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, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 6 April 2026 has been entered.
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 1-3, 5, 7, and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al (US Publication 20210202372) in view of Morisaki et al (US Publication US20220230953A1).
Regarding claim 1, Kato teaches a semiconductor module comprising:
a terminal laminated portion including a first terminal, an insulating member, and a second terminal that are laminated in that order to one another in a laminating direction (Fig. X, 32, 33, and 34 respectively); [[and]]
a connection member that is joined to the second terminal (Fig. x, 40), wherein
the first terminal includes a first joining region on a front surface thereof (Fig. x, 221), the front surface of the first terminal extending from the first terminal in a plan view of the semiconductor module (Fig. x, top surface of 32),
the second terminal includes a second joining region on a front surface thereof (Fig. X, 343), [[and]]
the insulating member includes a terrace portion between the second terminal and the first joining region in the plan view (Fig. X, 28), and
the connection member is laser-welded to the second joining region of the second terminal (para 38, "laser welding").
Furthermore, the present claim is drawn to a device, thus the method of laser-welding the connection member to the second joining region of the second terminal does not patentably distinguish the claimed invention from that of the invention of Kato. It should be noted that a "product by process claim" is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al., 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in " product by process" claims or not. Note that applicant has the burden of proof in such cases, as the above caselaw makes clear. See also MPEP 2113 [R-1].
Kato does not specifically teach:
a thermally anisotropic member disposed between the insulating member and the second terminal, the thermally anisotropic member having a thermal conductivity that is higher in a planar direction perpendicular to the laminating direction than in the laminating direction.
Morisaki teaches:
a thermally anisotropic member (Fig. 25-28, 90, para 123, “polyimide or polyetheretherketone” both are thermally anisotropic) disposed between the insulating member and the second terminal (Fig. 26-28, 91 disposed between terminals 1 and 2), the thermally anisotropic member having a thermal conductivity that is higher in a planar direction perpendicular to the laminating direction than in the laminating direction (90, para 123, “polyimide or polyetheretherketone”, both materials when flat have higher thermal conductivity in the in-plane direction)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Kato to include a thermally anisotropic member as taught by Morisaki to ensure a more robust thermal relationship between the device and terminals and to improve thermal dissipation of the device.
Regarding claim 2, the modified invention of Kato teaches the limitations of claim 1 upon which claim 2 depends.
The modified invention of Kato teaches wherein the thermally anisotropic member has a predetermined thickness and a predetermined thermal conductivity in the planar direction, so that a maximum temperature, when the second terminal is heated, of a surface of the thermally anisotropic member facing the insulating member is not greater than a heat resistance temperature of the insulating member (Morisaki, para 123, polyimide).
The modified invention of Kato teaches wherein when the heat resistance temperature of the insulating member is 300°C (Kato para 36, insulating sheet 33 "polyimide”), the thickness of the thermally anisotropic member is at least 50 µm but not greater than 200 µm (Morisaki para 123, “thickness not particularly limited as long as insulating member 90 has electrical insulating properties equal to or higher than the rated voltage of semiconductor device”).
Regarding claim 3, 5, 7 and 9, the modified invention of Kato teaches the limitations of claim 2 upon which claim 3 depends.
The modified invention of Kato teaches:
[claim 3] wherein when the heat resistance temperature of the insulating member is 300°C (Kato para 36, insulating sheet 33 "polyimide”), the thickness of the thermally anisotropic member is at least 50 µm but not greater than 200 µm (Morisaki para 123, “thickness not particularly limited as long as insulating member 90 has electrical insulating properties equal to or higher than the rated voltage of semiconductor device”).
[claim 5] wherein the thickness of the thermally anisotropic member is at least 100 µm but not greater than 150 µm (Morisaki para 123, “thickness not particularly limited as long as insulating member 90 has electrical insulating properties equal to or higher than the rated voltage of semiconductor device”).
[claim 7] wherein when the heat resistance temperature of the insulating member is 260°C (Morisaki para 123, polyimide), the thickness of the thermally anisotropic member is at least 150 µm (Morisaki para 123, “thickness not particularly limited as long as insulating member 90 has electrical insulating properties equal to or higher than the rated voltage of semiconductor device”).
[claim 9] wherein the thickness of the thermally anisotropic member is at least 200 µm (Morisaki para 123, “thickness not particularly limited as long as insulating member 90 has electrical insulating properties equal to or higher than the rated voltage of semiconductor device”).
Claims 4, 6, 8, 10, 11, 15, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al (US Publication 20210202372) in view of Morisaki et al (US Publication US20220230953A1) and further in view of Hayashiguchi (US Publication US20220319952A1)
Regarding claims 4, 6, 8, 10, and 11, Kato does not specifically teach:
[claim 4] wherein the thermal conductivity in the planar direction of the thermally anisotropic member is at least 1500 W/mK.
[claim 6] wherein the thermal conductivity in the planar direction of the thermally anisotropic member is at least 1000 W/mK.
[claim 8] wherein the thermal conductivity in the planar direction of the thermally anisotropic member is at least 300 W/mK.
[claim 10] wherein the thermal conductivity in the planar direction of the thermally anisotropic member is at least 100 W/mK>
[claim 11] wherein the thermally anisotropic member has graphite as a main component thereof.
Hayashiguchi teaches
[claim 4] wherein the thermal conductivity in the planar direction of the thermally anisotropic member is at least 1500 W/mK (Para 250).
[claim 6] wherein the thermal conductivity in the planar direction of the thermally anisotropic member is at least 1000 W/mK (Para 250).
[claim 8] wherein the thermal conductivity in the planar direction of the thermally anisotropic member is at least 300 W/mK (Para 250).
[claim 10] wherein the thermal conductivity in the planar direction of the thermally anisotropic member is at least 100 W/mK (Para 250).
[claim 11] wherein the thermally anisotropic member has graphite as a main component thereof (Para 247)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Kato as modified to include the thermally anisotropic member with graphite as the main component as taught by Hayashiguchi to ensure a more robust thermal relationship between the device and terminals and to improve thermal dissipation of the device.
Regarding claim 15, Kato as modified teaches the limitations of claim 1 upon which claim 15 depends.
Kato does not specifically teach wherein the thermally anisotropic member is formed as a sheet.
Hayashiguchi teaches
wherein the thermally anisotropic member is formed as a sheet (Fig. 26A, para 249).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Kato as modified to include the thermally anisotropic member as taught by Hayashiguchi to ensure a more robust thermal relationship between the device and terminals and to improve thermal dissipation of the device.
Regarding claim 16, the modified invention of Kato teaches the limitations of claim 1 upon which claim 16 depends.
The modified invention of Kato teaches wherein the thermally anisotropic member (Hayashiguchi, 90D) is formed on a rear surface of the second terminal (Morisaki, Fig. 26, underside of portions 13-15 of 1) and is provided between the second terminal and the insulating member (Hayashiguchi, 90D between Morisaki Fig. 26 terminal 2 and insulating member 90).
Claims 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al (US Publication 20210202372) in view of Morisaki et al (US Publication US20220230953A1) and further in view of Hatano (US Publication 20220344253).
Regarding claim 13, the modified invention of Kato teaches the limitations of claim 1 upon which claim 13 depends.
Kato does not specifically teach:
wherein the thermally anisotropic member is provided directly below the second joining region and directly below the connection member in the laminating direction.
Hatano teaches:
wherein the thermally anisotropic member is provided directly below the second joining region and directly below the connection member in the laminating direction (Fig. 11, thermally anisotropic member 241 directly below 32 and 41).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Kato as modified to include the connection member, second joining region and thermally anisotropic member as taught by Hatano in order to improve the thermal properties and reliability of the device.
Regarding claim 14, Kato as modified teaches the limitations of claim 13 upon which claim 14 depends.
Kato as modified teaches:
wherein the thermally anisotropic member is provided so as to extend as far as an outer peripheral portion of the second terminal as a maximum in the plan view (graphite sheet 90 in the Morisaki Fig. 28 terminal assembly with similar laminar dimensions to terminal 1).
Response to Arguments
Applicant’s arguments in combination with the amendments, see pages 5-7, filed 6 April 2026, with respect to the rejection(s) of claim 1under 35 U.S.C. 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Kato et al (US Publication 20210202372) forming the main base reference and what Morisaki et al (US Publication US20220230953A1) is still being used to teach was not part of the arguments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS HUTSON whose telephone number is (571)270-1750. The examiner can normally be reached Mon-Fri 8am-5pm.
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/NICHOLAS LELAND HUTSON/ Examiner, Art Unit 2818
/JEFF W NATALINI/ Supervisory Patent Examiner, Art Unit 2818
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