How does a patent examiner handle new matter in a patent application?

When a patent examiner encounters new matter in a patent application, they must take specific actions as outlined in MPEP 2163.06:

1. If new subject matter is added to the disclosure (abstract, specification, or drawings), the examiner should object to the introduction of new matter under 35 U.S.C. 132 or 251 and require the applicant to cancel the new matter.
2. If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
3. When the specification is amended to add new matter, but the claims haven’t been amended, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, if any claim limitations are affected by the added material.

The MPEP also notes: “The examiner should still consider the subject matter added to the claim in making rejections based on prior art since the new matter rejection may be overcome by applicant.”

To learn more:

• new matter
• patent examiner
• patent application
• objections
• rejections