How does an examiner handle new matter in a patent application?
When an examiner encounters new matter in a patent application, they follow a specific procedure outlined in MPEP 2163.06:
“If new matter is added to the claims, the examiner should reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement. In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).”
The examiner will:
- Identify the new matter in the claims
- Reject the claims containing new matter under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph
- Provide a clear explanation of the rejection in the Office action
- If the new matter is in the specification or drawings, object to it and require the applicant to cancel the new matter
This process ensures that the patent application remains true to its original disclosure and prevents the introduction of undisclosed subject matter.
To learn more:
Topics:
MPEP 2100 - Patentability,
MPEP 2163.06 - Relationship Of Written Description Requirement To New Matter,
Patent Law,
Patent Procedure