How can I challenge an examiner’s new matter rejection?
The process for challenging an examiner’s new matter rejection depends on where the alleged new matter appears:
- For amendments to the specification: If the new matter is confined to amendments in the specification, you can file a petition to review the examiner’s requirement for cancellation.
- For new matter in claims: If the alleged new matter affects the claims, leading to their rejection, the issue becomes appealable and should not be considered on petition.
As stated in MPEP 608.04(c):
“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.”
This distinction is important because it determines the appropriate procedure for challenging the examiner’s decision.
To learn more:
Topics:
Patent Law,
Patent Procedure