Last week, the USPTO updated its Appendix 3 of the Subject Matter Eligibility Court Decisions:
- July 2015 Update Appendix 3: Subject Matter Eligibility Court DecisionsNEW [updated Nov. 4, 2015].
It surprises me that the USPTO still includes some Rule 36 judgments as part of its chart (see the asterisked entries in the chart). A Rule 36 affirmance by the Federal Circuit is merely a statement that a lower tribunal reached the correct result — but, it is not an endorsement of any reasoning of the lower tribunal, e.g., whether a proposed abstract idea is indeed an abstract idea. In an opinion that he authored for the court, Judge Linn put it this way:
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 v. International Business Machines Corp., 731 F.3d 1336, 1343 (Fed. Cir. 2013).
A quick search of the MPEP did not reveal any places where the USPTO relies on Rule 36 judgments.