not new matter, right? - in provisional but not nonprov.

[patatty30]

What is the name of your state (only U.S. law)? California

I have a question that I cannot find covered directly after reading the MPEP and
searching the web and reading several articles.

Is it "new matter" if the material was included expressly and explicitly in a provisional to
which the nonprovisional has priority but was covered only implicitly in the nonprovisional
if during prosecution of the nonprov. an amendment is filed to include the more express
language of the original provisional?
I don't think this should be new matter since it was in the earliest filing, then omitted (expressly but still there implicitly such as a species implicitly in a genus) and
subsequently added back.
The usual situation is that the nonprov. includes more info. than the prov. but in this
scenario the prov. actually included more info. in one area than the nonprov. and the
nonprov. seeks to add back that info. to its disclosure and claims after filing an
amendment.

Thank You very much for any advice or thoughts on this.

[divgradcurl]

First off, I am not really sure I understand what you are saying here. Are you saying you filed a provisional, then timely filed a nonprovisional claiming priority to the provisional, but you rewrote the spec and left some stuff out?

Is it "new matter" if the material was included expressly and explicitly in a provisional to which the nonprovisional has priority but was covered only implicitly in the nonprovisional if during prosecution of the nonprov. an amendment is filed to include the more express language of the original provisional?

Has there been any substantive prosecution? Have you received an office action yet? A preliminary amendment that corrects the spec to include matter disclosed in the provisional but omitted in the nonprovisional should not be considered new matter. However, if there has already been an office action, this may not be the case.

I don't think this should be new matter since it was in the earliest filing, then omitted (expressly but still there implicitly such as a species implicitly in a genus) and subsequently added back.

What do you mean by an "express omission?" Was there an office action?

The usual situation is that the nonprov. includes more info. than the prov. but in this scenario the prov. actually included more info. in one area than the nonprov. and the nonprov. seeks to add back that info. to its disclosure and claims after filing an amendment.

I am interested to find out why you believe that the material was expressly omitted. In some cases, stuff that is disclosed (say, in a provisional) but not claimed is considered "dedicated to the public."

If you could provide more information, that would be helpful.

[patatty30]

Your understanding is correct. Provisional was filed by someone else and then nonprov. potentially "left out" some of the material in the provisional. By "left out" I mean that it is covered in the nonprov. in a general sense but not referred to more specifically as in the provisional. For example (this is hypothetic obviously but analogous), if "fruit" was referred to in the nonprov. but more specific members of the class (i.e. "oranges") were referred to in the prov. but left out of the nonprov.

No office actions yet and still over a 2 year wait for expected 1st action.

By omitted expressly I don't mean intended to be omitted or stated to be omitted (i.e. "I am leaving out oranges" - No)
I just mean not referred to in express/explicit detail (only referred to more broadly - i.e. speaking of the genus vs. the species) ("I am including fruit, for example apples")

Do you think a preliminary amendment should be made now (before 1st action) to preserve the right to claim the species (species is in the prov. but not nonprov.) in the future?

Why do you think first office action date would be critical in determining whether filing an amend. to nonprov. would be okay or not?

THANK YOU SO MUCH for your feedback and time.

[divgradcurl]

If no substantive examination has been done yet, then file an amendment as appropriate under 37 CFR 1.121, [url=http://www.uspto.gov/web/offices/pac/mpep/documents/appxr_1_121.htm#cfr37s1.121]§ 1.121 Manner of making amendments in applications. - Patent Rules[/url]. If the examiner complains that the preliminary amendment introduces new matter in an office action, you can make the argument that it is now new matter because it appeared in the provisional application. That's probably the easiest way to go about this.

Do you think a preliminary amendment should be made now (before 1st action) to preserve the right to claim the species (species is in the prov. but not nonprov.) in the future?

See above.

Why do you think first office action date would be critical in determining whether filing an amend. to nonprov. would be okay or not?

If you had already had an office action, and made any arguments, you would have potentially already expressly disclaimed the materials not present and claimed in the nonprovisional application. But since no office action has been issued, a preliminary amendment is appropriate.

[patatty30]

Thank You.
That's what I'll do, file a preliminary amendment now.