The patent relates to a process for preparing a carbohydrate-containing nutritional powder by spray–drying.
Brief outline of the case
The patent was revoked and the proprietor appealed the decision.
The OD decided not to admit the fresh ground for opposition under Art 100(a) regarding lack of novelty.
The OD identified two differences in claim 1 as granted over D19, namely that the starch is pre-gelatinised and that the starch particles are blown (i.e. not sucked) into the spray dryer. It did not consider the claimed subject-matter inventive.
Claim 1 of AR 1, filed during the OP before the OD, was also found to lack inventive step.
The opponent’s view was that there was no distinguishing feature over D19.
The board agreed with the opponent and held that claim 1 has no distinguishing feature over the disclosure of the closest prior art D19.
Based on G 7/95, OJ 1996, 626, Reasons 7.2, the board considered that a finding of lack of novelty …. inevitably results in such subject-matter being unallowable on the ground of lack of inventive step.
The subject-matter of claim 1 thus lacked an inventive step due to the absence of any distinguishing feature, as the belated ground of opposition of lack of N was not admitted by the OD.
Hence, the board confirmed the revocation.
Interpretation of the claim in the light of the description
§  of the patent discloses that the pre-gelatinised starch is introduced into the spray dryer via the apparatus for blowing back fines. Such a process is according to the invention. This confirmed that introducing the pre-gelatinised starch via a fines return system qualifies as introducing it into a spray- dryer’s zone of turbulence.
The proprietor argued that §  of the patent had by mistake not been adapted during the examination proceedings leading to grant. The statement in this paragraph was not meant to define what the zone of turbulence was.
This argument was not found convincing.
Firstly, interpreting a claimed feature in light of the description requires that account be taken of the description as it is actually contained in the file. Therefore, when interpreting claim 1 of the patent as granted, account must be taken of paragraph  as it is contained in the patent specification.
The board also noted that the proprietor adapted the description before grant of the patent. In particular, the examples were stated not to be according to the invention. If the proprietor had wished to introduce further adaptations during the examination proceedings, then it should have done so. A mere intention in this regard is irrelevant. The patent specification has to be taken at face value.
Secondly, the teaching in §  of the patent specification makes technical sense and is confirmed by the closest prior art D19. Moreover, dependent claim 4 of the patent as granted also specifies that a blow back apparatus is used for introducing the particles of pre-gelatinised starch into the spray-dryer.
For the board, introducing pre-gelatinised starch into the spray-dryer via a fines return system as disclosed in D19 necessarily means that the starch is blown into the zone of turbulence.
Therefore, claim 1 has no distinguishing feature over the disclosure of the closest prior art D19.
This decision could lead to the conclusion that when the description is adapted to the claims, the adaptation has to be correct by all means. This is the right approach.
A further possible conclusion, would be that it is better not to adapt the description to the claims.
According to the majority of case law on adaptation of the description, this second solution would be contrary to Art 84, second sentence.
However, this decision shows once more that a decision of the EBA on whether or not the claims have to be interpreted taking into account the description during prosecution in examination or opposition is urgently needed.