It is interesting that in the May 2016 Subject Matter Eligibility Guidance, the USPTO continues to rely upon Rule 36 opinions as being instructive. The Federal Circuit does not always address all issues on appeal to reach an affirmance of the Board. For example, in In re Gleave the court stated:
Therefore, we affirm the Board’s rejection of claims 1, 4, 15, and 18-21 of the ‘493 application under § 102(b). We need not reach the § 103 obviousness rejection.
To the extent that an appeal resolved by a Rule 36 opinion contained more than a §101 rejection, how can the USPTO be certain that the Federal Circuit was affirming the rationale of the §101 rejection rather than just a §103 rejection, for example?
Moreover, I’m reminded of Judge Moore’s comment in the oral argument of In re Collins, App. No. 2011-1293 (Fed. Cir. 2012). Judges Moore and Reyna took the PTO to task for a sloppy rejection of a claim. An exasperated Judge Moore would remark “I think this is a terrible rejection. I think you all [USPTO] have done a really sloppy job. . . . This is ridiculous. This is a bad rejection. There’s a good rejection you could have made. This isn’t it.“ [Listen] and [Listen]. The Board was affirmed by a Rule 36 opinion in that case.
Finallly, do a search of the MPEP. See if you can find any place in the MPEP where the USPTO relies upon Rule 36 opinions of the Federal Circuit.