DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. Since this application is eligible for continued examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 4/17/2026 has been entered.
Drawings/Specification
In view of Applicant’s amendments, the prior objections to the drawings and specification are withdrawn.
Claim Rejections - 35 USC § 112
In view of Applicant’s amendments, the prior 112(a) rejections are withdrawn.
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-16 and 18-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
For claim 1, reciting “the internal side surface of the first mount bed being entirely positioned between the first position and the fourth position in the second direction” and “the external side surface of the first output-side terminal being entirely positioned between the first position and the second position in the second direction” introduces new matter.
For claim 16, reciting the internal side surface of the first mount being entirely positioned between the first position and the fourth position in the second direction”; the internal side surface of the second mount bed being entirely positioned between the fifth position and the eighth position in the second direction”; “the external side surface of the first output-side terminal being entirely positioned between the first position and the second position in the second direction”; and “the external side surface of the second output-side terminal being entirely positioned between the fifth and sixth position in the second direction” introduces new matter.
For either claim above, the internal and external side surfaces were not originally shown or described as being entirely between their associated positions as now claimed (see the markup below), and so describing these relationships using “entirely between” introduces new matter.
Claims 2-15 and 18-20 inherit these rejections for new matter.
Furthermore, claim 4 recites “between the internal side surface of the second mount bed and the fourth side surface, a distance between the interface and the internal side surface of the second mount bed being longer than a distance between the interface and the fourth side surface.” This distance relationship was not originally disclosed and so represents new matter.
Claims 5-7 and 9-15 inherit this rejection for new matter.
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The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-16 and 18-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
(Re Claim 1) As the internal side surface of the first mount bed was not originally shown or described as “being entirely positioned between the first position and the fourth position in the second direction”, and the external side surface of the first output-side terminal was not originally shown or described as “being entirely positioned between the first position and the second position in the second direction”, the structural relationship between elements is unclear.
During examination, the quoted “entirely between” was read as “between”.
Claims 2-15 inherit this rejection for indefiniteness.
(Re Claim 4) The distance relationship required by “between the internal side surface of the second mount bed and the fourth side surface, a distance between the interface and the internal side surface of the second mount bed being longer than a distance between the interface and the fourth side surface” is neither shown nor originally described, and so the structural relationship between elements is unclear.
During examination, the quoted limitation was understood to require only that a distance between the interface and the internal side surface of the second mount bed is not zero.
Claims 5-7 and 9-15 inherit this rejection for indefiniteness.
(Re Claim 16) As “the internal side surface of the first mount being entirely positioned between the first position and the fourth position in the second direction”; the internal side surface of the second mount bed being entirely positioned between the fifth position and the eighth position in the second direction”; “the external side surface of the first output-side terminal being entirely positioned between the first position and the second position in the second direction”; and “the external side surface of the second output-side terminal being entirely positioned between the fifth and sixth position in the second direction” was not originally shown or described, the structural relationship between elements is unclear.
During examination, the quoted “entirely between” was read as “between”.
Claims 18-20 inherit this rejection for indefiniteness.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 4, 6-16, and 18-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Matsuda et al. (US 5,647,034) of record.
(Re Claim 1) Matsuda teaches a semiconductor device, comprising:
a light-emitting element (16; Fig. 2; col. 5 ln. 25);
an input-side terminal (center 14 seen in Fig. 5; col. 5 ln. 16-19) electrically connected to the light-emitting element (col. 5 ln. 35-37, col. 5 ln. 49-51, col. 8 ln. 11-12);
a light-receiving element (17a; Fig. 2) optically combined (col. 5 ln. 25-28) with the light-emitting element, the light- emitting element and the light-receiving element being arranged in a first direction (left to right as seen in Fig. 2);
a first switching element (17b on the right seen in Fig. 6) electrically connected to the light-receiving element (col. 5 ln. 25-33), the light-receiving element and the first switching element being arranged in a second direction (left to right as seen in Fig. 3 and 6) crossing the first direction (Fig. 2 and 3);
a first lead (14 on the right of Fig. 6) including a first mount bed (Fig. 6 markup) and a first output-side terminal (the part of the first lead that is not the first mount bed as seen in the Fig. 6 markup), the first switching element being mounted on the first mount bed (Fig. 6), the first output-side terminal being electrically connected to the first switching element (Fig. 6, col. 5 ln. 55-67, col. 6 ln. 1-7); and a resin package (11; Fig. 1 and 2) having a first resin member (12; Fig. 2) and a second resin member (13; Fig. 2) entirely covering the first resin member (Fig. 1-2), the first resin member sealing (Fig. 1 and 2) the light-emitting element, the light-receiving element, the first switching element, and the first mount bed of the first lead, and
transmitting light of the light-emitting element (Fig. 2, col. 6 ln. 22-25), the second resin member shielding the light of the light-emitting element (Fig. 1-2, col. 5 ln. 14-17),
the second resin member including a major surface (the part of 11 spanning from the top side to the bottom side, and from the left side to the right side, as seen in Fig. 1) crossing the first direction, first to third side surfaces (first side surface is the top side of 11; the second side surface is the bottom side of 11; and the third side surface is the right side of 11, as seen in Fig. 1), and an interface (where contact between the first and second resin members occurs) between the first and second resin members, the first and second side surfaces each extending along the second direction (Fig. 1 and 6),
the third side surface and the interface (which follows the outline of first resin member 12 as seen in Fig. 7) extending along a third direction (top to bottom seen in Fig. 1) directed from the first side surface toward the second side surface,
the third side surface extending in the third direction at a first position (Fig. 1 and 6 markups) in the second direction, the input-side terminal protruding from the first side surface (Fig. 1),
the first output-side terminal protruding from the second side surface (Fig. 1),
the first switching element being sealed between the first side surface and the second side surface (Fig. 1 and 3),
the first switching element being arranged in the third direction to be positioned at a center between the first side surface and the second side surface (Fig. 2 and 6),
the first lead including an internal side surface of the first mount bed (Fig. 6 markup) extending in the third direction at a second position in the second direction (Fig. 6 markup), and
an external side surface of the first output-side terminal (Fig. 6 markup) extending in the third direction at a third position in the second direction (Fig. 6 markup),
the third position being between the first position and the second position in the second direction (Fig. 1 and 6 markup),
the internal side surface of the first mount bed facing the third side surface (Fig. 6 markup),
the first switching element including a first side edge (identified by the fourth position marker in the Fig. 6 markup) that faces the third side surface and extends in the third direction at a fourth position in the second direction (Fig. 6 markup),
the internal side surface of the first mount bed being entirely positioned between the first position and the fourth position in the second direction (Fig. 1 and 6 markup), and
the external side surface of the first output-side terminal being entirely positioned between the first position and the second position in the second direction (Fig. 1 and 6 markup).
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(Re Claim 4) Matsuda teaches the device according to claim 1, further comprising:
a second switching element (17b on the left in Fig. 6) electrically connected to the light-receiving element (col. 5 ln. 25-33);
a second lead (lead 14 on the left in Fig. 6) including a second mount bed and a second output-side terminal (Fig. 6 markup), the second switching element being mounted on the second mount bed (Fig. 6), the second switching element and the second mount bed being sealed in the first resin member (Fig. 2 and 7), the second output-side terminal protruding from the second side surface of the second resin member (Fig. 1), the second switching element being electrically connected to the second output-side terminal (col. 5 ln. 55-67, col. 6 ln. 1-7); and a third lead (center lead 14 in Fig. 6) sealed in the resin package (Fig. 1 and 7), the light-receiving element being mounted on the third lead (Fig. 6), the first resin member sealing the second switching element and the second mount bed of the second lead, the first lead, the second lead (Fig. 2 and 7), and the third lead being arranged in the second direction (Fig. 6), the third lead being provided between the first lead and the second lead (Fig. 6), the second resin member including a fourth side surface (left side as seen in Fig. 1) opposite to the third side surface, the second lead including an internal side surface of the second mount bed (Fig. 6 markup),
and an external side surface (Fig. 6 markup) of the second output-side terminal, the internal side surface of the second mount bed facing the fourth side surface of the second resin member (Fig. 6 markup), the external side surface of the second output-side terminal crossing the second direction (Fig. 6), the second switching element being arranged in the third direction to be positioned at the center (Fig. 6) between the first side surface and the second side surface (Fig. 1 and 6), between the internal side surface of the second mount bed and the fourth side surface, a distance between the interface and the internal side surface of the second mount bed being longer than a distance between the interface and the fourth side surface (see the 112(b) rejection above; Fig. 6).
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(Re Claim 6) Matsuda teaches the device according to claim 4, wherein the external side surface of the first output-side terminal is positioned between the third side surface of the second resin member and the internal side surface of the first mount bed in the second direction (Fig. 6 markup), and the external side surface of the second output-side terminal is positioned between the forth side surface of the second resin member and the internal side surface of the second mount bed in the second direction (Fig. 6 markup).
(Re Claim 7) Matsuda teaches the device according to claim 6, wherein the first resin member extends between the light-emitting element and the light-receiving element (Fig. 2, col. 5 ln. 14-17).
(Re Claim 8) Matsuda teaches the device according to claim 1, wherein the first output-side terminal extends from the first mount bed in one body (Fig. 6).
(Re Claim 9) Matsuda teaches the device according to claim 6, wherein the third lead includes a main portion (19b; Fig. 6) and an end portion (the rest of third lead 14), the main portion being sealed inside the first resin member (Fig. 5-7), the end portion protruding from the first resin member (Fig. 7), the end portion being covered with the second resin member (Fig. 1).
(Re Claim 10) Matsuda teaches the device according to claim 4, further comprising:
a third mount bed (18b; Fig. 5) electrically connected to the input-side terminal (Fig. 5, col. Ln. 43-15), the light-emitting element being mounted on the third mount bed (Fig. 5), the light-emitting element and the third mount bed being sealed in the resin package (Fig. 1-2), the third mount bed facing the third lead in the first direction (Fig. 2 and 6), the light-emitting element and the light-receiving element being arranged to face each other between the third mount bed and the third lead (Fig. 2).
(Re Claim 11) Matsuda teaches the device according to claim 10, wherein a plurality of the input-side terminals are provided (left and right 14 as seen in Fig. 5), the plurality of input-side terminals including first (right 14 in Fig. 5) and second input terminals (left 14 in Fig. 5), the first input terminal being electrically connected (from 18c, through the lamp and metal wire 20; Fig. 5, col. 6 ln. 34-40) to the light-emitting element via the third mount bed at a back side (at the top side seen in Fig. 5; “at” does not require contact) of the light-emitting element, the second input terminal being electrically connected to the light-emitting element via a metal wire at a front side (at the bottom side as seen in Fig. 5; “at” does not require contact) of the light-emitting element.
(Re Claim 12) Matsuda teaches the device according to claim 10, further comprising:
a first metal plate (18a; Fig. 2-6) facing the first mount bed of the first lead (Fig. 2), the first metal plate and the first mount bed being arranged in the first direction (Fig. 2); and a second metal plate (18c; Fig. 2-6) facing the second mount bed of the second lead (Fig. 2), the second metal plate and the second mount bed being arranged in the first direction (Fig. 2),
the first and second metal plates being sealed in the resin package (Fig. 1),
the first metal plate, the second metal plate, and the third mount bed being arranged in the second direction (Fig. 5),
the third mount bed being provided between the first metal plate and the second metal plate (Fig. 5).
(Re Claim 13) Matsuda teaches the device according to claim 12, wherein a sum of widths in the second direction of the first mount bed of the first lead, the second mount bed of the second lead, and the third lead are substantially equal to a sum of widths in the second direction of the first metal plate, the second metal plate, and the third mount bed (Fig. 3 markup).
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(Re Claim 14) Matsuda teaches the device according to claim 12, wherein the third mount bed includes a portion positioned in a space between the first lead and the third lead in a planar view perpendicular to the first direction (Fig. 3, 5-6); and a portion positioned in a space between the second lead and the third lead in the planar view perpendicular to the first direction (Fig. 3, 5-6).
(Re Claim 15) Matsuda teaches the device according to claim 4, wherein the first output-side terminal extends from the first mount bed in one body (Fig. 6 markup), and the second output-side terminal extends from the second mount bed in one body (Fig. 6 markup).
(Re Claim 16) Matsuda teaches a semiconductor device, comprising:
a light-emitting element (16; Fig. 2; col. 5 ln. 25);
an input-side terminal (center 14 seen in Fig. 5; col. 5 ln. 16-19) electrically connected to the light-emitting element (col. 5 ln. 35-37, col. 5 ln. 49-51, col. 8 ln. 11-12);
a light-receiving element (17a; Fig. 2) optically combined (col. 5 ln. 25-28) with the light-emitting element, the light- emitting element and the light-receiving element being arranged in a first direction (left to right as seen in Fig. 2);
a first switching element (17b on the right as seen in Fig. 6) electrically connected to the light-receiving element (col. 5 ln. 25-33);
a first lead (14 on the right of Fig. 6) including a first mount bed (Fig. 6 markup) and a first output-side terminal (Fig. 6 markup), the first switching element being mounted on the first mount bed (Fig. 6), the first output-side terminal being electrically connected to the first switching element and extending from the first mount bed in one body (Fig. 6, col 5 ln. 55-67, col. 6 ln. 1-7);
a second switching element (17b on the left as seen in Fig. 6) electrically connected to the light-receiving element (col. 5 ln. 25-33),
the light-receiving element, the first switching element, and the second switching element being arranged in a second direction crossing the first direction (left to right as seen in Fig. 3 and 6), the light-receiving element being provided between the first switching element and the second switching element (Fig. 3 and 6);
a second lead (lead 14 on the left of Fig. 6) including a second mount bed (Fig. 6 markup) and a second output-side terminal (Fig. 6 markup), the second switching element being mounted on the second mount bed (Fig. 6), the second output-side terminal being electrically connected to the second switching element and extending from the second mount bed in one body (Fig. 6, col. 5 ln. 55-67, col. 6 ln. 1-7);
a third lead (center lead 14 in Fig. 6), the light-receiving element being mounted on the third lead (Fig. 6); and a resin package (11; Fig. 1 and 2) sealing the light-emitting element, the light-receiving element, the first switching element, the first mount bed of the first lead, the second switching element, the second mount bed of the second lead and the third lead (Fig. 1-3 and 6);
the resin package including a major surface (the part of 11 spanning from the top side to the bottom side, and from the left side to the right side, as seen in Fig. 1) crossing the first direction, and first to forth side surfaces (first side surface is the top side of 11; the second side surface is the bottom side of 11; the third side surface is the right side of 11; and the fourth side surface is the left side of 11, as seen in Fig. 1),
the first and second side surfaces each extending along the second direction (Fig. 1),
the third side surface extending along a third direction (top to bottom as seen in Fig. 1) directed from the first side surface toward the second side surface,
the third side surface extending in the third direction at a first position in the second direction (Fig. 1 markup),
the fourth side surface being opposite to the third side surface (Fig. 1),
the input-side terminal protruding from the first side surface (Fig. 1), the first output-side terminal protruding from the second side surface (Fig. 1), and
the second output-side terminal protruding from the second side surface (Fig. 1),
the first lead including an internal side surface of the first mount bed extending in the third direction at a second position in the second direction and an external side surface of the first output-side terminal extending in the third direction at a third position in the second direction (Fig. 6 markup),
the third position being between the first position and the second position in the second direction (Fig. 6 markup),
the first switching element including a first side edge (identified by the fourth position; Fig. 6 markup) that faces the third side surface and extends in the third direction at a fourth position in the second direction (Fig. 6 markup),
the internal side surface of the first mount bed being entirely positioned between the first position and the fourth position in the second direction (Fig. 6 markup),
the fourth side surface extending in the third direction at a fifth position in the second direction (Fig. 6 markup),
the second lead including an internal side surface of the second mount bed extending in the third direction at a sixth position in the second direction and an external side surface of the second output-side terminal extending in the third direction at a seventh position in the second direction (Fig. 6 markup),
the seventh position being between the fifth position and the sixth position in the second direction (Fig. 6 markup),
the second switching element including a second side edge (identified by the eights position; Fig. 6 markup) that faces the fourth side surface and extends in the third direction at an eighth position in the second direction (Fig. 6 markup),
the internal side surface of the second mount bed being entirely positioned between fifth position and the eighth position in the second direction (Fig. 6 markup),
the external side surface of the first output-side terminal being entirely positioned between the first position and the second position in the second direction (Fig. 6 markup), and
the external side surface of the second output-side terminal being entirely positioned between the fifth position and sixth position in the second direction (Fig. 6 markup).
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(Re Claim 18) Matsuda teaches the device according to claim 16, wherein the resin package includes a first resin member (12; Fig. 2) and a second resin member (13; Fig. 2), the second resin member covers the first resin member (Fig. 1-2 and 7), and the light-emitting element, the light-receiving element, the first switching element, and the second switching element are sealed inside the first resin member (Fig. 2 and 7).
(Re Claim 19) Matsuda teaches the device according to claim 18, wherein the first resin member extends between the light-emitting element and the light-receiving element (Fig. 2) and transmits light radiated from the light-emitting element (col. 6 ln. 22-25) and the second resin member includes a material shielding the light radiated from the light-emitting element (Fig. 1-2, col. 5 ln. 14-17).
(Re Claim 20) Matsuda teaches the device according to claim 18, wherein the third lead includes a main portion (19b) and an end portion (the rest of third lead 14), the main portion being sealed inside the first resin member (Fig. 7), the end portion protruding from the first resin member (Fig. 7), the end portion being covered with the second resin member (Fig. 1).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over Matsuda et al. (US 5,647,034) of record as applied to claim 1 above.
(Re Claim 2) Matsuda teaches the device according to claim 1, but is silent with respect to explicitly describing the dimensional relationships of a device whereina spacing between the first switching element and the third side surface of the resin package is greater than 1/2 of a thickness in the first direction of the resin package (A spacing between the first switching element 17b and the third side surface of the resin package 11 is greater than 1/2 of a thickness in the first direction of the resin package 11; Fig. 2).
However, a person having ordinary skill in the art before the effective filing date of the claimed invention, while understanding figures may not necessarily be to scale, can still evaluate the figures for what they reasonably teach and suggest. In view of Matsuda’s Fig. 13 and Figs. 1 and 3, it is obvious Matsuda shows a spacing between the first switching element 17b and the third side surface of the resin package 11 is greater than 1/2 of a thickness in the first direction of the resin package 11. Furthermore, the claim as written does not preclude the treatment of choosing where to take a thickness, which can be arbitrarily ascribed to one or more elements of the package (for example see provided Fig. 1).
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(Re Claim 3) Matsuda teaches the device according to claim 1, but is silent with respect to explicitly describing the dimensional relationships of a device whereina spacing between the first switching element and the first side surface of the resin package is equal to a spacing between the first switching element and the second side surface of the resin package. It is noted, in view of Matsuda’s figures, it appears the switching elements are located approximately in the center of the resin package.
A person having ordinary skill in the semiconductor art before the effective filing date of the claimed invention would be aware that centering components, such as switching elements 17b, in a resin package, is commonly known and practiced. Therefore, from this perspective, and in view of Matsuda’s Figs. 1-3, already reasonably suggesting equal spacing, a skilled artisan would find it obvious to package the elements as recited in claim 3 wherein the spacing is equal.
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Matsuda et al. (US 5,647,034) of record as applied to claim 4 above, and further in view of Aki (US 2008/0159691) of record.
(Re Claim 5) Matsuda teaches the device according to claim 4, but is silent with respect a device whereinthe third lead is sealed entirely inside the resin package.
Aki teaches a lead 11b extending from the mount bed 111b of an optical coupling element 3 that is contained entirely within a resin package 8 (Fig. 10, para. [0015], [0109], [0110]).
A person having ordinary skill in the art before the effective filing date of the claimed invention would find it obvious to form the third lead 14 of Matsuda entirely within the resin package 11 of Matsuda, as taught by Aki, to eliminate parasitic capacitance between the output-side terminals of the device.
Response to Arguments
Applicant's arguments filed 4/17/2026 have been fully considered but they are moot in view of the new rejection based on Matsuda of record and the interpretation of “entirely between” addressed in the 112(a) and 112(b) rejections above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christopher A Schodde whose telephone number is (571)270-1974. The examiner can normally be reached M-F 1000-1800 EST.
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/CHRISTOPHER A. SCHODDE/Examiner, Art Unit 2898
/JESSICA S MANNO/SPE, Art Unit 2898
Prosecution Insights