Tuesday, December 8, 2009

In re Giacomini: random thoughts on the prosecution history

Earlier I posted (here) on In re Giacomini, an appeal from the BPAI to the Federal Circuit to decide the issue: when a reference claims benefit to a provisional, is the provisional filing date used as the effective date of the reference?

This is a case of first impression for the Federal Circuit, and I'm glad someone else is spending the money to get this issue resolved.  Not sure why these guys chose to be the test case. The assignee of the patent is a privately held company (Broadspider Networks), and according to the Applicant's brief, the patent attorneys that represent the Applicant are shareholders.

In this post I have a few random comments on the prosecution history of this case (Application 09/725,737). The technology involves resource caching on a web server.

The Applicant had a number of objected-to dependent claims in the case, yet decided to appeal to the BPAI – and then to the Federal Circuit – rather than taking the allowable subject matter. However, a continuation was filed on the same day the appeal to the Federal Circuit was filed.

The Applicant overcame 2 of the 4 rejections at the BPAI, and is appealing the remaining 2 rejections to the Federal Circuit. Thus, the Applicant needs to win not only on the "not prior art" issue, but also on "does not teach" for a different reference.

The Applicant's filing date was only two months before the reference's provisional filing date. Thus, it seems like swearing behind the provisional could have been an option. But who knows? Could be the Applicant didn't have good evidence of diligence or of actual reduction to practice.

During prosecution, the Applicant made absolutely no substantive arguments against the "not prior art" reference, i.e., did not argue "does not teach." Once again, sounds like a good candidate for swearing behind.

The reference patent publication and the provisional were almost identical. So the material relied upon in the rejection was clearly "supported" by the provisional and thus the reference is entitled to the provisional filing date according to BPAI precedent (Ex parte Yamaguchi, discussed in my previous post).

In the appeal to the BPAI, the Applicant didn't present a detailed argument about "can't use the provisional filing date," despite the fact that this position conflicts with the MPEP and with BPAI precedent. The Appeal Brief simply said: "The 102(e) filing date of Tran is 29 December 2000, which is after the filing date of the present application (29 November 2000), and therefore, is an invalid prior art reference." The Examiner's Answer pointed out the priority claim to the provisional. The Applicant didn't file a Reply Brief. 

Since the Applicant's position on use of the provisional filing date goes against BPAI precedent, it seems to me there was no real chance of winning this issue at the BPAI. In other words, if you want BPAI precedent to be overruled, you need to go to the Federal Circuit, and there's no point in arguing statutory construction to the BPAI.

Surprisingly, the BPAI did not raise a new rejection under 101, even though one of the independent claims was the following method claim, which seems vulnerable to the Bilski machine-or-transformation test:
    1. A method comprising:
    populating a cache with a resource only when at least i requests for said resource have been received;
    wherein at i is an integer and is at least occasionally greater than one.

I don't know much about appellate practice. But I wonder if the Federal Circuit can raise a new 101 rejection, or even remand to the BPAI with instructions for a new rejection?

Follow up / Related Posts:
  • I blogged here about the BPAI decision Ex parte Giacomini going up to appeal, and here about the eventual Federal Circuit decision In re Giacomini.
  • I blogged here about why the Applicant didn't even argue that the reference didn't deserve the provisional's filing date.


  1. Karen -

    The question of whether the Federal Circuit can raise a new 101 rejection was squarely addressed in In re Comiskey, where the Court asked for supplemental briefing on the 101 issue after oral argument. The first part of the opinion there expressly holds that the CAFC has this power.

    Also, you note that fact that the utility app and the provisional were nearly identical. An interesting question is what happens to art that is disclosed in a provisional, but not subsequently claimed in a utility (e.g., a utiltiy is filed for 1/2 the provisional's disclosures, but the other half goes abandoned). is there a 102(e) date for the abandoned part of the provisional, or just the 102(b) date of when it becomes public? Yamaguchi suggests (but does not hold) the former, I think.

    And I agree about this claim's vulnerability under Bilski, though probably not as much as the claims of Bilski, Comiskey, etc. It may depend on how "particularly" the "cache" is defined in the spec.


  2. >what happens to art that is disclosed in a
    >provisional, but not subsequently claimed in a
    >utility (e.g., a utiltiy is filed for 1/2 the
    >provisional's disclosures, but the other half
    >goes abandoned).

    Interesting: a provisional used as 102(e) art by itself, not "reaching through" a published utility.

    I've read a few posts speculating whether or not this is permissible. I've never come across this situation in my practice, or read a decision where this was an issue.

    Practically speaking, wouldn't it be hard for an Examiner to *find* such a provisional? That is, although a provisional is public as soon as a utility that claims priority to it becomes public, that provisional isn't directly searchable on PAIR. So while there might be a provisional with "good stuff" which an Examiner could use in a rejection, will his search tools reveal this provisional?

  3. Good point about searchability of provisionals. I don't know, either.

    The situation I was thinking of (and nearly came up in my practice once) can be summarized as follows: mega-provisional filed by inventors A-G. Utility follows covering half the topics from the provisional.

    Over a year after the provisional is filed, inventors A-C file utility on previously unclaimed topic from the provisional. They can't claim priority benefit to the expired provisional, clearly. But does 102(e) bar them?

    It's "by another" since inventive entity differs. The 102 reference here cannot be the first utility (since the newly claimed topic wasn't disclosed in that application), but rather the provisional itself.

  4. >Utility #1 covers some material in the prov.
    >and claims priority to the prov.
    >Utility #2, with overlapping inventors, covers
    >previously unclaimed material, but does not >claim priority to prov.
    >Is prov. ITSELF a proper 102(e) ref for
    >Utility #2?

    Definitely an issue of statutory construction, turning on whether or not a Provisional is
    "an application for patent, published under section 122(b)".

    I don't do statutory construction for a living, but here's my 2c.

    Yamaguchi looked at at 111(b) and held that a provisional *does* qualify as an application for Patent. But "published under section 122(b)"? I say No, definitely not.

    122(b) talks about publishing by the PTO 18 months after filing, and provisionals aren't published in that way.

    *Maybe* a printed publication as that term is used in 102(a) or 102(b) - that was something I was thinking of when I mentioned searchability.

  5. Here's another thought. Assume the worst case -- that Examiner applies the provisional itself as a 102(e) against Utility #2.

    If the rejection is proper, I say you can absolutely swear behind this. Because there are two fact situations, and you win either way.

    Either the provisional "supports" the claims in Utility #2 -- in which case you swear behind using the provisional as evidence of ACTUAL reduction to practice.

    Or the provisional doesn't "support" the claims -- in which case it can't be used as a ref.

    Some might say that the provisional isn't necessarily evidence of ACTUAL rtp, and thus you need diligence. In fact, I'll bet many Examiners look at it this way.

    But I looked into the caselaw on this not too long ago, and came to the conclusion that proving enablement/written desc. is often indistinguishable from proving reduction to practice.