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Filing Date of the Provisional Application Has a Patent Defeating Effect

In re Giacomini, 09-1400, concerned a challenge to the decision of the Board of Patent Appeals and Inferences rejecting certain claims as anticipated under 35 U.S.C. section 102 by another patent, in petitioner's patent application involving a technique for selectively storing electronic data in a readily accessible memory called a "cache." is affirmed as the Trans 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 petitioner's application.

As stated in the decision: "The Tran patent's filing date is December 29, 2000, exactly a month after Giacomini filed his application.  However, the Tran patent claims priority to a provisional application ("the Tran provisional") filed on September 25,2000, which antedates Giacomini's filing date." 

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