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 .
Election/Restrictions
Applicant’s election of Group 1 (method manufacture) and Species C (Fig. 6) in the reply filed on 7/7/2025 is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.01(a)).
Claims 20-31 and 39-44 withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on 7/7/2025.
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 32-38 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.
Regarding claims 32 and 36, the limitations “applying a first sintered layer” and the “applying a second sintered layer” (“positioning a metal mold…with a second sintered layer…” ) are unclear as to if the layers are required to be already sintered, or if they are layers which are sinterable but not yet sintered.
Regarding claims 32 and 36, the limitation “contacting two contact areas, which are electrically isolated from one another, on a side of a power semiconductor facing the substrate on the second sintered layer, in particular by pressing” is unclear as to what element(s) is “facing the substrate,” and as to which element(s) is “on the second substrate.” It is further unclear as how “a power semiconductor,” is related to the “power semiconductor module” of the preamble and as to what is “a power semiconductor,” (e.g. a power semiconductor device, a power semiconductor layer, etc.). Additionally, the phrase "in particular by pressing" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are required of the claimed invention. See MPEP § 2173.05(d).
Regarding claims 32 and 36, the limitation “sintering the first sintered layer and the second sintered layer to produce a structured metal connecting layer and connect the two contact areas of the power semiconductor with a material bond to the substrate” is unclear as to how the it is related to the “applying a first sintered layer” and the “applying a second sintered layer” (“positioning a metal mold…with a second sintered layer…”). Specifically, it is unclear if the layers are sintered two times or if they are only sintered in this step. Additionally, it is unclear as to if the two contact areas are connected to each other. Further, it is unclear as to how “a material bond” is related to previously recited elements (e.g. the first and second sintered layers, the structured metal connecting layer).
Regarding claims 33 and 37, the limitation “the power semiconductor is contacted by the structured connecting layer at a distance from the substrate of at least 70 µm, in particular at least 200 µm,” is unclear as to how “the power semiconductor is contacted” is related to the previous recitation of the method step of “contacting two contact areas…on a side of a power semiconductor.” It is further unclear as to how the “structured connecting layer” is related to the previously recited “structured metal connecting layer.” Additionally, the phrase "in particular by pressing" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are required of the claimed invention. See MPEP § 2173.05(d). “[A]t least 70 µm, in particular at least 200 µm” is also unclear because broad range or limitation together with a narrow range or limitation that falls within the broad range or limitation (in the same claim) may be considered indefinite if the resulting claim does not clearly set forth the metes and bounds of the patent protection desired. See MPEP § 2173.05(c). In the present instance, the claim recites the broad recitation “at least 70 µm,” and also recites “at least 200 µm” which is the narrower statement of the range/limitation. The claim(s) are considered indefinite because there is a question or doubt as to whether the feature introduced by such narrower language is (a) merely exemplary of the remainder of the claim, and therefore not required, or (b) a required feature of the claims.
Regarding claims 34 and 38, the limitation “producing the first sintered layer and the second sintered layer from a suspension which contains metal solid state particles and a binding means,” is unclear if both of the sintered layers are formed from a single suspension.
Regarding claim 35, the limitation “the at least one second sintered layer” is unclear as to how it is related to the single “second sintered layer” recited in claim 32.
Note the dependent claims necessarily inherit the indefiniteness of the claims on which they depend.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 32, 35 and 36 is/are rejected under 35 U.S.C. 103 as being unpatentable over Besendoerfer et al. (EP 2498283, using machine translation provided herewith; herein “Besendoerfer”) in view of Oh et al. (US 2021/0057372; herein “Oh”).
Regarding claims 32 and 36, Besendoerfer discloses in Fig. 3 and related text a method for producing a power semiconductor module, the method comprising:
applying a first sintered layer (16’, see pg. 6, para. 3) to a substrate (24);
at least partially drying the first sintered layer (see pg. 6, para. 5);
applying a second sintered layer (16, see pg. 5, last paragraph) to a metal mold (18, see pg. 6, para. 8 and pg. 2 last line);
at least partially drying the second sintered layer (see pg. 5, last paragraph);
positioning the metal mold with a side facing away from the at least partially dried second sintered layer on the first sintered layer (see Fig. 3e-f);
contacting a contact area on a side of a power semiconductor (36) facing the substrate on the second sintered layer (16), in particular by pressing (see pg. 6, para. 7); and
sintering the first sintered layer and the second sintered layer (see pg. 6, para. 7) to produce a structured metal connecting layer and connect the contact area of the power semiconductor with a material bond to the substrate (24).
Besendoerfer does not disclose
contacting two contact areas, which are electrically isolated from one another, on a side of a power semiconductor; and
sintering the first sintered layer and the second sintered layer to produce a structured metal connecting layer and connect the two contact areas of the power semiconductor with a material bond to the substrate.
In the same field of endeavor, Oh teaches in Fig. 2 and related text a method of making a power semiconductor module comprising
contacting two contact areas (102 and 103, see [0036]), which are electrically isolated from one another (see [0035]), on a side of a power semiconductor; and
sintering the first sintered layer and the second sintered layer (133 and 134, see [0066]-[0067]) to produce a structured metal connecting layer and connect the two contact areas of the power semiconductor with a material bond to the substrate.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Besendoerfer by having contacting two contact areas, which are electrically isolated from one another, on a side of a power semiconductor and sintering the first sintered layer and the second sintered layer to produce a structured metal connecting layer and connect the two contact areas of the power semiconductor with a material bond to the substrate, as taught by Oh, in order to provide contacts for an IGBT device (see [0035]) for such applications as vehicles and home appliances (see [0003]).
Regarding claim 35, the combined device shows wherein the metal mold comprises at least two metal plates (Besendoerfer shows a single metal plate for a single contact, and Oh shows two contacts; thus the combination would result in two metal plates), and the at least one second sintered layer is applied to the at least two metal plates of the metal mold by a template (Besendoerfer: see pg. 5, para. 3).
Claim(s) 33-34 and 37-38 is/are rejected under 35 U.S.C. 103 as being unpatentable over Besendoerfer in view of Oh, as applied to claims 32 and 36 above, and in view of Oohiraki et al. (US 2021/0005544; herein “Oohiraki”).
Regarding claims 33 and 37, Besendoerfer does not explicitly disclose wherein the power semiconductor is contacted by the structured connecting layer at a distance from the substrate of at least 70 µm, in particular at least 200 µm.
In the same field of endeavor, Oohiraki teaches in Fig. 3C and related text a semiconductor module wherein the power semiconductor (30) is contacted by the structured connecting layer (70/20/70, see [0029] and ) at a distance from the substrate of at least 70 µm, in particular at least 200 µm (20 is 0.1-2mm, see [0029]; thus the total thickness of 20 and two layers of 70 is 100-2000 µm, which overlaps the claimed range).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Besendoerfer by having the thickness in the claimed range, as taught by Oohiraki, in order to achieve the desired electrical and mechanical bonding effects. Further, note that the range disclosed by Oohiraki overlaps the claimed range. In the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art,” a prima facie case of obviousness exists (In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976)). Additionally, one of ordinary skill in the art before the effective filing date of the claimed invention would have recognized the thickness to be a result effective variable affecting mechanical, thermal, and electrical characteristics. Thus, it would have been obvious to modify the device of Besendoerfer to have the thickness within the claimed range in order to achieve the desired balance of mechanical, thermal and electrical effects, and since optimum or workable ranges of such variables are discoverable through routine experimentation. see MPEP 2144.05 II.B and 2143. Furthermore, it has also been held that the applicant must show that a particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936, (Fed. Cir. 1990). Note that the law is replete with cases in which when the mere difference between the claimed invention and the prior art is some dimensional limitation or other variable within the claims, patentability cannot be found. The instant disclosure does not set forth evidence ascribing unexpected results due to the claimed dimensions. See Gardner v. TEC Systems, Inc., 725 F.2d 1338 (Fed. Cir. 1984), which held that the dimensional limitations failed to point out a feature which performed and operated any differently from the prior art.
Regarding claim 34 and 38, Besendoerfer does not explicitly disclose producing the first sintered layer and the second sintered layer from a suspension which contains metal solid state particles and a binding means.
In the same field of endeavor, Oohiraki teaches in Fig. 3C and related text a semiconductor module wherein the first sintered layer and the second sintered layer (top and bottom 70, see [0051]) from a suspension which contains metal solid state particles and a binding means (see [0051]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the device of Besendoerfer by having the first sintered layer and the second sintered layer from a suspension which contains metal solid state particles and a binding means, as taught by Oohiraki, in order to achieve a paste with a composition which is known to be sinterable. Note that the selection of a known material based on its suitability for its intended use supported a prima facie obviousness determination in Sinclair & Carroll Co. v. Interchemical Corp., 325 U.S. 327, 65 USPQ 297 (1945). See also In re Leshin, 277 F.2d 197, 125. See also MPEP 2144.07.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
EP 3690936 is cited for showing a sintering process including applying a second sintered layer to a metal mold and positioning the metal mold with a side facing away from the second sintered layer on the first sintered layer.
US 20230178509 is cited for showing a sintering process including applying a second sintered layer to a metal mold.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Lauren R Bell whose telephone number is (571)272-7199. The examiner can normally be reached M-F 8am-5pm.
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/LAUREN R BELL/Primary Examiner, Art Unit 2896 7/25/2025