608.04 New Matter
|
*****
(f) No new matter. No amendment may introduce new matter into the disclosure of an application.
*****
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.
When new matter is introduced into the specification, the amendment should be objected to and a requirement made to cancel the new matter.
- 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, first paragraph, because the new matter is not described in the application as originally filed.
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
|
608.04(b) New Matter by Preliminary Amendment
|
Section Frequency Chart
A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application.
For applications filed on or after September 21, 2004, the Office will automatically treat any preliminary amendment 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.
608.04(c) Review of Examiner’s Holding of New Matter
|
Section Frequency Chart
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.
