How should applicants respond to new matter objections or rejections?

When responding to new matter objections or rejections, applicants should take the following steps:

1. Review the objection or rejection carefully: Understand whether the issue is with the specification, drawings, or claims.
2. Identify the alleged new matter: Determine which specific content the examiner has identified as new matter.
3. Locate support in the original disclosure: Thoroughly review the application as originally filed to find support for the alleged new matter.
4. Provide a detailed response: According to MPEP 2163.06, “Applicant should therefore specifically point out the support for any amendments made to the disclosure.”
5. Remove unsupported material if necessary: If you cannot find support in the original disclosure, consider removing the new matter from the application.
6. Consider expert assistance: In complex cases, consider seeking the help of a registered patent attorney or agent.

Remember, the burden is on the applicant to show that the amendments are supported by the original disclosure. Clear and concise explanations, with specific citations to the original application, are crucial in overcoming new matter objections or rejections.

To learn more:

• new matter
• objections
• rejections
• patent application
• applicant response