EP 3 658 288 B1 relates to a method to grind a mass in a grinder wherein the mass is provided to the grinder via a hopper and transported by a feeder worm to a rotating processing worm which conveys the mass towards a cutting set which grinds the mass and wherein the feeder worm initially rotates in a first direction and which periodically reverses its direction.
Brief outline of the case
The OD decided that claim 1 as granted lacked N over D1=WO 2017/009282 A1. D1 was classified as X in the ESR established by the EPO.
The patent was maintained according to AR1.
The proprietor as well as opponents 1 and 3 appealed the decision.
The board confirmed the maintenance according to AR1.
The proprietor’s point of view
The proprietor argued that the skilled person would, according to G 1/24, interpret the term periodically using the narrower meaning after reading the description because in paragraph [0006] of the contested patent.
The proprietor further argued that paragraph [0023] should be read in the light of paragraph [0018] in which it was stated that the sensor value was used to determine the rotation pattern rather than cause the reversal of rotation of the feeder worm.
The proprietor also argued that feature F4 (periodic reversal of the rotation direction of the feeder worm), had to be read together with feature F5 (the feeder worm rotates according to a preset pattern.
As feature F5 referred to a preset pattern, which was a structured repeatable sequence, then “periodically” had to be understood as a fixed time interval.
The board’s decision
In the board’s view, paragraph [0023] of the contested patent contradicts the proprietor’s narrower interpretation of “periodically reversed” as occurring at fixed time intervals only. Paragraph [0023] of the contested patent discloses that the process of reversing the direction of the rotation of the feeder worm may be controlled automatically based on measured parameters.
The skilled person would therefore understand that “periodically” may also refer to a reversal initiated by the value or course of a measured parameter, such as the feeder drive motor power, which would mean that the reversals do not necessarily occur at fixed time intervals. Therefore, the skilled person would use the broader interpretation of “periodically” as meaning from time to time as with this interpretation the description of the patent as granted would contain no contradictions.
The board noted that paragraph [0018] refers specifically only to parameters related to the mass being processed whereas paragraph [0023] clearly refers to mass parameters and/or process parameters and explicitly states that the process of reversing the direction of the feeder worm is controlled automatically based on measured parameters.
The board was therefore of the view that paragraph [0018] does not lead the skilled person to understand that any reference in later paragraphs to a sensor value must be understood as relating to setting a pattern rather than causing a reversal of the direction of rotation.
The board held that the skilled person, when considering the claim, would not regard feature F5 as requiring that “periodically” is a fixed time interval. Feature F5 merely requires the feeder worm to rotate according to a preset pattern, but how that preset pattern is initiated is not part of feature F5.
Paragraph [0006] also states that the “reversion of the direction of rotation of the feeder worm is not initiated by an overload situation as disclosed in the state of the art D1=WO 2017/009282 A1…”.
The board found that this does not lead to a narrow interpretation of “periodically” as fixed time interval reversals, due to the further indications in paragraph [0023] but also due to the lack of a clear indication of what is to be regarded as an “overload situation” according to D3.
There is no definition in D3 of when a feeder worm is regarded as overloaded. The overload is detected by sensor measurements relating to, for example, the speed of rotation of the feeder worm, the torque needed to rotate it or the power consumption of the motor. It is not clear for the skilled person when a threshold level for a parameter would be regarded as an “overload situation” (paragraph [0006]), and when it would merely be an indication that a reversal should take place (paragraph [0023] of the patent).
The board added that G 1/24 does not require that limitations from the description must be read into the claims and referred to T 2027/23, Reasons 3.5.1 to 3.5.8.
For the board, it is therefore still established case law that the description cannot be relied upon to read into a claim an implicit restrictive feature not suggested by the explicit wording of the claim, cf. CLBA, 11th edition 2025, II.A.6.2.3 d, first paragraph.
In the present case the exclusion present in paragraph [0006] of the contested patent therefore does not limit the claim.
Comments
G 1/25 would not have change the present interpretation under G 1/24 as the limited interpretation of “periodically” in the description was not applicable in general. The quotation of T 2027/23 was thus justified.
If the proprietor would have wanted that “periodically” to be limited to fixed time intervals, he should have amended the claim accordingly, as required in T 2027/23.
Section II.A.6.2.3d has been revised in the 2026 edition of the CLBA, in order to take into account G 1/24, but the above considerations do not change in view of this amendment.
On the procedure
The ED did not interpret “periodically” as the OD and the board did. D1 was not only to be classified as X but actually as D,X. In the ISO, claim1 as filed was denied N, as it was considered that the change of rotation was occurring “periodically”. Without much explanation from the applicant, the objection was dropped and the application proceeded to grant.
At least, the patent should not have been granted in the form it was.
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