MPEP § 608.04 — New Matter

Ninth Edition, Revision 01.2024 · last revised R-10.2019

35 U.S.C. 132   Notice of rejection; reexamination.

  • (a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be reexamined. No amendment shall introduce new matter into the disclosure of the invention.

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37 CFR 1.121  Manner of making amendments in applications.

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  • (f) No new matter. No amendment may introduce new matter into the disclosure of an application.

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In establishing a disclosure, applicant may rely not only on the specification and drawing as filed but also on the claims present on the filing date of the application if their content justifies it. See MPEP § 608.01(l).

While amendments to the specification and claims involving new matter are ordinarily entered, such matter (i.e., subject matter not present in the specification, claims, or drawings on the application filing date) is required to be canceled from the descriptive portion of the specification, and the claims affected are rejected under 35 U.S.C. 112(a).

When new matter is introduced into the specification, the amendment should be objected to under 35 U.S.C. 132 (35 U.S.C. 251 if a reissue application) and a requirement made to cancel the new matter. The subject matter which is considered to be new matter must be clearly identified by the examiner. If the new matter has been entered into the claims or affects the scope of the claims, the claims affected should be rejected under 35 U.S.C. 112(a) because the new matter is not described in the application as originally filed.

A “new matter” amendment of the drawing is ordinarily not entered; neither is an additional or substitute sheet containing “new matter” even though provisionally entered by the TC technical support staff. See MPEP § 608.02(h).

The examiner’s holding of new matter may be petitionable or appealable. See MPEP § 608.04(c).

For new matter in reissue application, see MPEP § 1411.02. For new matter in substitute specification, see MPEP § 608.01(q). For new matter in a continuation or divisional application, see MPEP § 211.05.

Note: No amendment is permitted in a provisional application after it receives a filing date.

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