When does a claim amendment or specification amendment not introduce “new matter” into a patent application during patent prosecution?
Once a patent application is filed, an Applicant may amend various portions of their application (e.g., claims, specification, etc.) as long as their amendments do not introduce new matter.
Amendments are frequently utilized during the patent prosecution phase of a patent application (e.g., an office action generated by the United States Patent and Trademark Office (USPTO)), especially in the context of prior art related rejections asserted by a Patent Examiner in an anticipation rejection/obviousness rejection, or because of some other rejection/objection.
Although a thorough prior art search will usually produce a substantial amount of relevant prior art, the Examiner may discover prior art which was not known previously or assert combinations of references (35 USC 103) which were not contemplated by the Applicant. In view of the foregoing, an Applicant may realize that a claim amendment(s) will be required to overcome the Examiner’s assertion.
It must be stressed that although various amendments may be furthered, these amendments may NOT introduce new matter into either the disclosure (e.g., abstract, specification or drawings) or the claims of a patent application unless support may be found in the patent application as filed. If new matter is added to the disclosure or the claims of the patent application, the Applicant will likely receive an objection under 35 USC 132 (or 251) or rejection under 35 USC 112, first paragraph (written description), respectively. (see MPEP 2163.06 – Relationship of Written Description Requirement to New Matter)
To avoid such an impropriety, prior to furthering an amendment, the Applicant must ensure that appropriate support may be found in the abstract, specification, drawings, or claims of the patent application as filed. If a contemplated amendment does not find support in the patent application as filed, than the Applicant may want to file a continuation-in-part application as long as certain conditions are present.