What is the process for reviewing an examiner’s new matter rejection in the specification?

When an examiner issues a new matter rejection confined to amendments in the specification, the process for review is through a petition. This is distinct from new matter rejections in claims, which require an appeal.

According to 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.”

To challenge the examiner’s holding of new matter in the specification:

1. Prepare a detailed petition explaining why the amendment does not introduce new matter.
2. Submit the petition to the USPTO, following the guidelines for petition submission.
3. The petition will be reviewed by the appropriate office, typically the Technology Center Director or their designee.
4. A decision will be issued either granting or denying the petition.

It’s important to note that this process is separate from the appeal process used for claim rejections.

To learn more:

• new matter
• specification amendments
• petition process
• patent examination