What is the process for reviewing new matter objections or rejections?

The process for reviewing new matter objections or rejections can vary depending on the specific circumstances. According to MPEP 2163.06:

1. Typically, an objection is petitionable, while a rejection is appealable.
2. However, when the objection is “determinative of the rejection,” such as when the examiner has indicated that the disclosure contains new matter, the issue may be addressed by the Patent Trial and Appeal Board.
3. If both a rejection and an objection have been made by the examiner due to new matter in the claims and specification or drawings, the issue becomes appealable and should not be decided by petition.

The MPEP states: “While ordinarily an objection is petitionable, and a rejection is appealable, when the objection is ‘determinative of the rejection’, such as the case where the examiner has indicated that the disclosure contains new matter, the matter may be addressed by the Patent Trial and Appeal Board.”

For more information on appeals, refer to MPEP § 1201.

To learn more:

• new matter
• objections
• rejections
• appeals
• petitions