New Subject Matter Eligibility Chart

The USPTO has updated its chart of subject matter eligibility decisions.  The new chart from the PTO website is available [here].

The USPTO continues to include Rule 36 judgments in the chart despite cases like Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012) and TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013).

Rule 36 allows us to “enter a judgment of affirmance without opinion” under certain circumstances. Since there is no opinion, a Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning. In addition, a judgment entered under Rule 36 has no precedential value and cannot establish “applicable Federal Circuit law.” See, e.g., U.S. Surgical Corp. v. Ethicon, Inc., 103 F.3d 1554, 1556 (Fed.Cir.1997)

Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012)

Similarly, our Rule 36 judgments only affirm the judgment of the lower tribunal. “[A] Rule 36 judgment simply confirms that the trial court entered the correct judgment. It does not endorse or reject any specific part of the trial court’s reasoning.” Rates Tech., Inc. v. Mediatrix Telecom, Inc., 688 F.3d 742, 750 (Fed.Cir. 2012).

TecSec, Inc. v. International Business Machines Corp., 731 F.3d 1336 (Fed. Cir. 2013).

As one example, the In re Alsabah case presented in the chart was an appeal of both 101 and 103 issues.

Query whether a rejection based on one of the Rule 36 Judgments in the chart could satisfy the requisite agency reasoning required by In re Sang-Su Lee:

Judicial review of a Board decision denying an application for patent is thus founded on the obligation of the agency to make the necessary findings and to provide an administrative record showing the evidence on which the findings are based, accompanied by the agency’s reasoning in reaching its conclusions. See In re Zurko, 258 F.3d 1379, 1386, 59 USPQ2d 1693, 1697 (Fed. Cir.2001) (review is on the administrative record); In re Gartside, 203 F.3d 1305, 1314, 53 USPQ2d 1769, 1774 (Fed.Cir. 2000) (Board decision “must be justified within the four corners of the record”).

In re Sang-Su Lee, 277 F.3d 1338 (Fed. Cir. 2002).

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