cited in the complaint, and it concerns me.  Comments welcome!

A substantial new question of patentability as to claims 1-10
is raised by Ledzius in
light of Mostek, as further evidenced by prior prosecution correspondences, Paper 6
and Paper 12.2
U.S. Patent No. 4,691,124 to Ledzius, et al. (“Ledzius”), entitled “SelfCompensating,
Maximum Speed Integrated Circuit,” was filed on May 16, 1986, and issued on September 1,
1987. The Mostek 1981 3870/F8 Microcomputer Data Book (“Mostek”) describes the 3870
Single Chip family of microcomputers manufactured by Mostek Corp., including the MK3873
chip. The data book was published in February 1981. Neither Ledzius nor Mostek was cited
during the previous examination, and both references are prior art under 35 U.S.C. 102(b) and
103(a).
Ledzius in light of Mostek discloses all elements of claims 110.
In general, both Ledzius
and Mostek disclose an integrated circuit that contains a processor clocked by an onchip
ring
oscillator and input/output interfaces that can be clocked by an external clock for interfacing
asynchronously with external components, such as external memory.
In particular, both references disclose features not disclosed by any reference considered
during the previous examination. As discussed in section C above, during prosecution of the '336
patent, the applicant argued that because the claimed oscillator and processor are on the same
integrated circuit, their frequencies will inherently vary together due to changes in various
parameters, and that this is “crucial to the present invention” and “differs from all cited
references.” (Paper 6; Paper 12, emphasis added). Ledzius discloses a ring oscillator,
2 In accord with MPEP § 2131.01, prior prosecution correspondences, Paper 6 and Paper
12 are provided to show that it is inherent that the discussed frequenies would vary together and
that one skilled in the art in 1989 would know of the inherency.
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microprocessor and input/output interface on the same IC, where the oscillator and processor
frequencies vary together with changes in various parameters. Mostek too discloses an oscillator,
microprocessor and input/output interface on the same IC with the interface clocked by an
external clock. Requester believes that a reasonable examiner would consider these teachings
important, perhaps “crucial”, in determining whether claims 110
of the ‘336 patent are
patentable. Therefore, the teachings raise a substantial new question of patentability with respect
to claims 110.
F. A substantial new question of patentability as to claims 110
is raised by Mostek.
As discussed in section E above, Mostek is prior art under 35 U.S.C. 102(b) and 103(a),
and discloses, either expressly or inherently, or renders obvious all elements of the claims,
including features not disclosed by any reference considered during the previous examination,
such as a ring oscillator, microprocessor and input/output interface on the same IC, where the
oscillator and processor frequencies vary together with changes in various parameters and the
interface is clocked by an external clock. Requester believes that a reasonable examiner would
consider these teachings important in determining whether claims 110
of the‘336 patent are
patentable, and they raise a substantial new question of patentability with respect to claims 110.
G. A substantial new question of patentability as to claims 110
is raised by Ledzius in
light of Guttag.
A technical article by Guttag, et al., entitled “The TMS34010: An Embedded
Microprocessor” (“Guttag”), was published in the May/June 1988 volume of the IEEE Micro
journal. Guttag describes the structure and operation of the TMS34010 microprocessor chip,
which can be used as an input/output interface between a host microprocessor and memory that is local to the interface. The reference was not cited during the previous examination and is prior
art under 35 U.S.C. 102(b) and 103(a).
Ledzius, with Guttag, discloses all elements of the claims, including features not
disclosed by any reference considered during the previous examination, such as an oscillator,
microprocessor and input/output interface on the same IC with the interface clocked in part by
the processor's clock and in part by an external clock. Requester believes that a reasonable
examiner would consider these teachings important in determining whether claims 110
of the
'336 patent are patentable, and they raise a substantial new question of patentability with respect
to claims 110.
H. A substantial new question of patentability as to claims 110
is raised by Ledzius in
light of Thaden.
U.S. Patent No. 4,660,155 to Thaden, et al. (“Thaden”), entitled “Single Chip Video
System With Separate Clocks For Memory Controller, CRT Controller,” was filed on July 23,
1984 and issued on April 21, 1987. Thaden describes an interface between a microprocessor and
video circuitry, including memory. The reference was not cited during the previous examination
and is prior art under 35 U.S.C. 102(b) and 103(a).
Ledzius, with Thaden, discloses all elements of the claims, including features not
disclosed by any reference considered during the previous examination, such as an oscillator,
microprocessor and input/output interface on the same IC with the interface clocked in part by
the processor's clock and in part by an external clock. Requester believes that a reasonable
examiner would consider these teachings important in determining whether claims 110
of the
'336 patent are patentable, and they raise a substantial new question of patentability with respect
to claims 110.
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I. A substantial new question of patentability as to claims 15
is raised by Hitachi in
light of Boney.
The 8Bit
SingleChip
Microcomputer Data Book (“Hitachi”) was published in July 1985
by Hitachi Corp. U.S. Patent No. 4,334,268 to Boney, et al. (“Boney”), entitled “Microcomputer
With Branch On Bit Set/Clear Instructions,” was filed on May 1, 1979 and issued on June 8,
1982. Hitachi describes the HD6800 family of microcomputer chips, including the HD6805W1
integrated circuit chip. Boney also describes a singlechip
microcomputer. Neither reference was
cited during the previous examination, and both references are prior art under 35 U.S.C. 102(b)
and 103(a).
Hitachi, with Boney, discloses all elements of the claims, including features not disclosed
by any reference considered during the previous examination, such as a ring oscillator,
microprocessor and input/output interface on the same IC with the interface clocked in part by
the processor's clock and in part by an external clock. Requester believes that a reasonable
examiner would consider these teachings important in determining whether claims 15
of the
'336 patent are patentable, and they raise a substantial new question of patentability with respect
to claims 15.
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