Prosecution Insights
Last updated: April 19, 2026
Application No. 17/976,373

SEMICONDUCTOR MODULE

Final Rejection §102§103
Filed
Oct 28, 2022
Examiner
HUTSON, NICHOLAS LELAND
Art Unit
2818
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Fuji Electric Co. Ltd.
OA Round
2 (Final)
64%
Grant Probability
Moderate
3-4
OA Rounds
3y 1m
To Grant
68%
With Interview

Examiner Intelligence

Grants 64% of resolved cases
64%
Career Allow Rate
9 granted / 14 resolved
-3.7% vs TC avg
Minimal +4% lift
Without
With
+4.2%
Interview Lift
resolved cases with interview
Typical timeline
3y 1m
Avg Prosecution
37 currently pending
Career history
51
Total Applications
across all art units

Statute-Specific Performance

§103
53.3%
+13.3% vs TC avg
§102
37.0%
-3.0% vs TC avg
§112
8.2%
-31.8% vs TC avg
Black line = Tech Center average estimate • Based on career data from 14 resolved cases

Office Action

§102 §103
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 . Claim Rejections - 35 USC § 102 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 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)(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. Claim 1 is rejected under 35 U.S.C. 102(a)(2) as being anticipated by Morisaki et al (US Publication US20220230953A1) [this is a new interpretation based on a further reading of Morisaki et al., in light of the amendments added to the claim]. Regarding claim 1, Morisaki teaches A semiconductor module, comprising: a terminal laminated portion including a first terminal (Fig. 26, 1), an insulating member (Fig. 26, 90), and a second terminal that are laminated in that order to one another in a laminating direction (Fig. 26, 2); 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. 25-28, 90 as both insulator and thermally anisotropic member is between terminal one, 1 and terminal two, 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); the first terminal includes a first joining region on a front surface thereof, the front surface of the first terminal extending from the first terminal in plan view of the semiconductor module (Fig. 25-28, first terminal 1 and first joining region z-shaped portion 15), the second terminal includes a second joining region on a front surface thereof (Fig. 25-28, portion 25 of terminal 2), and the insulating member includes a terrace portion between the second terminal and the first joining region in the plan view (Fig. 25-28, terrace portion of 90 between terminal 2 and z-shaped portion 15). 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 1-11, 14-16 are rejected under 35 U.S.C. 103 as being unpatentable over Morisaki et al (US Publication US20220230953A1) in view of Hayashiguchi (US Publication US20220319952A1). [This is the same previous interpretation] Regarding claim 1, Morisaki teaches A semiconductor module, comprising: a terminal laminated portion including a first terminal (Fig. 26, 1), an insulating member (Fig. 26, 90), and a second terminal that are laminated in that order to one another in a laminating direction (Fig. 26, 2); the first terminal includes a first joining region on a front surface thereof, the front surface of the first terminal extending from the first terminal in plan view of the semiconductor module (Fig. 25-28, first terminal 1 and first joining region z-shaped portion 15), the second terminal includes a second joining region on a front surface thereof (Fig. 25-28, portion 25 of terminal 2), and the insulating member includes a terrace portion between the second terminal and the first joining region in the plan view (Fig. 25-28, terrace portion of 90 between terminal 2 and z-shaped portion 15). Morisaki 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. [Noting in the 102 rejection above Morisaki in a broadest reasonable interpretation does disclose this feature, but if not – the argument is that it would be an obvious modification] Hayashiguchi teaches a thermally anisotropic member disposed between the insulating member and the second terminal (Fig. 7, 90D, para 217, graphite plate), 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 (Para 247, 90A, "the thermal conductivity is high in a planar direction"). It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Morisaki to include the thermally anisotropic member having a higher thermal conductivity in the planar direction as taught by Hayashiguchi between the insulating member and second terminal 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 Morisaki teaches the limitations of claim 1 upon which claim 2 depends. The modified invention of Morisaki 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) (Hayashiguchi, Para 247-250). Regarding claim 3, 5, 7 and 9, the modified invention of Morisaki teaches the limitations of claim 2 upon which claim 3 depends. The modified invention of Morisaki teaches: [claim 3] wherein when the heat resistance temperature of the insulating member is 300°C (para 123, polyimide). [claim 7] wherein when the heat resistance temperature of the insulating member is 260°C (para 123, polyimide) Morisaki does not specifically teach: [claim 3] the thickness of the thermally anisotropic member is at least 50 µm but not greater than 200 µm. [claim 5] wherein the thickness of the thermally anisotropic member is at least 100 µm but not greater than 150 µm. [claim 7] the thickness of the thermally anisotropic member is at least 150 µm [claim 9] wherein the thickness of the thermally anisotropic member is at least 200 µm. Hayashiguchi teaches: [claim 3] the thickness of the thermally anisotropic member is at least 50 µm but not greater than 200 µm (Fig. 26A, given the properties of graphite sheets it is reasonable to assume that fewer sheets results in a less thick anisotropic member and thus lower thermal conductivity in the Z direction as desired). [claim 5] wherein the thickness of the thermally anisotropic member is at least 100 µm but not greater than 150 µm (Fig. 26A, given the properties of graphite sheets it is reasonable to assume that fewer sheets results in a less thick anisotropic member and thus lower thermal conductivity in the Z direction as desired). [claim 7] the thickness of the thermally anisotropic member is at least 150 µm (Fig. 26A, given the properties of graphite sheets it is reasonable to assume that fewer sheets results in a less thick anisotropic member and thus lower thermal conductivity in the Z direction as desired). [claim 9] wherein the thickness of the thermally anisotropic member is at least 200 µm (Fig. 26A, given the properties of graphite sheets it is reasonable to assume that fewer sheets results in a less thick anisotropic member and thus lower thermal conductivity in the Z direction as desired). It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Morisaki to include the graphite sheets of the anisotropic member as taught by Hayashiguchi to achieve the desirable anisotropic member thickness for a given insulating member material limited thermal resistance. This allows for a more robust thermal relationship between the device and terminals to improve thermal dissipation of the device. Regarding claims 4, 6, 8, 10, and 11, Morisaki 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 Morisaki 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 claims 14 and 15, Morisaki does not specifically teach: [claim 14] 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. [claim 15] wherein the thermally anisotropic member is formed as a sheet. Hayashiguchi teaches: [claim 14] 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 terminal1). [claim 15] 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 Morisaki 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 Morisaki teaches the limitations of claim 1 upon which claim 16 depends. The modified invention of Morisaki 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 91). Claim 13 is rejected under 35 U.S.C. 103 as being unpatentable over Morisaki et al (US Publication US20220230953A1) in view of Hayashiguchi (US Publication US20220319952A1) and Hatano (US Publication 20220344253). Regarding claim 13, the modified invention of Morisaki teaches the limitations of claim 1 upon which claim 13 depends. Morisaki does not specifically teach: further comprising a connection member that is joined to the second joining region, 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: further comprising a connection member that is joined to the second joining region, (Fig. 11, portion of 32 connected to 41) 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 Morisaki 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. Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over Morisaki et al (US Publication US20220230953A1) in view of Hatano (US Publication US20220344253A1). Regarding claim 17, Morisaki 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. 25-28, first terminal 1, insulating member 90, and second terminal 2, in that laminating order); a thermally anisotropic member (Fig. 25-28, 90, para 123, “polyimide or polyetheretherketone” both are thermally anisotropic) provided under the part of the second terminal and disposed between the insulating member and a rear surface of the part of the second terminal (Fig. 25-28, 90 as both insulator and thermally anisotropic member under terminal 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). Morisaki does not specifically teach a case including the terminal laminated portion and exposing a part of the first terminal and a part of the second terminal. Hatano teaches a case including the terminal laminated portion and exposing a part of the first terminal and a part of the second terminal (Fig. 11, case 60, terminals 32 and 33, para 74). It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Morisaki to include a case as taught by Hatano in order to improve the reliability and operability of the device. Response to Arguments Applicant's arguments filed 08/22/2023 have been fully considered but they are not persuasive. Regarding claim 1 the applicant argues that Morisaki does not disclose that the insulating member includes “a terrace portion between the second terminal and the first joining region in plan view”. PNG media_image1.png 323 624 media_image1.png Greyscale As shown in fig. 28 of Morisaki the insulating member 90 (including portions 91 and 92) has a terrace portion between the second terminal (23 and 24) and the first joining region (15 of terminal 1). Conclusion Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 NICHOLAS HUTSON whose telephone number is (571)270-1750. The examiner can normally be reached Mon-Fri 8am-5pm. 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, Jeff Natalini can be reached at 571 272 2266. 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. /NICHOLAS LELAND HUTSON/ Examiner, Art Unit 2818 /JEFF W NATALINI/ Supervisory Patent Examiner, Art Unit 2818
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Prosecution Timeline

Oct 28, 2022
Application Filed
May 21, 2025
Non-Final Rejection — §102, §103
Aug 22, 2025
Response Filed
Oct 31, 2025
Final Rejection — §102, §103 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
64%
Grant Probability
68%
With Interview (+4.2%)
3y 1m
Median Time to Grant
Moderate
PTA Risk
Based on 14 resolved cases by this examiner. Grant probability derived from career allow rate.

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