MPEP § 608.04(c) — Review of Examiner’s Holding of New Matter (Annotated Rules)

§608.04(c) Review of Examiner’s Holding of New Matter

USPTO MPEP version: BlueIron's Update: 2025-12-31

This page consolidates and annotates all enforceable requirements under MPEP § 608.04(c), 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.

Review of Examiner’s Holding of New Matter

This section addresses Review of Examiner’s Holding of New Matter. Contains: 1 guidance statement and 1 other statement.

Key Rules

Topic

Patent Application Content

2 rules
MPEP GuidanceInformativeAlways
[mpep-608-04-c-78cd8ade1fb0ea239aeda35e]
Review of Examiner’s Requirement for Cancelation by Petition
Note:
When new matter is confined to amendments in the specification, review of the examiner's requirement for cancelation should be done through a petition. However, if the new matter affects claims, it becomes appealable.

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. See also MPEP § 2163.06.

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MPEP GuidanceRecommendedAlways
[mpep-608-04-c-632fd9f0a44c5c267df9eece]
Claims Must Be Rejected If New Matter Affects Them
Note:
If new matter introduced into claims, they must be rejected and the issue is appealable, not considered on petition.

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. See also MPEP § 2163.06.

Jump to MPEP SourcePatent Application Content

Citations

Primary topicCitation
Patent Application ContentMPEP § 2163.06

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.

BlueIron Last Updated: 2025-12-31