Applicant added new matter to the specification: The addition was not made to claim 1 but indirectly affects it; the new matter directly affects claim 2. What should the examiner do?

[Bryan]

Hey Nicole!

When an applicant adds new matter to the specification that was not originally disclosed, it can affect the patentability of the claims. Here’s why option B, objecting to the new matter in the specification and rejecting claims 1 and 2 under 35 U.S.C. § 112, is the best answer, along with relevant MPEP references:

1. New Matter in Specification (MPEP § 2163.06): The Manual of Patent Examining Procedure (MPEP) § 2163.06 states that new matter cannot be added to a patent application after its initial filing. If new matter is added, it can lead to an objection because it violates the written description requirement. This is because the new matter was not originally disclosed in the application as filed.

2. Effect on Claims (MPEP § 2163.07): Even if the new matter does not directly amend a claim, it can still indirectly affect the scope and understanding of the claims. According to MPEP § 2163.07, if the new matter impacts the interpretation or scope of a claim, that claim may be rejected under 35 U.S.C. § 112, first paragraph, for lack of written description or enablement.

3. Rejection Under 35 U.S.C. § 112 (MPEP § 706.03(a)): The MPEP § 706.03(a) outlines that claims must be rejected if they are not supported by adequate disclosure in the specification. If the new matter added to the specification indirectly affects Claim 1 and directly affects Claim 2, this implies that these claims rely, at least in part, on the newly added matter for their support. As such, they can be rejected under 35 U.S.C. § 112 for lack of written description or enablement.

4. Consistency and Broad Interpretation of Claims (MPEP § 2111.01): According to MPEP § 2111.01, claims are given their broadest reasonable interpretation consistent with the specification. If the specification is altered, it could change the interpretation of the claims, thereby affecting their patentability.

In summary, the best action for the examiner in this scenario is to object to the new matter added to the specification for violating the written description requirement and to reject claims 1 and 2 under 35 U.S.C. § 112, as they are now supported by a specification that contains impermissible new matter.

Hope that helps!