T 1870/08 – Disclaimer Subtleties

The present decision is extremely interesting because it tries to shed some light on the - complex, to say the least - interrelation between G 1/03 and G 2/10.

If you only want the headnote, here it is:

The test of G 2/10 also applies to an amendment involving an undisclosed disclaimer by means of which a claim has been rendered new over a European patent application according to A 54(3). The examination of the admissibility of the amendment for compliance with A 123(2) must be made separately for the disclaimer per se and for the subject-matter remaining in the claim (see point [4] of the Reasons).

But I would definitely recommend that you also read the reasoning behind this statement.

The appeal was filed by the opponent after the Opposition Division had maintained the opposed patent in amended form. The wording of independent claim 1 of the main request was as follows (board’s labelling):

(i) A superconducting wire comprising:

(ii) a tubular sheath member (2); and

(iii) an oxide superconductor (1) filled in said sheath member,

(iv) said sheath member being formed of a material resistant in an oxidizing atmosphere to oxidation at the temperature of heat treatment used to form said superconducting wire,

(v) said material being selected from Au, Ag or an alloy thereof and

(vi) when said sheath is Ag or an alloy thereof, said oxide superconductor is not of the K2NiF4 type.

In the following extract the Board examines the request with respect to the requirements of A 123(2):

[4.1] Claim 1 specifies that the sheath member is

• filled with an oxide superconductor ( feature (iii)) and
• formed of a material selected from Au, Ag or an alloy thereof (feature (v)).

Feature (vi) of claim 1 specifies that when said sheath is Ag or an alloy thereof, the oxide superconductor is not of the K2NiF4 type. The following subject-matter is therefore disclaimed:

The combination of

• an oxide superconductor of the K2NiF4 type and 
• a sheath made of Ag or an alloy thereof.

[4.2] The indication that the oxide superconductor is of the “K2NiF4 type” relates to the crystal structure of the superconductor and means that this structure is of the same type as that of potassium nickel fluoride K2NiF4.

In the application documents as originally filed it is disclosed […] that the oxide superconductor may have a perovskite type crystal structure. Furthermore, layered perovskite oxides and oxygen deficient perovskite oxides are mentioned. It is also disclosed that the sheath member contains a material selected from the group of: Ag, Au, Pt, Pd, and their alloys. Furthermore, combinations of specific superconducting compositions and specific sheath materials have been disclosed in the examples of the invention […].

However, the combination of an oxide superconductor of the K2NiF4 type and a sheath made of Ag or an alloy thereof is not disclosed as subject-matter of the invention or as a possible negative feature in the application as filed. The feature (vi) is therefore regarded to be an undisclosed disclaimer.

By means of the disclaimer (vi) the subject-matter of claim 1 has been rendered new over document D1, a European patent application according to A 54(3) […].

[4.2.1] The [opponent] argued that the disclaimer was inadmissible in the light of G 2/10. The disclaimer obviously had a technical effect, because Ag as mentioned in the disclaimer clearly had different physical properties from the other materials. For example, it was well known that Au and Ag had quite different melting temperatures, which could have a significant impact on their applicability as a sheath material. This technical teaching was not derivable from the application as filed. Hence, the subject-matter “remaining in the claim after the introduction of the disclaimer” would not pass the test as set out in G 2/10.

Disclaimers in the light of decision G 1/03

[4.3.1] Both referring decisions T 451/99 and T 507/99 leading to decision G 1/03 (and G 2/03) of the Enlarged Board of Appeal (EBA) posed the question whether an undisclosed disclaimer may be allowable when its purpose is to meet a lack-of-novelty objection pursuant to A 54(3) EPC 1973. This question is answered in the order of G 1/03.

A 54(3) is essentially equivalent to A 54(3) EPC 1973. Decision G 1/03 is therefore concerned with the same situation as in the present case and has to be considered carefully. This is especially the case in view of the board’s obligations under Article 21 RPBA (OJ EPO 2007, 536).

[4.3.2] G 1/03 [2.1] is of particular relevance in relation to state of the art under A 54(3). It was explained there that for a proper interpretation of the law the purpose of A 54(3) EPC 1973 had to be taken into account.

There followed a discussion of the two traditional solutions in Europe which dealt with the problem of how a later application should be affected by an earlier application which had not been published at the filing or priority date of the later application (“whole contents approach” vs. “prior claim approach”). The corresponding discussions in the preparatory work to the EPC were also mentioned. Although eventually the “whole contents approach” was, at least in principle, accepted for the EPC, it was qualified in important respects and could not be said to implement the “philosophical” basis of the “whole contents approach”, i.e. that nothing be patented that had already been disclosed to the patent office.

The legal history made it clear that the intention was to restrict the effect of the earlier application as far as possible in order to avoid unfairness resulting from the concept of a fictional publication. Furthermore, delimitation against an earlier application was a traditional and well-known exercise under the “prior claim approach” and it might be assumed that the highly controversial “whole contents approach” would never have been accepted in the preparatory work to the EPC if it had been suggested not only to extend the state of the art to be considered for novelty by a legal fiction but also to do away with the practice of delimitation against earlier applications.

For the interpretation of A 123(2) EPC 1973 it was deduced from the discussion on A 54(3) EPC 1973 that the purpose of the disclaimer excluding a conflicting application was merely to take account of the fact that different applicants were entitled to patents in respect of different aspects of inventive subject-matter and not to change the given technical teaching.

The following conclusion was reached:

“Such a disclaimer, only excluding subject-matter for legal reasons, is required to give effect to A 54(3) [1973] and has no bearing on the technical information in the application. It is, therefore, not in contradiction to A 123(2) [1973].” (point [2.1.3, second paragraph]).

As will be apparent below, the correct interpretation of the finding that an admissible disclaimer “has no bearing on the technical information in the application” is decisive for the question whether a claim may be found to infringe A 123(2).

[4.3.3] In the discussion on A 54(3) EPC 1973 cited above, reference is made (see G 1/03 [2.1.1]), inter alia, to A 54(4) EPC 1973. According to the transitional provisions under Article 7 of the Act revising the EPC of 29 November 2000 (Special edition No. 1, OJ EPO 2007, 197) in conjunction with Article 1, last sentence of the Decision of the Administrative Council of 28 June 2001 on the transitional provisions under Article 7 of the Act revising the European Patent Convention of 29 November 2000, A 54(4) EPC 1973 shall apply to patents already granted at the time of entry into force of the EPC 2000. Furthermore, A 123(2) is essentially equivalent to A 123(2) EPC 1973. The board therefore concludes that the reasoning of G 1/03 referred to above applies to the present case.

The decision G 2/10

[4.4.1] The [opponent] argued that the introduction of the disclaimer (vi) into claim 1 infringed A 123(2), especially in view of decision G 2/10 of the EBA.

In the referring decision T 1068/07 [14] leading to decision G 2/10 of the EBA it was held that the subject-matter of the disclaimer had been disclosed as an embodiment of the invention in the application as filed. This is also reflected in the question put to the EBA.

In G 2/10 [2.3] the term “embodiment” in the referred question was understood to be addressing the issue of disclaiming “subject-matter”, which is consequently reflected in the order of G 2/10. That decision therefore concerns an amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed.

The present case, by contrast, relates to an undisclosed disclaimer […]. Decision G 2/10 is therefore, prima facie, not concerned with the same situation as in the present case, so it may be questioned whether that decision is applicable at all to the present case.

[4.4.2] The [opponent] argued in particular that in order to decide whether the amendment introducing the disclaimer (vi) into claim 1 infringed A 123(2), the test set out [in] G 2/10 [4.5] had to be applied.

[4.4.3] This test, which in the following the board will refer to as the “test of G 2/10”, is that an amendment to a claim by the introduction of a disclaimer infringes A 123(2) if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed (see G 2/10 [order 1a; 4.5.1-2]). Determining whether or not that is the case requires a technical 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 (see G 2/10 [order 1b; 4.5.3-5]).

[4.4.4] On the other hand, in G 1/03 the conclusion that the disclaimer was not in contradiction to A 123(2) EPC 1973 was based on essentially legal considerations, taking into account the purpose of A 54(3) EPC 1973 and having particular regard to the preparatory work to the EPC […]. Even though the notion of ‘remaining subject-matter’ is mentioned, how it should be determined or defined is not dealt with any further (see for example the last sentence of point [2.1.3]). Accordingly, it is not immediately apparent how, or to what extent, the test of G 2/10 should be applied to the present case, if applicable at all. For example, decision T 1049/08 held that G 2/10 applies exclusively to disclosed disclaimers (see point [4.4, 4^th §]). At the same time the board is aware that some passages of G 2/10 strongly suggest otherwise, as explained hereafter.

[4.4.5] G 2/10 [4.7] discusses the President’s suggestion that, where the subject-matter remaining in the claim was not directly and unambiguously derivable from the application as filed, the criteria established in G 1/03 should be applied regarding the allowability of the disclaimer. This was suggested since otherwise, in the case of state of the art according to A 54(3) EPC 1973, an applicant disclaiming disclosed subject-matter could be in a worse position than an applicant disclaiming subject-matter for which there was no disclosure in the application.

[4.4.6] The EBA examined this question and held that this discrepancy does not exist. More importantly, it did not interpret decision G 1/03 “to have intended, in its answer 2, to exhaustively determine the conditions under which, if fulfilled, an amendment by introduction of an undisclosed disclaimer was to be regarded as allowable under A 123(2) under all circumstances.” It is, however, not explicitly stated in G 2/10 what other conditions had to be fulfilled for such an amendment to be allowable. On the other hand, there can be little doubt that in the opinion of the EBA, claims containing an undisclosed disclaimer may well be found to infringe A 123(2). This is most clearly seen from the last statement of point [4.7]:

“Hence, in that decision [i.e. G 1/03] it was not decided that, the requirements of answer 2 being fulfilled, an undisclosed disclaimer would always be allowable under A 123(2).”

Furthermore, from the overall context of the President’s proposal and the answer of the EBA, as described above, it appears that in the opinion of the EBA such an infringement of A 123(2) would have the same cause as in the case of the disclaimers disclaiming disclosed subject-matter, namely the lack of disclosure of the subject-matter remaining in the claim. In other words, the test of G 2/10 also applies for undisclosed disclaimers.

[4.4.7] This may convey the impression that the two decisions contradict, given that an undisclosed disclaimer – as part of the definition of the claimed subject-matter – could obviously not have been disclosed to the skilled person in the application as filed.

The board therefore needs to examine how the test as set out in G 2/10 is applicable in the present case without running counter to the ratio decidendi of G 1/03. In this the board also attaches considerable weight to the fact that in G 2/10 the EBA at no point states or suggests that the findings of G 1/03 are not valid, although this decision is analysed in great detail (G 2/10 [3, 4.3, 4.4]).

Applicability of the teaching of G 2/10 to the present case

[4.5.1] The question is whether the test of G 2/10 may in fact require that an undisclosed disclaimer, being part of the definition of the claimed subject-matter, also needs to have a basis in the application as filed.

This would mean that undisclosed disclaimers would no longer be possible. Such a conclusion would have required the EBA to have made a clear statement to this effect, which it did not, however, as observed above […].

[4.5.2] It therefore follows that in G 2/10 the EBA in fact meant something else. For this reason, the board is of the opinion that the above-cited last sentence of point [4.7] of the Reasons was intended to mean that it was not decided in G 1/03 that, the requirements of answer 2 of G 1/03 being fulfilled, an amendment involving an undisclosed disclaimer would always be allowable under A 123(2). A similar formulation is in fact also used by the EBA in the preceding paragraph: “… an amendment by introduction of an undisclosed disclaimer …” (G 2/10 [4.7, 4^th §, second sentence]).

[4.5.3] This board believes that the EBA intended to refer to an amendment by which the addition of an undisclosed disclaimer results in an amended claim in which the subject-matter remaining in the claim after the amendment – but not the undisclosed disclaimer itself – needs to be examined for its compatibility with A 123(2). The question now remains as to how this examination should be done.

[4.5.4] Such an interpretation of G 2/10 makes it possible to maintain the crucial distinction between, on the one hand, the disclaimer per se, namely a feature of the claim which contributes to the definition of the claimed subject-matter, which may be itself allowable on the basis of G 1/03 even when undisclosed, and, on the other hand, the subject-matter remaining in the claim after the introduction of the disclaimer. The possibility of such a distinction is in line with the findings of G 1/03, and is not in contradiction with G 2/10, as will be explained hereafter. At the same time, the notion of the ‘subject-matter remaining in the claim’ makes sense independently of whether the disclaimer per se was disclosed or not. It is another matter that ascertaining compliance with A 123(2) may require a different examination, depending on whether the disclaimer was disclosed or not.

[4.5.5] Decision G 1/03 introduced the notion that the subject-matter remaining in the claim may well be defined and identified even without the subject-matter of the disclaimer per se, see G 1/03, [2.1.3, last sentence]:

“The remaining subject-matter is not modified by the disclaimer.”

This finding of the EBA is understood by the present board to mean that the disclaimer does not form part of the remaining subject-matter, in the sense that its technical effects – or more precisely any teaching which may possibly be derived from a technical analysis of the features used in the formulation of the disclaimer – must simply be disregarded when the claim is compared with the original teaching in the application as filed. It is another matter that the disclaimer is required to identify those possible embodiments of the original technical teaching which are no longer covered by the amended claim, but are nevertheless still covered by the original technical teaching, i.e. the original disclosure normally understood as defining the subject-matter for the purposes of A 123(2).

[4.5.6] The EBA at no point stated in G 2/10 that the distinction between disclaimers and other features of the claim is no longer tenable. On the contrary, the EBA confirmed that disclaimers are special in the sense that they are not to be considered as belonging to the invention, that is the technical subject-matter:

“By contrast, the technical subject-matter defined in the disclaimer does not make the disclaimed subject-matter as such a part of the definition of the claimed invention” (G 2/10, point [4.5.2, 2^nd §]).

[4.5.7] It needs no particular emphasis that the use of undisclosed disclaimers may be quite common in certain technical areas, yet it must be considered as an exceptional tool in claim drafting. Its exceptional character is well illustrated by the fact that G 1/03 laid down strict conditions for its applicability. The board observes that the possibility of using undisclosed disclaimers has been derived from the legislative intent, and not from the wording of the EPC. Accordingly, such a possibility cannot and need not be explained on the basis of an interpretation which is derived only from the wording of the EPC. However, given that this latter interpretation is the basis of most proceedings before the EPO, care must be taken not to deviate from this “standard” interpretation of the Convention more than absolutely necessary. This explains the required exceptional approach to the examination of claim amendments involving undisclosed disclaimers as opposed to claim amendments involving disclosed features.

[4.5.8] A 123(2) refers to the subject-matter of an application or patent as a whole, which may not be amended beyond the original content of the application. The claim is part of the application, and therefore it appears natural that A 123(2) also applies to the subject-matter of the claim. The term “subject-matter” as used in the EPC mostly refers to the technical teaching of the invention. This is best illustrated by comparing the wording of paragraphs (2) and (3) of A 123, with the former referring to subject-matter as opposed to the (scope of) protection conferred.

[4.5.9] Furthermore, the patent system normally awards legal protection to the patent proprietor for exactly the subject-matter which had been disclosed as the invention, i.e. a technical solution. Even when the original full disclosure of an application is limited later in the light of the state of the art, it is to be expected that the remaining subject-matter can be qualified as a complete and fully disclosed invention. However, when “subject-matter” is considered as the “subject-matter of a claim”, it suddenly develops a legal dimension. Besides expressing the technical teaching of the invention (what has been taught by the inventor to solve a technical problem), it also defines the legal subject-matter, namely the legal scope of protection (what others are excluded from exploiting). These are assumed to be the same, by virtue of A 69(1) in conjunction with R 43(1) (R 29(1) EPC 1973), the latter requiring that the claims define the protection sought (i.e. the legal subject-matter) in terms of the technical features of the invention. Though not expressly stated in this Rule, it is of course presumed that here a possibly limited invention in conformity with A 123(2) is meant.

[4.5.10] The “subject-matter remaining in the claim” is doubtless also subject-matter of a claim, and as such it may also refer to both technical and legal subject-matter. As long as technical and legal subject-matter are the same, “subject-matter” may appear to be freely interchangeable between its technical and legal meaning. This is not the case when the subject-matter remaining in the claim results from an amendment by an undisclosed disclaimer.

[4.5.11] Indeed, in the case of a claim comprising such a disclaimer the scope of the technical and of the legal subject-matter may be different. The scope of protection sought is less than the scope as taught by the invention, through the use of the purely legal limitation which as such does not make the subject-matter defined by the disclaimer part of the definition of the claimed invention. From this it also follows that technical and legal subject-matter are no longer freely interchangeable. On the contrary, the notion ‘subject-matter remaining in the claim’ as used in G 1/03 and G 2/10 must be carefully examined at every stage to ascertain whether it refers to the technical or legal subject-matter.

[4.5.12] It appears to the board that it is unproblematic to read the concepts ‘subject-matter remaining in the claim’ and ‘subject-matter disclosed in the application as filed’ in the order of G 2/10 as technical subject-matter, i.e. the features of the invention as taught. This also holds true for the concept ‘disclaimed subject-matter’, given that it was the precondition of the referral for G 2/10 that the disclaimed subject-matter was disclosed in the application as filed.

[4.5.13] If, on the other hand, the order of the EBA in decision G 2/10 had to be read as also applying to a claim which has been amended by means of an (admissible) undisclosed disclaimer, as apparently suggested by the EBA (see point [4.4.6] above), then the meaning of the expression “subject-matter remaining in the claim after the introduction of the disclaimer” must inevitably change to legal subject-matter in certain instances, namely whenever the effects of the disclaimer are examined. Put simply, in order to avoid comparing apples and pears during the examination for compliance with A 123(2), one must always keep in mind that the purely legal subject-matter of the disclaimer cannot by definition modify the original technical subject-matter.

[4.5.14] Furthermore, if the disclaimer was undisclosed, it would not find any support in the sense of implicit or explicit disclosure in the application. Having anything undisclosed in a claim may not appear to be conform with A 123(2) according to its normal or usual interpretation, i.e. when all claim features, without exception, are expected to be directly and unambiguously derivable from the application as filed. However, assuming that A 123(2) only sets up a requirement for the technical subject-matter, while at the same time accepting that the disclaimer cannot modify the technical subject-matter, then it is not A 123(2) which is violated. Rather, claims containing (admissible) undisclosed disclaimers are exempted from complying with R 43(1), since the claim will contain features which might be technical per se, but they will not be those of the invention.

[4.5.15] In this case, the claimed subject-matter is not amended so as to extend beyond the original content when compared with the originally disclosed (technical) subject-matter of the application, because the disclaimer does not modify the teaching of the invention, as a matter of law: it is not part of the definition of the invention. It only exists in a legal sense: it provides the limitation which is solely intended to play a role when the scope of protection needs to be determined, but cannot be considered when the original technical merits of the invention are examined. However, this limiting effect in itself, i.e. the result of the limitation (but not the features which have resulted in the limitation), may still have an effect on the technical subject-matter, as will be illustrated below.

[4.5.16] Finally, it is mentioned that apart from the question of compliance with A 123(2) as prescribed by decision G 2/10, the amended claim, including the disclaimer, also needs to fulfil the other requirements laid down by G 1/03, such as clarity and conciseness (see point [2.4] of the order) and restriction of the amendment to the minimum (see point [2.2] of the order).

The test of G 2/10

[4.6.1] The exceptional character of an amendment by way of an undisclosed disclaimer, as explained above, dictates that the examination of the admissibility of such an amendment is made with due regard to this exceptional character. In particular, the examination of the admissibility of the amendment for compliance with A 123(2) must be made separately for the disclaimer per se and for the subject-matter remaining in the claim (see point [4.5.4] above).

[4.6.2] The examination must start with the question whether the formal conditions for the use of an undisclosed disclaimer as laid down in decision G 1/03 are given. In the present case this is uncontentious, because the disclaimer is intended to delimit the invention against a European patent application according to A 54(3).

It would appear wrong to the board first to examine any technical effect of the proposed disclaimer in order to decide on its admissibility, as proposed by the [opponent]. Most disclaimers are worded using technical terms, so that such an examination would inevitably find technical effects as a result of the technical terms used. This would consequently make all such disclaimers inadmissible, which could not have been the intention of the EBA in view of G 1/03. Accordingly, the arguments of the [opponent] cannot stand.

Furthermore, it appears wrong to the board to require at this stage in the examination of the proposed amendment that implicit or explicit support for the disclaimer per se should be found in the application as filed. As stated above, this would automatically disqualify all undisclosed disclaimers.

[4.6.3] The test as laid down in decision G 2/10 should thus take place after an examination of the legal preconditions for admitting the use of undisclosed disclaimers according to G 1/03 and after the insertion of the proposed disclaimer in the claim. It is only at this stage that the examination of the “subject-matter remaining in the claim” should be made, corresponding to the order of G 2/10. This procedure is not in contradiction to the findings and the order of G 2/10: the subject-matter remaining in the claim “after the introduction of the disclaimer” must be examined (see point 1a of the order of G 2/10). The wording of the order leaves it open whether the disclaimer per se must fulfil A 123(2) or not.

[4.6.4] There is also nothing in G 2/10 itself which would imply the contrary. Similar formulations are used throughout the decision, e.g.: “Whether the skilled person is presented with new information depends on how he or she would understand the amended claim” (emphasis by the board, see point [4.5.2, 3^rd §]). This board only adds that the skilled person, when reading the amended claim, is expected to be aware that the claim contains an undisclosed disclaimer, given that G 1/03 instructs that undisclosed disclaimers must be drafted so that they are readily identifiable as such (see [3, last §]). Therefore, the skilled person will be able to read the claim keeping in mind the differences between the technical and legal subject-matter, as explained above (see point [4.5.9]). Other board decisions have also readily accepted that the remaining subject-matter can be examined independently of whether there is any basis for the disclaimer itself (see for example T 1107/06 [45]).

[4.6.5] Again, in the opinion of this board, the order of decision G 2/10 not only makes it clear that the test which it lays down applies to the amended claim, but the test is also applicable to amendments involving an undisclosed disclaimer. It is true that point 1b of the order concentrates on the examination of the technical content: determining whether or not the amendment infringes A 123(2) “requires a technical assessment of the overall technical circumstances of the individual case under consideration”. The emphasis put on the technical content is understandable given that the referrals plainly concerned disclaimers apparently not benefiting from the special status of admissible undisclosed disclaimers. Yet the order does not imply that the disclaimer per se needs to have a basis in the application as filed. Rather, the above determination of whether or not the amendment infringes A 123(2) should be made “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” (see point 1b of the order).

[4.6.6] Put differently, the test of G 2/10 can be used for examining the remaining subject-matter with due regard to the fact that the disclaimer is an undisclosed one that, as such, does not add technical subject-matter as a matter of law. As explained above, given that the skilled person is aware that the undisclosed disclaimer needs to be treated as such, the skilled person will also be able to determine whether the technical subject-matter remaining within the legal scope of the claim has been properly disclosed as required by G 2/10.

[4.6.7] This said, the Board now needs to determine how the requirement for the amended claim to meet the test of G 2/10 may possibly be satisfied.

In the first place, it must be examined whether the proposed disclaimer is indeed a proper disclaimer, in the sense that the remaining legal subject-matter is less than that of the unamended claim. If any subject-matter can be identified which falls within the scope of the claim after amendment by the proposed disclaimer, but which did not do so before the amendment, the disclaimer is improper. For example, a negative formulation removing a restricting feature may look like a disclaimer, but may in fact extend the legal scope of protection. The board takes it that such an amendment, not being a disclaimer at all, would also fail the test of G 1/03 so that any further examination under G 2/10 would in fact be redundant.

Secondly, it may be examined whether there is any remaining subject-matter at all. A comparison of the originally disclosed and remaining subject-matter may reveal that a proper interpretation of the disclaimer in fact leaves the amended claim empty, in the sense that no technically realistic or feasible embodiments can be identified on the basis of the original application which would still fall under the amended claim.

Thirdly, even if the second examination is passed, it may still be justified to examine whether the remaining subject-matter could plausibly be considered as belonging to the invention as presented in the application. For example, some existing remaining subject-matter may well be positively identified purely on the basis of claim logic. Nevertheless, a technical assessment of the original application may show that the amended claim is restricted to such a combination of parameters which the skilled person would never have contemplated as belonging to the invention from a technical point of view, for example because it would not solve the technical problem underlying the original invention.

It must be emphasized that these types of examinations are given only as examples potentially suitable for determining whether the remaining subject-matter can be considered as properly disclosed in the sense of G 2/10. It goes without saying that other types of examinations may offer themselves, depending on the technical content of the application and the proposed disclaimer.

The present case

[4.7.1] In the present case, the board is satisfied that the subject-matter remaining in the claim has been properly disclosed and that the [patent proprietor] is not benefiting from an unwarranted advantage as a result of the amendment (G 1/93 [9]).

[4.7.2] In particular, in the application documents as originally filed it is disclosed […] that the oxide superconductor may have a perovskite type crystal structure in the broad sense. This comprises structures which are not of the K2NiF4 type, which was also known to the person skilled in the art of superconductor technology at the priority date. For instance, in example 10 […] a superconducting wire is disclosed in which the components were mixed at a mixing ratio of (Y0.4Ba0.6)CuO3, which is not of the disclaimed type. Furthermore, it is disclosed […] that the sheath member contains a material selected from the group of: Ag, Au, Pt, Pd, and their alloys.

From the priority document JP56856/87 of 13.03.1987 […] it can also be derived that the oxide superconductor has a perovskite type crystal structure which is not of the K2NiF4 type as described above, and that the sheath member is composed of Ag, Au or an alloy thereof.

Thus it is clear that there are genuine and realistic embodiments still encompassed by the amended claim. Furthermore, there is no pointer in the application or any evidence on file that the embodiments still covered by the claim would not provide the advantages of the invention or that the skilled person could not have reproduced them at the priority date. Put differently, there is no pointer in the application for not considering these embodiments as belonging to the invention.

[4.7.3] Accordingly, the board is satisfied that the technical subject-matter remaining in the claim has been properly disclosed to the skilled person in the application as filed. The board is also satisfied that the disclaimer is clear and concise, and properly restricted in relation to the anticipating content of European patent application D1. For these reasons the board is of the opinion that the amendment introducing the disclaimer (vi) into claim 1 is not contrary to the requirements of A 123(2), and is allowable in the light of both G 1/03 and G 2/10.

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