What is the meaning of new matter in patent applications?
New matter in a patent application typically refers to something recited in the claims that is not supported by the specification. It can also refer to a description that an applicant tries to add to the specification that goes beyond the scope of the original disclosure.
Who decides if claim language is directed to unsupported features?
The examiner is the one who decides if your claim language covers new matter. Previously known as a rejection under Section 112, first paragraph, it is now referred to as a rejection under 35 USC 112(a). Section 112(a) essentially requires that the specification shall contain a written description of the invention.
When does new subject matter typically become an issue?
Claim rejections based on improper new matter typically arise during examiner reviews of Office Action responses containing claim amendments. In reviewing your original claims, examiners may or may not review the specification. Once claim amendments are being proposed, however, examiners may scrutinize the specification to determine whether newly added features are properly supported by the specification.
If not, the claims will be rejected on the grounds of introducing new matter.
What are your options in dealing with a new matter objection?
One option is to show how the specification sufficiently supports the claim language in dispute. This tactic may require a meticulous attention to detail with arguments as to how the original written description and figures support the claim limitations at issue.
Another option is to amend the claims using less controversial language. Would it be possible to capture the feature using wording that is more fully supported by the specification? If the feature at issue is shown in the drawings but not discussed in the specification, would it make sense to amend the specification to clarify what is already shown in the drawings. The challenge in making any amendments to the specification is to walk that fine line so as to avoid the appearance of adding new content.
Can you file a related application to add the new content?
Both options above seek to avoid a new filing. If you simply cannot use your original specification to support your desired claim amendments, you may have to file a CIP to add the new content. The drawback to filing a CIP is that you are admitting that your claim amendments are directed to new matter. Also, the newly added subject matter in the CIP will get a later priority date making such claims more vulnerable to rejections based on later-dated prior art that might not have applied to claims supported by your original specification.
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