What does an examiner consider when reviewing a patent owner’s response with amendments?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

When a patent owner’s response contains amendments, the examiner must consider specific legal issues. According to the MPEP:

“If the patent owner response contains an amendment, the examiner will consider the amendment to determine whether the amendment raises issues of 35 U.S.C. 112 and/or broadening of the claims under 35 U.S.C. 314.”

This means the examiner evaluates whether the amendments introduce any new matter, indefiniteness, or improperly broaden the scope of the claims beyond their original coverage.