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 Objections
Claim 5 is objected to because of the following informalities: claim 5 depends from cancelled claim 2. In the interest of compact prosecution, claim 5 is interpreted as depending from claim 1. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 5-6 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.
Specifically, claim 5 recites “the contact face of the projection designed to fix the component in place having a screw hole” which is indefinite. It is unclear how the contact face of the projection can have a screw hole when claim 1 requires that said contact face has no hole. In the interest of compact prosecution, the above recitation will be interpreted as “the contact face of another projection designed to fix the component in place having a screw hole.”
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, 3-6, 10, and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Ushijima (US Pub. No. 2006/0067059) in view of Carlson (US Pub. No. 2008/0105963).
Regarding claim 1, in FIGs. 1-3, Ushijima discloses a power electronics module having: at least one electronic chip (10/11, paragraph [0030]); and an electrically insulating overmolded block (36, paragraph [0031]) at least partially encapsulating each chip; wherein the power electronics module comprises at least one projection (35, paragraph [0033]) against which an electronic circuit board for controlling each chip (50, paragraph [0033]) can bear, the projection comprising an electrically insulating material (paragraph [0034]) and extending from one face of the block, the projection having a free end defining a contact face for the electronic circuit board, the contact face being designed to allow the electronic circuit board to move away from the contact face.
Ushijima appears not to explicitly disclose that the contact face of the projection designed to allow the component to move away does not have a bore.
In FIG. 8, Carlson discloses a similar module having at least one projection (220, paragraph [0054]) against which a component (212) can bear, wherein a contact face of the projection (upper surface) is designed to allow the component to move away and does not have a bore. Carlson discloses that such a projection is included for keeping substrates 212 and 214 spaced apart a desired distance (paragraph [0054]).
To keep the module spaced apart from the electrically insulating overmolded block a desired distance it 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 to provide a projection having a contact face designed to allow the component to move away and not having a bore.
Regarding claim 3, in FIGs. 1-3, Ushijima discloses that a contact face is planar (upper surface of 35 is planar; see FIG. 2).
Regarding claim 4, in FIGs. 1-3, Ushijima discloses at least one projection being designed to fix the component in place (via screw 51).
Regarding claim 5, in FIGs. 1-3, Ushijima discloses that the contact face of another projection designed to fix the component in place having a screw hole (see FIG. 2).
Regarding claim 6, in FIGs. 1-3, Ushijima discloses that the screw hole is either tapped, or smooth and intended to interact with a thread-forming or self-tapping screw (this covers all possibilities; FIG. 2 shows that screws 51 have threads).
Regarding claim 10, in FIGs. 1-3, Ushijima discloses the projection and the block being formed in one piece (paragraph [0034]).
Regarding claim 16, in FIGs. 1-3 and 6, Ushijima discloses an electrical system (e.g. see FIG. 6) having a module as claimed in claim 1 and a component bearing against each projection.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over Ushijima (US Pub. No. 2006/0067059) in view of Carlson (US Pub. No. 2008/0105963) as applied to claim 1, and further in view of Natali (US Patent No. 5,960,526).
Regarding claim 9, the combination of Ushijima and Carlson appears not to explicitly disclose the projection having the shape of a cone frustum and/or a truncated pyramid.
The art however well recognized a cone frustum and/or a truncated pyramid to be s suitable shape for use as a projection. See, for example, Natali, FIGs. 3 and 5, element 4.
According to well-established patent law precedents (see, for example, M.P.E.P. § 2144.07), therefore, it 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 to have formed the Ushijima disclosed projection to have a cone frustum and/or a truncated pyramid shape for its recognized suitability as a projection shape.
Response to Arguments
Applicant's arguments filed 3/12/2026 (“Reply”) have been fully considered but they are not persuasive.
Regarding claim 1, Applicant contends that:
A person of ordinary skill in the art seeking to improve attachment and support of an external control board on a power module would not have been motivated to look to internal chip-stacking spacers of the type disclosed in Carlson. The mechanical environment is fundamentally different. The forces, tolerances, and vibration conditions associated with an automotive control board mounted on a power module are not comparable to those involved in maintaining spacing between stacked internal package components. Nothing in Carlson would have suggested adapting its internal spacers into support pads for an external control board, and nothing in Ushijima would have suggested removing the bore from its fastening projections while still preserving their intended fastening function. (see Reply page 7)
This argument is not persuasive. Carlson is cited for the broad disclosure of a spacer with no bore hole being used to provide spacing between two adjacent substrates in combination with another projection being used to fix said substrates in place with a screw. One of ordinary skill in the art faced with a problem of spacing/fastening between two substrates would look to the solutions of others faced with a problem of spacing/fastening between two substrates, and as such the Ushijima and Carlson references are analogous art. See, for example, M.P.E.P. § 2141.01(a). Further, it was well within the abilities of one of ordinary skill in the art to adapt the broad disclosure of Carlson, as necessary, to the device of Ushijima to yield predictable results. Devices utilizing a combination of a spacer with no bore hole in combination with another projection being used to fix said substrates in place with a screw were notoriously well known.
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 TUCKER J WRIGHT whose telephone number is (571)270-3234. The examiner can normally be reached 8:30am-5:00pm.
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/TUCKER J WRIGHT/Primary Examiner, Art Unit 2891