Case No. IP-2015-000205

IPO Report 47.Upon FDS filing its two successive proposed amendments in these proceedings pursuant to s.75 of the Act with the Intellectual Property Office (“IPO”), in the usual way the IPO issued a report containing its views on whether the amendments are allowable. In a letter dated 8 November 2016 the IPO dealt with claims 1 and 9 of the proposed amendment in issue here. The IPO said that the proposed amendments would introduce two requirements, each of which would result in the specification disclosing additional matter. Both objections were endorsed by Joa. The law 48.Section 76(3)(a) of the Act provides: “(3) No amendment of the specification of a patent shall be allowed under section 27(1), 73 or 75 if it – (a) results in the specification disclosing additional matter” 49.Despite the wording of s.76(3)(a), the prohibition imposed by that subsection is against an amendment which results in the disclosure of matter additional to that disclosed in the application for the patent as filed, not that disclosed in the specification of the patent being amended, see Triumph Actuation Systems LLC v Aeroquip-Vickers Ltd [2007] EWHC 1367 (Pat) [36]-[41], a judgment of Pumfrey J which he referred to and endorsed in Monsanto Technology LLC v Cargill International SA [2007] EWHC 2257 (Pat); [2008] FSR 7, at [156]. 50.There was no dispute about the law on added matter. It was reviewed fairly recently by Floyd LJ (with whom Longmore and Lewison LJJ agreed) in AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40; [2014] RPC 27. Aperture larger than the bond site is formed through the stretchable material 51.The feature of the claims that ultrasonic bonding should blow a hole in the stretchable layer (or elastic member) which is larger than the bond site is referred to only in paragraph 55 of both the application as filed and the Patent itself. The difference between the two paragraphs is that in the application as filed the second sentence begins with the word ‘preferably’. Paragraph 55 of the Patent is quoted above. 52.The letter from the IPO stated that whereas paragraph 55 discloses that the selection of a suitable stretchable material for the middle layer is essential to the formation of an aperture that is larger than the respective bond site, there is no such limitation in the proposed amended claims 1 and 9. As I understand the point being made by the IPO, the proposed amended claims would result in the additional disclosure that creating an aperture in the elastic layer which is larger than its respective bond site can be done by means other than the selection of a suitable stretchable material. 53.I am not clear how this objection can apply to proposed claim 9 which includes “selecting and positioning the first, second and stretchable material layers”. 54.Turning back to claim 1, as I read paragraph 55, the process of selecting materials for the outer layer (part of the backsheet), the inner layer (part of the topsheet) and for the intermediate elastic layer amounts to ensuring that the first two are non-woven materials and that the elastic layer is a polymeric material: “In this process, the non-woven materials (i.e. topsheet and backsheet) requires [sic] substantially more energy to bond than the material selected for the elastic member (i.e., a polymeric material).” 55.Mr Brinkley said in his witness statement that he was not aware of any elastically stretchable film materials known in the disposable hygiene garment sector as at the priority date which were not polymeric. This was not challenged. I take this to mean that the skilled person reading claim 1 would automatically assume that the stretchable material layer is polymeric. The claim expressly requires that the inner and outer layers are non-woven. On that basis no additional information is disclosed in claim 1. No apertures being formed in the outer and inner layers 56.Much more attention was given at the trial to this objection of added matter. I have already found that the invention disclosed and claimed in the Patent as granted comprises bond sites with holes in the inner and outer layers, as well as in the elastic layer. By contrast, the inventions claimed in the proposed amended claims 1 and 9 expressly require bond sites without holes in the inner and outer layers. So there is plainly a disclosure of additional matter relative to the Patent as granted. The question is whether the application as filed disclosed bond sites without holes in the inner and outer layers. 57.Paragraph 12 of the application as filed undoubtedly disclosed bond sites with holes in the inner and outer layers. It included this: “As a result of a bonding process, such as ultrasonic bonding, vent sites are created with include a hole(s) or aperture(s) through the stretchable material layer (and through the inner material layer and the outer material layer) and through which air is passable.” 58.The words in italics were deleted during the course of prosecution in the European Patent Office. There were two further deletions from paragraph 12, both consisting of the word ‘preferably’, once at the start of the paragraph as a whole and once at the start of the third sentence. 59.The wording of paragraph 12 is not by itself decisive. The embodiment of the invention disclosed in paragraphs 11 and 12 of the application was just one among other alternatives. Different embodiments are disclosed in subsequent paragraphs. Mr St Quintin put his argument this way: the paragraph 13 embodiment differed from that in paragraphs 11 and 12 only in relation to the vent site. There is no mention of holes in the inner and outer layers in paragraph 13 so the difference over the paragraph 11/12 embodiment must be that there is a hole only in the elastic layer. 60.Mr St Quintin went on to submit that the further embodiments of the invention disclosed in paragraphs 18, 55 and 67 are not stated to have a vent site with holes in all three layers. They must therefore have a hole only in the elastic layer. 61.Mr St Quintin said that the deletion of the words in italics in paragraph 12 during prosecution removed from the specification one possible embodiment: that with holes in all three layers of the side panel to make a vent. What remained in the specification was the disclosure of the alternative form of vent site: that with a hole only in the elastic layer. The important point was that the application as filed disclosed both types of vent site. 62.In my view Mr St Quintin’s argument begins with a false assumption. The difference between the embodiment of the invention disclosed in paragraph 13 of the application as filed and that disclosed in paragraphs 11 and 12 is that the outer material layer is an extension of the backsheet, while the inner material layer is an extension of the topsheet. This allows the ear portion to be seamless. The skilled reader of the application is not told that the vent site is any different in the paragraph 13 embodiment as compared to the paragraph 11/12 embodiment and has no reason to think that it is. 63.The same is true of the vent sites in the further alternative embodiments disclosed in paragraphs 14 to 17. 64.Paragraph 18 turns to the method invention. It includes this: “Accordingly, an aperture is formed through the stretchable material and the first material layer and the second material layer bond through the aperture, such that the aperture provides a breathable passage therethrough.” Although a little ambiguous, I think the skilled person would interpret the first and second layers bonding through the aperture such that the aperture provides a breathable passage to mean that they fuse, join and in each of them a hole is formed so that the vent is created. This would be reinforced by the very clear disclosure of holes in all three layers given in paragraph 12 of the application. 65.Thereafter, there is nothing in the application to disturb this view of how the vents are created, particularly not in paragraphs 55 and 67 which for all material purposes are the same as those in the Patent as granted. 66.There remains the puzzle of the deletion of the words in paragraph 12 of the application which I italicised above. The short answer, I think, is that whatever the intended purpose of that deletion, it made no difference. 67.In my view, therefore, the application as filed, including the claims, discloses the invention comprising side panels with vent sites having holes in all three layers of the side panel. There is no disclosure of bond/vent sites with no holes in the inner and outer layers. 68.It follows that the proposed amended claims 1 and 9 would result in the specification disclosing additional matter, contrary to section 76(1)(a) of the Act.