How does the USPTO determine if material is ‘new matter’ in a patent application?

How does the USPTO determine if material is ‘new matter’ in a patent application?

The USPTO determines if material is ‘new matter’ by comparing the content of the application as originally filed with any subsequent amendments or additions. According to MPEP 608.04(a):

In establishing new matter, the examiner must find that the subject matter is unequivocally described in the application as filed.

The process typically involves:

  • Reviewing the original specification, claims, and drawings
  • Comparing any amendments or new submissions to the original disclosure
  • Determining if the new material goes beyond what was explicitly or inherently disclosed
  • Considering whether a person skilled in the art would recognize the added material as being inherently present in the original disclosure

If the examiner finds that the added material is not supported by the original disclosure, it will be rejected as new matter under 35 U.S.C. 132(a) and 37 CFR 1.121(f).

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Topics: Patent Law, Patent Procedure
Tags: new matter, Uspto Examination