What should an applicant do if new matter is objected to in their patent application?

If new matter is objected to in a patent application, the applicant must take specific actions to address the objection. According to the MPEP, the examiner will use Form Paragraph 7.28, which states:

Applicant is required to cancel the new matter in the reply to this Office action.

To respond, the applicant should:

1. Review the identified new matter carefully.
2. If the applicant agrees it’s new matter, cancel the objected content in their response.
3. If the applicant disagrees, provide a detailed explanation demonstrating how the original disclosure supports the contested material.
4. Consider amending the application to use language more closely aligned with the original disclosure.

It’s crucial to address all new matter objections promptly to avoid potential rejections under 35 U.S.C. 112(a).

To learn more:

• new matter
• objection
• patent application
• applicant response