What must happen if an examiner objects to the introduction of new matter in the disclosure?

Prepare for the USPTO Patent Bar Exam with comprehensive quizzes and multiple-choice questions that include hints and thorough explanations. Enhance your understanding and confidently tackle the exam!

When an examiner objects to the introduction of new matter in a patent application, the appropriate course of action is for the applicant to cancel the new matter. New matter refers to any content that was not originally disclosed in the patent application's specification at the time of filing. It is a legal principle that new matter cannot be added to an existing application during prosecution because it would violate the requirement that the application as filed must fully support the claims.

By requiring the cancellation of the new matter, the patent prosecution process maintains the integrity of the initial filing and ensures that the claims remain supported by the original disclosure. This safeguards the public interest and prevents changes that could surprise the examiner or alter the scope of the patent beyond what was originally sought.

The other choices do not correctly reflect the procedure dictated by patent regulations. For instance, revising all claims immediately does not address the objection to new matter specifically. Similarly, the requirement for the examiner to provide additional documentation is not mandated when new matter is introduced; the focus is on the applicant’s responsibility to address the objection. Lastly, the application being automatically abandoned is not a direct consequence of the objection to new matter; it can be remedied by simply cancelling that matter without abandonment of the entire application.

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