contribution to the originally disclosed subject-matter supported the assessment that this amendment was not in compliance with the "gold standard". The board therefore concluded that auxiliary request 4 did not fulfil Art. 76(1) EPC.