MPEP § 2163.06 — Relationship of Written Description Requirement to New Matter (Annotated Rules)
§2163.06 Relationship of Written Description Requirement to New Matter
This page consolidates and annotates all enforceable requirements under MPEP § 2163.06, including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.
Relationship of Written Description Requirement to New Matter
This section addresses Relationship of Written Description Requirement to New Matter. Primary authority: 35 U.S.C. 132, 35 U.S.C. 251, and 35 U.S.C. 112(a). Contains: 1 requirement, 3 guidance statements, 1 permission, and 2 other statements.
Key Rules
No New Matter in Reissue
There are two statutory provisions that prohibit the introduction of new matter. The first provision is 35 U.S.C. 132, which provides that no amendment shall introduce new matter into the disclosure of the invention. The second provision is 35 U.S.C. 251, which provides that no new matter shall be introduced into the application for reissue.
There are two statutory provisions that prohibit the introduction of new matter. The first provision is 35 U.S.C. 132, which provides that no amendment shall introduce new matter into the disclosure of the invention. The second provision is 35 U.S.C. 251, which provides that no new matter shall be introduced into the application for reissue.
Amendments Adding New Matter
When the claims have not been amended, per se, but the specification has been amended to add new matter, a rejection of the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, should be made whenever any of the claim limitations are affected by the added material.
When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not “new matter” is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure.
PTAB Jurisdiction
While ordinarily an objection is petitionable, and a rejection is appealable, when the objection is "determinative of the rejection", such as the case where the examiner has indicated that the disclosure contains new matter, the matter may be addressed by the Patent Trial and Appeal Board. See MPEP § 1201. For instance, if the claims and specification or drawings contain new matter either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable and should not be decided by petition.
While ordinarily an objection is petitionable, and a rejection is appealable, when the objection is "determinative of the rejection", such as the case where the examiner has indicated that the disclosure contains new matter, the matter may be addressed by the Patent Trial and Appeal Board. See MPEP § 1201. For instance, if the claims and specification or drawings contain new matter either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable and should not be decided by petition.
Patent Application Content
Lack of written description is an issue that generally arises with respect to the subject matter of a claim. If an applicant amends or attempts to amend the abstract, specification or drawings of an application, an issue of new matter will arise if the content of the amendment is not described in the application as filed. Stated another way, information contained in any one of the specification, claims or drawings of the application as filed may be added to any other part of the application without introducing new matter.
Lack of written description is an issue that generally arises with respect to the subject matter of a claim. If an applicant amends or attempts to amend the abstract, specification or drawings of an application, an issue of new matter will arise if the content of the amendment is not described in the application as filed. Stated another way, information contained in any one of the specification, claims or drawings of the application as filed may be added to any other part of the application without introducing new matter.
Claim Subject Matter
The claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985). Form paragraph 7.44 may be used where originally claimed subject matter lacks proper antecedent basis in the specification. See MPEP § 608.01(o).
The claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985). Form paragraph 7.44 may be used where originally claimed subject matter lacks proper antecedent basis in the specification. See MPEP § 608.01(o).
Support in Original Patent
There are two statutory provisions that prohibit the introduction of new matter. The first provision is 35 U.S.C. 132, which provides that no amendment shall introduce new matter into the disclosure of the invention. The second provision is 35 U.S.C. 251, which provides that no new matter shall be introduced into the application for reissue.
New Matter Objection Response
If new subject matter is added to the disclosure, whether it be in the abstract, the specification, or the drawings, the examiner should object to the introduction of new matter under 35 U.S.C. 132 or 251 as appropriate, and require applicant to cancel the new matter. 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. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). 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.
Rejections Specific to Reissue
If new subject matter is added to the disclosure, whether it be in the abstract, the specification, or the drawings, the examiner should object to the introduction of new matter under 35 U.S.C. 132 or 251 as appropriate, and require applicant to cancel the new matter. 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. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). 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.
Prior Art in Reissue
If new subject matter is added to the disclosure, whether it be in the abstract, the specification, or the drawings, the examiner should object to the introduction of new matter under 35 U.S.C. 132 or 251 as appropriate, and require applicant to cancel the new matter. 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. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). 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.
Assignee as Applicant Signature
When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not “new matter” is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure.
Claims
Lack of written description is an issue that generally arises with respect to the subject matter of a claim. If an applicant amends or attempts to amend the abstract, specification or drawings of an application, an issue of new matter will arise if the content of the amendment is not described in the application as filed. Stated another way, information contained in any one of the specification, claims or drawings of the application as filed may be added to any other part of the application without introducing new matter.
Citations
| Primary topic | Citation |
|---|---|
| Amendments Adding New Matter Assignee as Applicant Signature New Matter Objection Response Prior Art in Reissue Rejections Specific to Reissue | 35 U.S.C. § 112 |
| Amendments Adding New Matter Assignee as Applicant Signature New Matter Objection Response Prior Art in Reissue Rejections Specific to Reissue | 35 U.S.C. § 112(a) |
| New Matter Objection Response No New Matter in Reissue Prior Art in Reissue Rejections Specific to Reissue Support in Original Patent | 35 U.S.C. § 132 |
| No New Matter in Reissue Support in Original Patent | 35 U.S.C. § 251 |
| PTAB Jurisdiction | MPEP § 1201 |
| Claim Subject Matter | MPEP § 608.01(o) |
| Claim Subject Matter | Form Paragraph § 7.44 |
| Claim Subject Matter | In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985) |
| New Matter Objection Response Prior Art in Reissue Rejections Specific to Reissue | In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981) |
Source Text from USPTO’s MPEP
This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.
Official MPEP § 2163.06 — Relationship of Written Description Requirement to New Matter
Source: USPTO2163.06 Relationship of Written Description Requirement to New Matter [R-07.2022]
Lack of written description is an issue that generally arises with respect to the subject matter of a claim. If an applicant amends or attempts to amend the abstract, specification or drawings of an application, an issue of new matter will arise if the content of the amendment is not described in the application as filed. Stated another way, information contained in any one of the specification, claims or drawings of the application as filed may be added to any other part of the application without introducing new matter.
There are two statutory provisions that prohibit the introduction of new matter. The first provision is 35 U.S.C. 132, which provides that no amendment shall introduce new matter into the disclosure of the invention. The second provision is 35 U.S.C. 251, which provides that no new matter shall be introduced into the application for reissue.
I. TREATMENT OF NEW MATTERIf new subject matter is added to the disclosure, whether it be in the abstract, the specification, or the drawings, the examiner should object to the introduction of new matter under 35 U.S.C. 132 or 251 as appropriate, and require applicant to cancel the new matter. 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. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981). 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.
When the claims have not been amended, per se, but the specification has been amended to add new matter, a rejection of the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, should be made whenever any of the claim limitations are affected by the added material.
When an amendment is filed in reply to an objection or rejection based on 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, a study of the entire application is often necessary to determine whether or not “new matter” is involved. Applicant should therefore specifically point out the support for any amendments made to the disclosure.
II. REVIEW OF NEW MATTER OBJECTIONS AND/OR REJECTIONSWhile ordinarily an objection is petitionable, and a rejection is appealable, when the objection is “determinative of the rejection”, such as the case where the examiner has indicated that the disclosure contains new matter, the matter may be addressed by the Patent Trial and Appeal Board. See MPEP § 1201. For instance, if the claims and specification or drawings contain new matter either directly or indirectly, and there has been both a rejection and objection by the examiner, the issue becomes appealable and should not be decided by petition.
III. CLAIMED SUBJECT MATTER NOT DISCLOSED IN REMAINDER OF SPECIFICATIONThe claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in the remainder of the specification, the applicant may amend the specification to include the claimed subject matter. In reBenno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985). Form paragraph 7.44 may be used where originally claimed subject matter lacks proper antecedent basis in the specification. See MPEP § 608.01(o).