How can an applicant challenge a new matter rejection?

An applicant can challenge a new matter rejection through different procedures depending on where the alleged new matter appears:

1. Specification: If the new matter is confined to amendments in the specification, the challenge is made by way of petition.
2. Claims: If the alleged new matter is in the claims or affects the claims, the challenge is made through the appeal process.

The MPEP states: Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition. But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one, and should not be considered on petition even though that new matter has been introduced into the specification also. (MPEP 608.04(c))

It’s important to note that the applicant bears the burden of showing that the alleged new matter is actually supported by the original disclosure. This often involves pointing to specific parts of the original specification, drawings, or claims that provide implicit or explicit support for the contested subject matter.

To learn more:

• new matter rejection
• patent application
• petition
• appeal
• USPTO