Can a patent examiner suggest amendments to claims to address written description issues?

Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward. The MPEP 2163.04 states: “When appropriate, suggest amendments to the claims which can be supported by the application’s written…

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Can originally claimed subject matter be considered new matter?

Interestingly, originally claimed subject matter is generally not considered new matter, even if it’s not described in the rest of the specification. According to MPEP 2163.06: “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…

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Can new matter be introduced during ex parte reexamination?

New matter cannot be introduced into the disclosure during ex parte reexamination. The MPEP states: “35 U.S.C. 305 provides for examination under 35 U.S.C. 132, which prohibits the introduction of new matter into the disclosure.” If new matter is added to the claims or affects claim limitations, the claims should be rejected under 35 U.S.C.…

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