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 .
DETAILED ACTION
Applicants’ response of 01/22/2026 has been entered in the record and considered. With respect to the rejection claims 35 USC 112 2nd is withdrawn in view of applicants’ amendments. Claims 3 and 5 are allowed. Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim. Claims 1-10 are under consideration. Claims 11-20 are withdrawn. Claims 1, 4, 6-7 and 10 are rejected.
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.
Claim 1 is rejected under 35 U.S.C. 102(a)(1) as being anticipated by US Pub # 2014/0048918 to Nagaune.
Regarding independent claim 1, Nagaune discloses a power module (Fig. 8A) comprising:
an interconnect (see Examiner’s Mark-up below) of an integrated circuit (IC) package (Fig. 8A) comprising a heat slug (Fig.8A: 4; it is noted that Nagaune teaches “a heat-dissipating base member” which is a piece of metal in which considered sufficient to meet the broadest reasonable interpretation of the label “heat slug”);
a direct bonded copper (DBC) substrate (see Examiner’s Mark-up below) comprising:
a first surface (the most top surface of 2a; see Examiner’s Mark-up below) formed of patterned copper (¶0003), the patterned copper comprising a pad (2a and see Examiner’s Mark-up below); and
a second surface (the most bottom surface of 2b; see Examiner’s Mark-up below) that opposes the first surface (2a), the second surface (2b) comprising a sheet of copper (¶0003), wherein the second surface (2b) of the DBC substrate (see Examiner’s Mark-up below) is thermally coupled to the heat slug (Fig.8A: 4 and (¶0003)); and
a die (Fig. 8A: 3) mounted on the pad (2a) of the first surface of the DBC substrate (see Examiner’s Mark-up below), wherein the die (3) comprises a power transistor (such as a power semiconductor chip; (¶0003), and the die (3) and the heat slug (4) are thermally coupled and electrically isolated (the die and the heat slug (heat-dissipating base member) are thermally coupled and electrically isolated by mounting DBC substrate on the heat slug (heat-dissipating base member; also see ¶0024).
PNG
media_image1.png
414
1008
media_image1.png
Greyscale
Claim Rejections - 35 USC § 103
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Nagaune in view of US Pub 2014/0160691 to Sohn et al. (Sohn).
Regarding claim 4, Nagaune disclose all of the limitations of claim 1 from which this claim depends.
Nagaune fails to explicitly discloses a control module mounted on the pad of the first surface of the DBC substrate, wherein the power module is a power stage power supply.
Sohn discloses a control module (Fig. 2: 22) mounted on the pad (¶0061) of the first surface of the DBC substrate (¶0057), wherein the power module is a power stage power supply (11).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have provided the DBC substrate of Nagaune with the control module as taught by Sohn so as to be electrically connected to a contact pin and be electrically connected to the power devices through the contact pin, therefore, the control device can control an operation of the power device (¶0058).
Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Nagaune in view of US Pub 2022/0328427 to Coppola et al. (Coppola).
Regarding claims 6-7, Nagaune disclose all of the limitations of claim 1 from which claims 6 and 7 depends.
Nagaune fails to discloses wherein the DBC substrate has a core formed of alumina (claim 6) and aluminum nitride (claim 7).
Coppola discloses wherein the DBC substrate has a core formed of alumina or aluminum nitride (¶0036 and Fig. 4).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the invention to have provided the core of the DBC substrate of Nagaune with the core of the DBC substrate of Coppola in order for the core to exhibits high thermal conductivity and a low coefficient of thermal expansion (¶0036).
Claim 10 is rejected under 35 U.S.C. 103 as being unpatentable over Nagaune in view of US Pub 2022/0262716 to Kessler et al. (Kessler).
Regarding claim 10, Nagaune discloses all of the limitations from claim 1 from which this claim depends.
Nagaune fails to disclose wherein the power module has an output power of about 3 kilowatts or more.
Kessler teaches an output power of the power module (¶0047) such that a prima facie case of obviousness exists (MPEP §2144.05.I). Additionally, as it was known in the art to use an output power, it would have been obvious to one of ordinary skill in the art at the time of the invention to vary, through routine experimentation, the result effective variable of the output power in order to optimize the functionality of the device (see MPEP §2144.05). Further, the specification contains no disclosure of either the critical nature of the claimed output power or any unexpected results arising therefrom and it has been held that where patentability is said to be based upon a particular chosen dimension or upon another variable recited in a claim, the Applicant must show that the chosen dimension is critical. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
Allowable Subject Matter
Claim 2 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Claim 2 recites:
“wherein the die is a first die, the power transistor is a first transistor and the pad is a first pad, the patterned copper forming the first surface of the DBC substrate further comprising a second pad separated from the first pad by a gap, and the power module further comprises:
a second die mounted on the second pad of the first surface of the DBC substrate, wherein the second die comprises a second power transistor.”
Each of the above recitations, interpreted in combination with all other limitations of the claim and all limitations of any claims they depend from, is not taught or rendered obvious by the prior art of record and are indicated as allowable subject matter.
Response to Arguments
Applicant's arguments filed 01/22/2026 have been fully considered but they are not persuasive.
Applicant argues that Nagaune does not support the Examiner’s determination because there is allegedly no “patterning” of conductive surfaces 2a or 2b. Applicant’s argument is not persuasive.
Nagaune expressly discloses that an insulating substrate includes “conductor patterns 2a, 2b bonded to both surfaces thereof” (see Nagaune, para. [0003]). A person of ordinary skill in the art would understand that a conductor pattern corresponds to patterned conductive material such as patterned copper traces or pads formed on a substrate. Therefore, the conductor pattern 2a disclosed by Nagaune reasonably corresponds to the claimed “first surface formed of patterned copper.” Furthermore, Nagaune teaches that semiconductor chip 3 is mounted on conductor pattern 2a which is formed as a copper circuit on the front surface of the insulating substrate (para. [0003]). A copper circuit necessarily includes patterned conductive features used for electrical interconnection. Accordingly, Nagaune explicitly discloses patterned copper forming a pad upon which the semiconductor chip is mounted.
Additionally, claim 1 is directed to a device (apparatus) claim, which recites a structural arrangement including “a first surface formed of patterned copper.” The claim does not recite any specific manufacturing steps used to produce the copper features. To the extent Applicant’s argument is directed to the process by which the copper may have been patterned, such arguments are not dispositive of the claimed structure. It is well established that the patentability of a product claim depends on the structure of the claimed product, not the particular process used to make it. See In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985).
Accordingly, the relevant inquiry is whether the prior art structure reasonably corresponds to the claimed structural limitations. As discussed above, Nagaune discloses conductor patterns 2a and 2b bonded to the opposing surfaces of the insulating substrate (para. [0003]), and further describes conductor pattern 2a as a copper circuit on the front surface of the substrate. Such disclosure reasonably corresponds to the claimed surface formed of patterned copper regardless of the particular process by which the copper pattern may have been formed.
Therefore, Applicant’s arguments concerning the alleged absence of “patterning” as a process do not overcome the rejection.
Applicant additionally argues that pads 2a and 2b appear to be individual copper sheets attached to respective surfaces and therefore Nagaune allegedly fail to teach the claimed patterned copper structure. This argument is not persuasive. The claim does not require that the copper features be individual sheets or that the copper layers be formed in any particular manner. Rather, claim 1 merely recites a first surface formed of patterned copper comprising a pad and a second surface opposing the first surface comprising a sheet of copper. Nagaune discloses conductor pattern 2a formed as a copper circuit on the front surface of the insulating substrate and conductor pattern 2b bonded to the rear surface of the insulating substrate (para. [0003]), which reasonably corresponds to the claimed first and second surfaces.
Applicant further argues that Nagaune allegedly fails to disclose that the second surface comprises a sheet of copper. This argument is not persuasive.
Nagaune explicitly describes insulating substrate 1 as a direct bonded copper (DBC) substrate having conductor patterns 2a and 2b bonded to opposing surfaces thereof (see para. [0003]). A person of ordinary skill in the art would understand that a DBC substrate refers to a structure in which copper layers are bonded to both sides of a ceramic insulating substrate. Accordingly, the opposing surface of insulating substrate 1 necessarily includes a copper layer.
Thus, even if conductor pattern 2b were not expressly described as copper in paragraph [0003], the disclosure that the structure is a direct bonded copper substrate would lead one of ordinary skill in the art to understand that the opposing surface includes copper bonded to the insulating substrate. Therefore, the opposing surface including element 2b reasonably corresponds to the claimed second surface comprising a sheet of copper.
Furthermore, it is well established that prior art references must be considered for all that they reasonably teach to one of ordinary skill in the art, not merely for their explicit words. See In re Preda, 401 F.2d 825, 826 (CCPA 1968).
Accordingly, Nagaune teaches the claimed second surface comprising a sheet of copper.
Applicant’s arguments regarding claim 4 are not persuasive. Applicant primarily cites general legal principles relating to obviousness but does not specifically address the Examiner’s factual findings regarding the applied prior art.
Claim 4 further recites “a control module mounted on the pad of the first surface of the DBC substrate, wherein the power module is a power stage power supply.” As explained in the Office Action, US 2014/0048918 teaches the power module structure including the DBC substrate, while US 2014/0160691 teaches a control module mounted on a pad of a substrate of a power module (see Sohn, Fig. 2 and corresponding description). The Examiner relied on Sohn to teach this additional limitation.
Applicant’s response does not address these teachings of Sohn or explain why the combination of Nagaune and Sohn would fail to teach or suggest the limitations of claim 4. Instead, Applicant merely states that claim 4 is allowable for the same reasons argued for claim 1. However, claim 4 contains additional limitations that were specifically addressed by the Examiner through the teachings of Sohn.
Arguments that merely recite general legal standards or refer back to arguments made for other claims without addressing the specific teachings relied upon in the rejection do not constitute a persuasive rebuttal. Accordingly, Applicant has not demonstrated reversible error in the rejection of claim 4.
Therefore, the rejection of claim 4 under 35 U.S.C. §103 as being unpatentable over Nagaune in view of Sohn is maintained.
Applicant’s arguments regarding claims 6 and 7 are not persuasive. Applicant primarily cites various legal standards relating to obviousness and the Examiner’s burden of establishing a prima facie case. However, Applicant does not specifically address the Examiner’s factual findings or explain how the cited prior art fails to teach or suggest the limitations of claims 6 and 7.
Arguments that merely recite general legal principles without identifying specific deficiencies in the applied prior art do not constitute a persuasive rebuttal of the rejection. In the present case, the Examiner has explained that Nagaune teaches a power module including a direct bonded copper (DBC) substrate having a ceramic insulating substrate, and Coppola teaches that DBC substrates may utilize ceramic core materials such as alumina or aluminum nitride. Applicant has not provided specific arguments explaining why the combination of the cited references would fail to teach or suggest the limitations of claims 6 and 7.
Accordingly, Applicant has not demonstrated reversible error in the rejection, and the rejection of claims 6 and 7 under 35 U.S.C. 103 is therefore maintained.
Applicant’s arguments regarding claim 10 is not persuasive.
Applicant argues that the cited references fail to teach or suggest the limitation “wherein the power module has an output power of about 3 kilowatts or more” and asserts that the present specification demonstrates criticality of the claimed output power.
The Examiner has carefully reviewed the portions of the specification cited by Applicant, including paragraphs [0002], [0018], [0019], and [0024]. While these passages discuss power modules having output power within a range (e.g., approximately 3 kW to about 10 kW), the cited portions do not establish that about 3 kW represents a critical value or threshold.
To demonstrate criticality of a claimed numerical value or range, an applicant must provide evidence showing that the claimed range achieves results that are different in kind, and not merely in degree, relative to the prior art. Such a showing typically requires comparative evidence, such as experimental data or graphs, demonstrating that the claimed value yields unexpected results relative to values outside the claimed range.
In the present case, the specification passages cited by Applicant merely describe operating conditions of the disclosed power module but do not provide comparative data, experimental results, or other evidence demonstrating that an output power of about 3 kilowatts constitutes a critical threshold or produces unexpected results.
Accordingly, Applicant has not provided persuasive evidence establishing criticality of the claimed numerical limitation.
Furthermore, where the prior art recognizes a variable affecting device performance, discovering an optimum or workable value of that variable is ordinarily within the level of ordinary skill in the art. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990). In the present case, output power is a result-effective variable affecting the operation of a power module. Therefore, it would have been obvious to one of ordinary skill in the art to vary the output power through routine experimentation to obtain a suitable operating value.
Applicant’s arguments relying on case law and MPEP sections do not overcome the rejection because they do not demonstrate that the claimed output power limitation distinguishes the claimed invention from the applied prior art.
Accordingly, the rejection of claim 10 under 35 U.S.C. 103 over Nagaune in view of Kessler is maintained.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHSEN AHMADI whose telephone number is (571)272-5062. The examiner can normally be reached M-F: 9:00am-5:00pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William F Kraig can be reached at 571-272-8660. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MOHSEN AHMADI/Primary Examiner, Art Unit 2896