In response to the first office action, the applicant’s patent prosecutor will draft an amendment and response to the US Patent Office. The patent prosecutor will request for reconsideration and will address any perceived errors in the examiner’s office action. Most often, the response will include a revision to the claims issued in the office action and clarify the invention and subdue the prior art citied in the first office action. The amendment will also debate how the claims are patentable in light of the prior art references or any other protests made.
In the amendment the patent prosecutor must use caution not to add “new matter” to the applications. An amendment to rectify an obvious error does not constitute as a “new matter” to the applications. Under Patent Law, all amendments to drawings or any specifications must be in accordance with part of the application as originally filed. If said actions depart from or add to the original disclosures it will be rejected as a new matter. In most cases the “new matter” that an applicant would like to add is further explanation of materials and components that they utilize. These references will be prohibited in order to prevent new inventions from sharing the accomplishments on to old patent applications.