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 the remainder of the specification, the applicant may amend the specification to include the claimed subject matter.”
This principle is based on the case In re Benno, 768 F.2d 1340, 226 USPQ 683 (Fed. Cir. 1985). However, it’s important to note that while the specification can be amended to include originally claimed subject matter, the original claims must still provide adequate written description support for the claimed invention.
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