Federal Circuit disposition — 2009-1400

United States Court of Appeals
for the Federal Circuit
__________________________
(Serial No. 09/725,737)
IN RE PETER JOSEPH GIACOMINI,
WALTER MICHAEL PITIO, HECTOR FRANCISCO
RODRIGUEZ,
AND DONALD DAVID SCHUGARD
__________________________
2009-1400
__________________________
Appeal from the United States Patent and Trademark
Office, Board of Patent Appeals and Interferences.
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Decided: July 7, 2010
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JASON P AUL D EMONT, DeMont & Breyer, LLC, of
Holmdel, New Jersey, argued for appellants. With him on
the brief was ROBERT L. G REENBERG . Of counsel was
JOSEPHINE A. PALTIN .
THOMAS L. STOLL, Associate Solicitor, Office of the So-
licitor, United States Patent and Trademark Office, of
Arlington, Virginia, argued for the Director of the United
States Patent and Trademark Office. With him on the
brief were RAYMOND T. CHEN , Solicitor, and THOMAS W.
K RAUSE, Associate Solicitor.
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IN RE GIACOMINI 2
Before RADER*, Chief Judge, GAJARSA and D YK , Circuit
Judges.
RADER, Chief Judge.
Peter Joseph Giacomini, Walter Michael Pitio, Hector
Francisco Rodriguez, and Donald David Shugard (collec-
tively, “Giacomini”) appeal from a decision of the Board of
Patent Appeals and Interferences (“Board”) rejecting
certain claims of U.S. Patent Application No. 09/725,737
as anticipated under 35 U.S.C. § 102. Ex parte Gia-
comini, No. 2009-0139 (B.P.A.I. Apr. 15, 2009). Giacomini
argues that the anticipatory reference, U.S. Patent No.
7,039,683 (“the Tran patent”), does not qualify as prior art
because Giacomini’s filing date antedates the Tran pat-
ent’s filing date. Because the Tran patent has a patent-
defeating effect as of the filing date of the provisional
application to which it claims priority and which was filed
before Giacomini’s application, this court affirms.
I.
Giacomini’s application—“Method and Apparatus for
Economical Cache Population”—was filed on November
29, 2000. The application claims a technique for selec-
tively storing electronic data in a readily accessible mem-
ory called a “cache.” When a system retrieves requested
data from a source, it stores the data in its cache so that it
can retrieve the data more quickly next time. Because
the cache has a limited space, the system must selectively
store data. Giacomini’s technique populates the cache
with data only when the system receives a certain num-
ber of requests for that data. Claim 1 is representative:
A method comprising:
* Randall R. Rader assumed the position of Chief
Judge on June 1, 2010.

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IN RE GIACOMINI 3
populating a cache with a resource only
when at least i requests for said resource
have been received;
wherein i is an integer and is at least oc-
casionally greater than one.
This cache does not normally include infrequently re-
quested data because it “at least occasionally” stores data
for which multiple requests have been made. Claims 1, 2,
8, 11, 12, 15, 22-24, 27, 28, 31, and 32 of Giacomini’s
application are at issue on appeal.
II.
The Board rejected certain claims of Giacomini’s ap-
plication as anticipated under 35 U.S.C. § 102 by the Tran
patent, and, in the alternative, by U.S. Patent No.
6,463,509 (“the Teoman patent”).
The Tran patent—“Electronic Information Caching”—
describes a caching technique based on an anticipated
demand for data. Its “anticipating module” considers
“past requests for access to the same or related electronic
information by access requesters.” Tran patent col.1 ll.49-
52. Such “past requests for information may be measured
by the frequency or volume of access requests.” Id. col.3
ll.25-28. The Board found, and Giacomini does not dis-
pute, that the Tran patent teaches all of the claimed
features in Giacomini’s application.
The central issue at the Board was the eligibility of
the Tran patent to serve as prior art under 35 U.S.C.
§ 102(e). The Tran patent’s filing date is December 29,
2000, exactly a month after Giacomini filed his applica-
tion. However, the Tran patent claims priority to a provi-
sional application (“the Tran provisional”) filed on
September 25, 2000, which antedates Giacomini’s filing
date. Therefore, the Board held that the Tran patent has

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IN RE GIACOMINI 4
a patent-defeating effect as of the filing date of the Tran
provisional.
Giacomini appeals the Board’s decision that the Tran
patent and the Teoman patent each anticipates his appli-
cation. This court has jurisdiction under 28 U.S.C.
§ 1295(a)(4).
III.
This court reviews the Board’s legal conclusions, in-
cluding statutory interpretation, without deference. In re
Swanson, 540 F.3d 1368, 1374-75 (Fed. Cir. 2008). An-
ticipation is a question of fact. In re Gleave, 560 F.3d
1331, 1334-35 (Fed. Cir. 2009). This court reviews the
Board’s factual determinations for substantial evidence.
Id.
IV.
Section 102 governs the conditions of patentability.
The statute, in pertinent part, states:
[A] person shall be entitled to a patent unless . . .
the invention was described in . . . (2) a patent
granted on an application for patent by another
filed in the United States before the invention by
the applicant for patent . . . .
35 U.S.C. § 102(e)(2) (emphasis added). An application
that a patent was “granted on” is the first U.S. application
to disclose the invention claimed in the patent. In re
Klesper, 397 F.2d 882, 885-86 (CCPA 1968). Title 35
further clarifies that “[t]he provisions of this title relating
to applications for patent shall apply to provisional appli-
cations for patent, except as otherwise provided, and
except . . . [in] sections 115, 131, 135, and 157 of this
title.” 35 U.S.C. § 111(b)(8). Under this encompassing
rule, “applications for patent” under section 102 includes

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IN RE GIACOMINI 5
both provisional and non-provisional patent applications.
Therefore, an applicant is not entitled to a patent if
another’s patent discloses the same invention, which was
carried forward from an earlier U.S. provisional applica-
tion or U.S. non-provisional application.
As noted, Giacomini does not dispute that the Tran
patent describes the invention claimed in Giacomini’s
application. Also, the Tran provisional, which antedates
Giacomini’s filing date, was the first U.S. application to
describe the invention. The Board found that “[t]he
Provisional Application No. 60/234,996, from which Tran
claims priority under 35 U.S.C. § 119(e), discloses that
‘[a]nticipating requests for electronic information . . . is
generally performed based on one ore [sic] more criteria,
e.g., past requests for information.’” Ex parte Giacomini,
No. 2009-0139, at *5. Section 119(e) treats a non-
provisional application as though filed on the date of its
corresponding provisional application. 35 U.S.C. § 119
(Benefit of earlier filing date; right of priority) recites:
(e)(1) An application for patent filed under section
111(a) or section 363 of this title for an invention
disclosed in the manner provided by the first
paragraph of section 112 of this title in a provi-
sional application filed under section 111(b) of this
title, by an inventor or inventors named in the
provisional application, shall have the same effect,
as to such invention, as though filed on the date of
the provisional application filed under section
111(b) of this title, if the application for patent
filed under section 111(a) or section 363 of this ti-
tle is filed not later than 12 months after the date
on which the provisional application was filed and
if it contains or is amended to contain a specific
reference to the provisional application . . . .

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IN RE GIACOMINI 6
35 U.S.C. § 119(e)(1) (emphases added).
An important limitation is that the provisional appli-
cation must provide written description support for the
claimed invention. Because Giacomini never argued
before the Board that the Tran provisional failed to pro-
vide written description support for the claimed subject
matter in accordance with section 119(e), Giacomini
waived the argument by failing to raise it below. See In re
Watts, 354 F.3d 1362, 1368 (Fed. Cir. 2004) (declining to
consider arguments that the applicant failed to contest
before the Board); In re Berger, 279 F.3d 975, 984 (Fed.
Cir. 2002) (same). Therefore, the Tran patent “shall have
the same effect,” including a patent-defeating effect, as to
the claimed invention as though it was filed on the date of
the Tran provisional. Accordingly, Giacomini, who filed
his application after Tran filed his provisional application,
cannot receive a patent covering the same subject matter
under 35 U.S.C. § 102(e).
This conclusion is consistent with “[t]he fundamental
rule . . . that the patentee must be the first inventor.”
Alexander Milburn Co. v. Davis-Bournonville Co., 270
U.S. 390, 402 (1926). In Milburn, the Supreme Court
held that a patent applied for before but not granted until
after a second patent is sought bars the issuance of the
second patent. Id. at 400-01. The rule stems from the
principle that, subject to certain exceptions, “one really
must be the first inventor in order to be entitled to a
patent.” Id. at 400. Although Milburn concerned a non-
provisional application, a provisional application similarly
shows that someone else was the first to invent. See id. at
400 (“[O]bviously one is not the first inventor if . . . some-
body else has made a complete and adequate description
of the thing claimed before the earliest moment to which
the alleged inventor can carry his invention back.”). The
Tran provisional evinces that Tran, and not Giacomini,

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IN RE GIACOMINI 7
was the first to invent the claimed subject matter. Allow-
ing Giacomini’s application would create an anomalous
result where someone who was not the first to invent in
the United States receives a patent.
Giacomini argues that 35 U.S.C. § 119(e) shifts a pat-
ent’s priority date but not its effective reference date to
the filing date of an earlier provisional application. In
other words, Giacomini contends that although the Tran
patent claims the benefit of priority to the Tran provi-
sional, the Tran patent does not have a patent-defeating
effect as of the Tran provisional’s filing date.
Giacomini’s distinction between priority date and ef-
fective reference date largely stems from In re Hilmer,
359 F.2d 859 (CCPA 1966). The issue in Hilmer was
whether a U.S. patent, cited as a section 102(e) prior art
reference, was effective as of its foreign filing date under
section 119. Id. at 862. This court’s predecessor rejected
the Board’s conclusion that “the foreign priority date of a
U.S. patent is its effective date as a reference.” Id. at 870.
The court instead held that “Section 119 only deals with
‘right of priority.’ The section does not provide for the use
of a U.S. patent as an anticipatory reference as of its
foreign filing date.” Id. at 862. Thus, Hilmer distin-
guished a patent’s priority date under section 119 and
effective reference date under section 102(e) in cases
involving an earlier foreign application. Giacomini
equates a U.S. provisional application to a foreign patent
application to argue that the Tran provisional’s filing date
is not the Tran patent’s effective date as a prior art refer-
ence.
But at the time this court’s predecessor decided Hil-
mer, section 119 only governed the benefit of claiming
priority to an earlier filing date in foreign countries. Id.
at 862. Congress added section 119(e) along with the

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IN RE GIACOMINI 8
enactment of provisional applications in 1994. See Uru-
guay Round Agreements Act, Pub. L. 103-465, 108 Stat.
4809 (1994). Therefore, broad language in Hilmer con-
cerning section 119 is not applicable to provisional appli-
cations. Also, Giacomini misses an important distinction
between Hilmer and the present case. Hilmer involved an
earlier foreign application while the present case deals
with an earlier U.S. provisional application. See Klesper,
397 F.2d at 885 (Hilmer clarified that “domestic and
foreign filing dates stand on entirely different footings.”).
Section 102(e) codified the “history of treating the dis-
closure of a U.S. patent as prior art as of the filing date of
the earliest U.S. application to which the patent is enti-
tled, provided the disclosure was contained in substance
in the said earliest application.” Id. (emphasis added).
According to Hilmer, an earlier foreign application does
not shift a corresponding patent’s effective reference date
because section 102(e) explicitly requires the earlier
application to be “filed in the United States.” Hilmer, 359
F.2d at 862 (quoting 35 U.S.C. § 102(e)). This court’s
predecessor warned that section 119 cannot be read with
section 102(e) to modify the express domestic limitation.
Id. In contrast, an earlier provisional application is an
application “filed in the United States.” 35 U.S.C.
§ 102(e). Treating a provisional application’s filing date
as both the patent’s priority date and its effective refer-
ence date does not raise the alleged tension between
sections 102(e) and 119. Given the “clear distinction
between acts abroad and acts here,” Hilmer, 359 F.2d at
879, Giacomini’s reliance on Hilmer is misplaced. Id.
Accordingly, the Tran patent has a patent-defeating
effect as of the filing date of the Tran provisional, or
September 25, 2000. Giacomini did not file his applica-
tion until months after Tran filed his provisional applica-
tion. Giacomini is not the first to invent in the United

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IN RE GIACOMINI 9
States and thus is not entitled to a patent. Because this
court affirms the Board’s finding of anticipation based on
the Tran patent, this court will not review the Board’s
finding with respect to the Teoman patent.
V.
Because the Board correctly rejected Giacomini’s ap-
plication under 35 U.S.C. § 102(e) on the basis that the
invention was described in a patent claiming priority to a
U.S. provisional application filed before Giacomini’s filing
date, this court affirms.
AFFIRMED

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