I may be wrong but I think there is some tension between G 1/03 and G 2/10. So I am very interested in cases such as the present one where the Boards examine compliance with both decisions.
Claim 1 of the main request on file read:
Method for isolating essentially pure group 1, 2, 3, 10 and 13 grass allergens, characterised in that an aqueous extract of Graminae pollen other than Phleum pratense is prepared, and the soluble constituents are subjected to hydrophobic interaction chromatography, a gel filtration step and, if desired, cation exchanger chromatography. (my emphasis)
In what follows, Board 3.3.04 examines compliance with A 123(2):
*** Translation of the German original ***
 The Board notes that the present main request is based on the first auxiliary request which had been filed during the oral proceedings before the Opposition Division (OD) on February 7, 2008. This request differs from the claims as granted in that a disclaimer (“other than Phleum pratense” (“ausgenommen Phleum pratense”)) has been introduced into claim 1 and in that a new claim 8 has been added, which claim describes a three-step method for isolating grass allergens without the use of a disclaimer.
 The Board notes that neither the OD nor [the opponent] have raised the objection of inadmissible extension against the claims of the main request. The Board does not see any reason for reaching a different conclusion because the introduction of the disclaimer into claim 1 and the addition of claim 8 comply with the requirements of A 123(2) and the decisions G 1/03 and G 2/10. In claim 1 the disclaimer (“other than Phleum pratense”) serves the purpose of delimiting the subject-matter with respect to D8, which is state of the art pursuant to A 54(3)(4) EPC 1973. This document discloses an identical two-step method for isolating allergens from Phleum pratense (Timothy-grass), consisting of a hydrophobic interaction chromatography (HIC) and a gel filtration step […]. According to decision G 1/03 the introduction of a disclaimer that has not been disclosed in the application as filed can be allowable if it delimits a claim with respect to a state of the art pursuant to A 54(3)(4) EPC 1973, provided that the disclaimer does not exclude more than is necessary to re-establish novelty over this document and is clear and concise in order to comply with the requirements of A 84 (see decision G 1/03 [headnotes, 3]). The Board considers these requirements to have been complied with when the disclaimer “other than Phleum pratense” was introduced into claim 1. Therefore, the introduction of claim 8 is also admissible from the point of view of substantial law because it overcomes an objection of inadmissible extension and because a three-step method for isolating allergens from Graminae is not known from document D8, which means that there is no need to introduce a disclaimer for this method.
Moreover, decision G 2/10 requires the subject-matter remaining in the claim after the introduction of the disclaimer to be, explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed in order to satisfy the requirements of A 123(2) (see G 2/10 [headnote]). The application as filed discloses a purification method for isolating allergens from grass pollen, true grasses (Graminae) being particularly preferred […]. The family of true grasses comprises many grass types and is not limited to Phleum pratense, which was known to the skilled person on the priority date. For instance, in addition to Phleum pratense the description explicitly mentions pollen of the true grass types Lolium perenne, Dactylis glomerata, Festuca pratensis, Holcus lanatus, Poa pratensis, and Secale cereale as preferred raw material for purifying the claimed allergens […]. Thus claim 1 as amended by the introduction of the disclaimer still encompasses subject-matter allowing the invention to be carried out (der die Erfindung und ihre Ausführung ermöglicht). Moreover, the application does not provide any hint that the skilled person would have considered that the subject-matter remaining in the claim did not belong to the invention. From this the Board concludes that to the skilled person the subject-matter remaining in the claim was disclosed in the application as filed and that, as a consequence, the requirements of A 123(2) in the light of decisions G 1/03 and G 2/10 are satisfied.
I am not sure that this is how G 2/10 wanted things to be handled. What do you think?
Should you wish to download the whole decision (in German), just click here.
The file wrapper can be found here.