Case No. IP-2015-000205

69.The IPO raised two objections to the clarity of the proposed amended claims, endorsed by Joa. Outer and inner layers bond through the aperture in the stretchable material 70.The first objection was that it would not be clear to the skilled person how the outer and inner layers would bond with each other through the aperture in the stretchable material and at the same time permit the formation of a vent unless there was also a hole in the inner and outer layers. 71.FDS’s answer is Mr Brinkley’s solution, illustrated in his manuscript diagram reproduced above. This was apparently not a solution that occurred to the IPO. I am not surprised. The only foundation for this construction in the specification was the last sentence of paragraph 55. I do not believe that such a construction of the bond sites would occur to the skilled person any more than it did to the IPO. No alternative construction that might make sense to the skilled person was suggested. In consequence, the proposed claims would lack clarity to the skilled person. Aperture larger than the respective bond site is formed through the stretchable material 72.The IPO’s letter of 8 November 2016 stated that by requiring an aperture larger than the respective bond site to be formed through the stretchable material, both proposed claims 1 and 9 thereby defined the claimed product and process in terms of the result to be achieved rather than by defining the means for achieving it. This was not an argument pursued by Mr Norris. 73.Leaving aside the previous objection to clarity, it seems to me that the requirement that the aperture in the stretchable material must be larger than its respective bond site is clear enough. The skilled person would adopt Joa’s construction, in which case he would understand that the hole in the stretchable material must be wide enough for the inner and outer layers to bond through it while leaving a gap. The bond site is then smaller than the aperture in the elastic layer. Even if the skilled person had arrived at FDS’s construction, that too would require the hole in the stretchable material to be wide enough to allow for a vent at its periphery and a narrower bond site in the middle. Size of the vents 74.Mr Norris added a further objection. He said that even if the skilled person was clever enough to work out Mr Brinkley’s construction of the bond sites, he would not know how big the vents should be. I think the answer to that is: big enough to make the side panels breathable.