608.04(a) Matter Not Present in Specification, Claims, or Drawings on the Application Filing Date [R-10.2019]

Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter. See MPEP §§ 2163.06 and 2163.07 for guidance in determining whether an amendment adds new matter, and for a discussion of the relationship of new matter to 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. See MPEP § 2163.07(a) to determine whether added characteristics such as chemical or physical properties, a new structural formula or a new use are inherent characteristics that do not introduce new matter.

New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP § 2163.05 for guidance in determining whether the addition of specific percentages or compounds after a broader original disclosure constitutes new matter.

In the examination of an application following amendment thereof, the examiner must be on the alert to detect new matter. 35 U.S.C. 132(a) should be employed as a basis for objection to amendments to the abstract, specification, or drawings attempting to add new disclosure to that originally disclosed on filing. If new matter is added to the specification, it should be objected to by using Form Paragraph 7.28.

¶ 7.28 Objection to New Matter Added to Specification

The amendment filed [1] is objected to under 35 U.S.C. 132(a) because it introduces new matter into the disclosure. 35 U.S.C. 132(a) states that no amendment shall introduce new matter into the disclosure of the invention. The added material which is not supported by the original disclosure is as follows: [2].

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

Examiner Note:

  • 1. This form paragraph is not to be used in reissue applications; use form paragraph 14.22.01 instead.
  • 2. In bracket 2, identify the new matter by page and the line numbers and provide an appropriate explanation of your position. This explanation should address any statement by applicant to support the position that the subject matter is described in the specification as filed. It should further include any unresolved questions which raise a doubt as to the possession of the claimed invention at the time of filing.
  • 3. If new matter is added to the claims, or affects the claims, a rejection under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, using form paragraph 7.31.01 should also be made. If new matter is added only to a claim, an objection using this paragraph should not be made, but the claim should be rejected using form paragraph 7.31.01. As to any other appropriate prior art or 35 U.S.C. 112 rejection, the new matter must be considered as part of the claimed subject matter and cannot be ignored.

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) or pre-AIA 35 U.S.C. 112, first paragraph, on the ground that it recites elements without support in the original disclosure. See Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir. 1994); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991)(A written-description question often arises when an applicant, after filing a patent application, subsequently adds “new matter” not present in the original application.); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).

If subject matter capable of illustration is originally claimed and it is not shown in the drawing, the claim is not rejected but applicant is required to add it to the drawing. See MPEP § 608.01(l). Replacement drawings containing new matter should not be entered and the corrections necessary to obtain entry of the drawing(s) should be explained using form paragraph 6.37. See MPEP § 608.02(h).

For completeness of specification, see MPEP § 608.01(p). For trademarks and trade names, see MPEP § 608.01(v).