Can I petition against a new matter rejection in claims?
No, you cannot petition against a new matter rejection in claims. When new matter affects the claims, leading to their rejection, the issue must be addressed through the appeal process, not by petition.
The MPEP 608.04(c) clearly states:
“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.”
This means that even if the new matter appears in both the specification and the claims, the claim-related issues must be addressed through an appeal to the Patent Trial and Appeal Board (PTAB), not through the petition process.
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