1.7.4 Decisions applying the criteria established by the Enlarged Board in G 1/10 – 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.

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