What is the relationship between the written description requirement and new matter?
The relationship between the written description requirement and new matter is explained in MPEP 2163.06: “The written description requirement under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, is separate and distinct from the new matter prohibition of 35 U.S.C. 132(a).” This means that while both concepts are related to the content of…
Read MoreWhat is the written description requirement under 35 U.S.C. 112(a)?
The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing. According to MPEP 2166, a rejection based on the written description requirement…
Read MoreWhat constitutes new matter in patent applications?
Amendments to an application which are supported in the original description are NOT considered new matter. The Manual of Patent Examining Procedure (MPEP) Section 2163.07 states: “Amendments to an application which are supported in the original description are NOT new matter.” This means that changes to the application that are already described or implied in…
Read MoreCan biological material descriptions be supplemented after the filing date of a patent application?
Can biological material descriptions be supplemented after the filing date of a patent application? Generally, supplementing biological material descriptions after the filing date is not allowed and can lead to issues: New matter rejections under 35 U.S.C. 112(a) Loss of priority date for added material Potential invalidity of the patent MPEP 2406.01 states: “Information which…
Read MoreWhat are the statutory provisions prohibiting the introduction of new matter?
There are two primary statutory provisions that prohibit the introduction of new matter in patent applications: 35 U.S.C. 132: This provision states that “no amendment shall introduce new matter into the disclosure of the invention.” 35 U.S.C. 251: This provision applies specifically to reissue applications and states that “no new matter shall be introduced into…
Read MoreWhat is the process for reviewing new matter objections or rejections?
The process for reviewing new matter objections or rejections can vary depending on the specific circumstances. According to MPEP 2163.06: Typically, an objection is petitionable, while a rejection is appealable. However, when the objection is “determinative of the rejection,” such as when the examiner has indicated that the disclosure contains new matter, the issue may…
Read MoreHow should applicants respond to new matter objections or rejections?
When responding to new matter objections or rejections, applicants should take the following steps: Review the objection or rejection carefully: Understand whether the issue is with the specification, drawings, or claims. Identify the alleged new matter: Determine which specific content the examiner has identified as new matter. Locate support in the original disclosure: Thoroughly review…
Read MoreIs rephrasing a passage in a patent application considered new matter?
Mere rephrasing of a passage in a patent application does not constitute new matter, as long as the meaning remains intact. The MPEP Section 2163.07 clarifies: “Mere rephrasing of a passage does not constitute new matter. Accordingly, a rewording of a passage where the same meaning remains intact is permissible.” This guideline allows applicants to…
Read MoreWhat is the “Rephrasing” allowance in patent application amendments?
What is the “Rephrasing” allowance in patent application amendments? The “Rephrasing” allowance refers to the USPTO’s recognition that inventors may rephrase portions of their application without introducing new matter. According to MPEP 2163.07: Mere rephrasing of a passage does not constitute new matter. Accordingly, a rewording of a passage where the same meaning remains intact…
Read MoreWhat is the purpose of the statement required when submitting an amended sequence listing XML file?
When submitting an amended sequence listing XML file, a statement is required to ensure that no new matter has been introduced. The MPEP 2414 states: “The statement must be submitted with the amended sequence listing XML file. The statement must indicate that the XML file complies with 37 CFR 1.835(b)(5) and the content of the…
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