The patent that could not be amended

Can they amend to above 680 degrees?

Almost certainly not

Amendment is limited to disclaimer, correction or explanation, and may not result in the specification claiming or describing matter not in substance disclosed before the amendment. A threshold that appears nowhere in the filed document is new matter.

A single worked example at 700 degrees does not disclose a range starting at 680. It discloses 700.

What the specification could have contained

The threshold, stated as a range with a stated lower limit. A comparative example below the threshold showing the process failing. An explanation of why the threshold exists. Two or three examples across the range.

All of that was known to the inventors before filing. None of it was written down, because the draft was prepared from a description of the process as it was actually run, rather than from a conversation about where it stops working.

That conversation - where does it fail, and why - is the single most useful question a drafter can ask, and it is frequently never asked.

What should have happened

• Recorded the boundary conditions: where the process stops working, and why.
• Included comparative examples outside the working range.
• Stated ranges and sub-ranges explicitly rather than relying on one example.
• Asked, before filing, what the narrowing amendment would be if the closest prior art matched the example.

This scenario is a composite teaching example written by Ragulika IP. It does not describe any real client, application or matter, and any resemblance to a specific case is coincidental.