1411.02 New Matter [R-10.2019]
New matter, that is, matter not present in the patent sought to be reissued, is excluded from a reissue application in accordance with 35 U.S.C. 251.
The claims in the reissue application must be for subject matter which the applicant had the right to claim in the original patent. Any change in the patent made via the reissue application should be checked to ensure that it does not introduce new matter. Note that new matter may exist by virtue of the omission of a feature or of a step in a method. See United States Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals Corp., 315 U.S. 668, 53 USPQ 6 (1942).
Form paragraph 14.22.01 may be used where new matter has been added anywhere in “the application for reissue” as prohibited by 35 U.S.C. 251. Guidance on whether a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, should also be made if the new matter is added to the claims or is added to the specification and affects the claims is provided in MPEP §§ 2161–2163 and 2166. Guidance on whether an objection should be made based on new matter being added is provided in MPEP § 608.04(a).
¶ 14.22.01 Rejection, 35 U.S.C. 251, New Matter
Claim [1] rejected under 35 U.S.C. 251 as being based upon new matter added to the patent for which reissue is sought. The added material which is not supported by the prior patent is as follows: [2]
Examiner Note:
- 1. In bracket 2, fill in the applicable page and line numbers and provide an explanation of your position, as appropriate.
- 2. A rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, should also be made if the new matter is added to the claims or is added to the specification and affects the claims. If new matter is added to the specification and does not affect the claims, an objection should be made based upon 35 U.S.C. 132 using form paragraph 7.28.