Orig app 2000, CIP 2002, claims based on new matter

25. A registered practitioner files a nonprovisional utility application in 2000. In 2002, the

practitioner files a continuation-in-part application and claims benefit of the filing date of

the 2000 application for the 2002 application. Thereafter, the practitioner amends the 2002

application to include claims that were not present in either the originally filed 2000 application

or the originally filed 2002 application. The primary examiner properly concludes that the added

claims are not supported by the original disclosure in either application. Which of the following

is in accord with the patent laws, rules and procedures as related in the MPEP?

(A) The added claims are rejected for lack of written description under 35 USC 112,

first paragraph.

(B) The added claims are rejected as new matter under 35 USC 132.

(C) The added claims are denied benefit of the filing date of the 2000 application.

(D) (A) and (B).

(E) (A) and (C).

25. ANSWER: (E) is the most correct answer. Both (A) and (C) are correct. MPEP § 2163.01, under the heading

“Support For The Claimed Subject Matter In The Disclosure,” states that “[I]f the examiner concludes that

the claimed subject matter is not supported[described] in an application as filed, this would result in a

rejection of the claim on the ground of a lack of written description under 35 U.S.C. 112, first paragraph,

or denial of the benefit of filing date of a previously filed application.” (B) is incorrect. MPEP § 2163.01

states that unsupported claims “should not be rejected or objected to on the ground of new matter. As framed

by the court in In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981), the concept of new matter is properly

employed as a basis for objection to amendments to the abstract, specification or drawings attempting to add

new disclosure to that originally presented.” (D) is incorrect because (B) is incorrect.