608.04 New Matter [R-07.2015]
37 C.F.R. 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 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.
608.04(a) Matter Not Present in Specification, Claims, or Drawings on the Application Filing Date [R-07.2015]
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. 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. For rejection of claim involving new matter, see MPEP § 706.03(o).
For completeness of specification, see MPEP § 608.01(p). For trademarks and trade names, see MPEP § 608.01(v).
608.04(b) New Matter by Preliminary Amendment [R-11.2013]
A preliminary amendment present on the filing date of the application (e.g., filed along with the filing of the application) is considered a part of the original disclosure. See MPEP § 714.01(e) and § 602. A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application. See MPEP § 706.03(o). For applications filed on or after September 21, 2004, the Office will automatically treat any preliminary amendment under 37 CFR 1.115(a)(1) that is present on the filing date of the application as part of the original disclosure. Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application. Applicants are strongly encouraged to avoid submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application.
608.04(c) Review of Examiner’s Holding of New Matter [R-11.2013]
Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition. But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one, and should not be considered on petition even though that new matter has been introduced into the specification also. See also MPEP § 2163.06.