T 0514/24 - Deleting from lists

Key points

• Claim 17 is directed to a chemical material and contains six lists of elements. In AR-2a, the proprietor deletes elements from every list.
• Three out of eight elements are deleted in list II, 3 of 10 elements in list III, two out of 5 elements in list IV, and four out of six elements are deleted in list IV.
• The Board, in translation, "Claim 17 combines an arbitrarily chosen subgroup of the possible compositions of the metal oxide layer with an equally arbitrarily chosen subgroup of the possible laser types, without specifying a basis for the remaining combinations. The compatibility of this multiple deletion with Article 123(2) EPC is not immediately apparent and should have been substantiated by the appellant (Article 12(3) RPBA)."
• The decision contains additional reasoning on Article 123(2) and amendments consisting of selecting alternatives from the claim, but the above point appears to be crucial. 
• This reasoning is, as such, unremarkable. However, the auxiliary request serves to make the claim novel over a prior right under Article 54(3) EPC.
• The difficulty for me is that an undisclosed disclaimer would have been possible in these circumstances, under G 2/03 and G1/16 (it seems to me). But deleting elements from the recited lists is not. 

• EPO 

The link to the decision is provided after the jump.

https://www.epo.org/de/boards-of-appeal/decisions/t240514du1