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 .
Response to Arguments made in Amendment
Applicant’s arguments, see page 6-7 of “Applicant Arguments/Remarks Made in an Amendment”, filed 03/23/2026, with respect to the drawing objections and 35 U.S.C. § 112(b) rejections of claims 1-14 regarding the use of “semiconductor element” have been fully considered and are persuasive. The amendment to claims 1 and 2 canceling the use of the semiconductor element renders the drawing objections and 112(b) claim rejections unnecessary. The drawing objections and 35 U.S.C. § 112(b) rejections of claims 1-14 regarding the use of “semiconductor element” have been withdrawn.
Applicant’s arguments, see page 6 of “Applicant Arguments/Remarks Made in an Amendment”, filed 03/23/2026, with respect to the 35 U.S.C. § 112(b) rejections of claims 9 and 10 regarding the use of the negative limitation around not having a screw hole have been fully considered and are persuasive. Applicant amended the claims to more clearly point out how the heat radiation plate doesn’t have “screw holes.”, and as such, the 35 U.S.C. § 112(b) rejections of claims 9 and 10 regarding the use of “screw holes” have been withdrawn.
Applicant’s arguments, see pages 7-8 of “Applicant Arguments/Remarks Made in an Amendment”, filed 03/23/2026, with respect to the 35 U.S.C. § 102 rejections of claims 1 and 2 from cited references by Fuji and Okumura have been fully considered and are persuasive. Both Fuji and Okumura fail to anticipate the second heat radiation plate having a step structure as amended by applicant. The 35 U.S.C. § 102 rejections of claims 1 and 2 from cited references by Fuji and Okumura have been withdrawn However, the 35 U.S.C. § 102 rejection of claims 1, by Sugita have been fully considered but they are not persuasive. Sugita clearly has the second heat radiation plate with the stair step structure, and further, also includes the interface portion as described in the amended claim 1 with further details and explanation below in the claim 1 rejection. Further, claim 2 is also newly rejected by Sugita which is necessitated by amendment.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1-2 and 5-6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claims 1 and 2, amend the claim to include the limitation that the interface between the base end portion and the tip portion are coplanar. Applicant points to the figures and specifications for support. Examiner can find in the originally filed specification the line “a height position of the lower surface of the tip end portion of the heat radiation plate 8 and a height position of the upper surface of the base end portion of the heat radiation plate 7 are the same as each other” [Page. 7, lines 17-20]. However, there is a difference between a portion of where the interface being at the same height position, and the interface being coplanar. As it stands, Examiner fails to find explicit support filed in the originally filed disclosure for this limitation. Appropriate action is needed.
Regarding claims 5 and 6, currently claims 1 and 2 have the limitation of “the second heat radiation plate has a step structure including a base end portion and a tip portion on the base end portion.” Claims 5 and 6, which depend on claims 1 and 2, both include the limitation of “the first heat radiation plate and the second heat radiation plate protrude from an identical height position of the sealing resin, and do not have a level difference.” Currently, there is no support found in the originally filed disclosure where the second heat radiation plate has the stair stepped structure and is the same level different of the first heat radiation plate, as the stair stepped structure creates the level differences between the heat radiation plates. That is not to say that the protrusion of each heat radiation plate from the sealing resin is not at an identical height, because it does appear to be at an identical height based on the originally filed disclosure. Just that the level difference of the heat radiation plates are different when the second heat radiation plate is the stair stepped version. Examiner does not believe there is support in the originally filed disclosure for these limitations in the originally filed disclosure. Appropriate action is needed.
Claims 5 and 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
currently claims 1 and 2 have the limitation of “the second heat radiation plate has a step structure including a base end portion and a tip portion on the base end portion.” Claims 5 and 6, which depend on claims 1 and 2, both include the limitation of “the first heat radiation plate and the second heat radiation plate protrude from an identical height position of the sealing resin, and do not have a level difference.”
It is not clear how the how someone skilled in art would be able to make a device that is limited by the in a way to have the heat radiation plates protrude from the same height where one has a stair stepped portion. And the heat radiation plates are the same level, as the stair-stepped portion inherently creates a level difference. Claims 9 and 10 are objected to based on their dependency to claims 5 and 6, but the limitations introduced in claims 9 and 10 alone would be rejected to based on cited, such as Sugita where the heat radiation plates are free of screw holes yes still affixed to heat sinks.
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.
Claims 1-4, and 11-12 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by United States Patent Application Publication by Sugita et al. (US 20190333909 A1; Sugita).
Regarding claim 1, Sugita discloses a semiconductor device (20 – Fig. 11), comprising:
sealing resin (300 and 400) formed into a rectangular shape in a top view (fig. 30, where the sealing resin body 300 of device 30 is in a rectangular shape);
a first heat radiation plate (307) protruding from a first side of the sealing resin in a top view (Fig. 2, where first heat radiation plate 307 is protruding from the right side of semiconductor device 300, which we will call the first side);
a second heat radiation plate (308) protruding from a second side facing the first side of the sealing resin in a top view (Fig. 2, where second heat radiation plate 308 is protruding from the left side of semiconductor device 30, which we will call the second side, which does face the first side);
a first terminal (one of 309) protruding from a third side intersecting with the first side of the sealing resin in a top view (Fig. 2, where terminal/s 309 protrude from sealing resin on a third side, that is, the bottom side); and
a second terminal (another of 309) protruding from the third side of the sealing resin in a top view (Fig. 2, where terminal/s 309 protrude from sealing resin on a third side, that is, the bottom side), wherein
the first heat radiation plate is electrically connected to the first terminal (Para. 76, Where each of terminals 309 are electrically connected with bond wires 313 and chips 301. And Para. 69, where chips 301 are connected to first terminal 307),
the first heat radiation plate is electrically connected to the second terminal (Para. 76, Where each of terminals 309 are electrically connected with bond wires 313 and chips 301. And Para. 69, where chips 301 are connected to first terminal 307),
the semiconductor device is configured to be connected to a heatsink (Para. 51-52, where the device may be connected to heatsinks 302/402/304/404),
the first heat radiation plate and the second heat radiation plate are configured to be fixed to the heatsink (Fig. 3, where first heat radiation plate 307 is connected to heatsink 304 and second heat radiation plate 308 is connected to heatsink 302),
Examiner note: As in the previous rejection, Examiner will note that the structure of a heatsink is still not claimed or positively recited. The “configured to” language just limits the structure of the device and/or radiation plates in a manner in which they must be able to connect to or fixed to a heatsink; and
the second heat radiation plate has a step structure including a base end portion and a tip portion on the base end portion, an interface between the base end portion and the tip portion being coplanar with an upper surface of the first heat radiation plate.
Sugita does disclose where there is an interface portion that is coplanar as the purpose of the invention with the heat radiation plates 307 and 308, is that they are continuous and that the surface of one heat radiation plate from one device is supposed to be touching the surface of another, see 307 and 408 touching and coplanar. For interpretation as to what is the “tip portion,” the “interface portion,” and the “base portion,” please see annotated Fig. 3 from Sugita below.
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Figure 1: Annotated Fig. 3 of prior art by Sugita
Regarding claim 3, Sugita discloses the semiconductor device according to claim 1, and further wherein one of the first heat radiation plate and the second heat radiation plate has a level difference, and
a height position of a lower surface of a tip end portion of one of the first and second heat radiation plates and a height position of an upper surface of a base end portion of the other one of the first and second heat radiation plates are identical with each other (Fig. 3, where heat radiation plate 308 and heat radiation plate 307 are of a different height, such that the device can be daisy chained, where the top side of 308 is meant to be connected to the bottom side of 307 of another device, or as Sugita calls it, [408]).
Regarding claim 11, Sugita discloses The semiconductor device according to claim 1, wherein a base end portion of the second heat radiation plate extends to a side of an inner periphery of the sealing resin, and is exposed from a first surface of the sealing resin on a side opposite to a second surface of the sealing resin is configured to be fixed to the heatsink (Fig. 3, Where the base end portion of the second heat radiation plate 308 protrudes from the sealing resin at a side but not at the corner of the sealing resin. Where the first surface can be the top surface 304a, and the second heat radiation plate 308 is exposed from [that is not exposed to] the first surface, where the second surface would be 302a).
Regarding claim 2, Sugita discloses a semiconductor device (30), comprising:
sealing resin (300) formed into a rectangular shape in a top view (Fig. 8, where the sealing resin body 300 and 400 of device 20 is in a rectangular shape);
a first heat radiation plate (307) protruding from a first side of the sealing resin in a top view (Fig. 8, where first heat radiation plate 307 is protruding from the right side of resin 300, which we will call the first side);
a second heat radiation plate (408) protruding from a second side facing the first side of the sealing resin in a top view (Fig. 8, where second heat radiation plate 308 is protruding from the left side of semiconductor device 20, which we will call the second side, which does face the first side);
a first terminal (305) protruding from a third side intersecting with the first side of the sealing resin in a top view (Fig. 8, where terminal 305 protrudes from the first side of resin 300); and
a second terminal (406) protruding from the third side of the sealing resin in a top view (Fig. 2, where the second terminal 406 protrudes from the second side), wherein
the first heat radiation plate is electrically connected to the first terminal (Para. 88, 98),
the first heat radiation plate is electrically connected to the second terminal (Para. 88),
the semiconductor device is configured to be connected to a heatsink (Para. 51-52, where the device may be connected to heatsinks 302/402/304/404),
the first heat radiation plate and the second heat radiation plate are configured to be fixed to the heatsink (Para. 69, “The relay terminal 307 is connected to the heat sink 304,” and Para. 72, “The relay terminal 408 is connected to the heat sink 402.”),
Examiner note: As in the previous rejection, Examiner will note that the structure of a heatsink is still not claimed or positively recited. The “configured to” language just limits the structure of the device and/or radiation plates in a manner in which they must be able to connect to or fixed to a heatsink; and
the second heat radiation plate has a step structure including a base end portion and a tip portion on the base end portion, an interface between the base end portion and the tip portion being coplanar with an upper surface of the first heat radiation plate.
Sugita does disclose where there is an interface portion that is coplanar as the purpose of the invention with the heat radiation plates 307 and 408, is that they are continuous and that the surface of one heat radiation plate from one device is supposed to be touching the surface of another, see 307 and 408 touching and coplanar in Fig. 9. For interpretation as to what is the “tip portion,” the “interface portion,” and the “base portion,” please see annotated Fig. 3 from claim 1 rejection above.
Regarding claim 4, Sugita discloses the semiconductor device according to claim 2, wherein one of the first heat radiation plate and the second heat radiation plate has a level difference, and
a height position of a lower surface of a tip end portion of one of the first and second heat radiation plates and a height position of an upper surface of a base end portion of the other one of the first and second heat radiation plates are identical with each other (Fig. 9, where heat radiation plate 307 and heat radiation plate 408 are of a different height, such that the device can be daisy chained, where the top side of 408 is meant to be connected to the bottom side of 307).
Regarding claim 12, Sugita discloses the semiconductor device according to claim 2, wherein a base end portion of the second heat radiation plate extends to a side of an inner periphery of the sealing resin, and is exposed from a first surface of the sealing resin on a side opposite to a second surface of the sealing resin is configured to be fixed to the heatsink. (Fig. 9, Where the base end portion of the second heat radiation plate 408 protrudes from the sealing resin at a side but not at the corner of the sealing resin. Where the first surface can be the top surface 404a, and the second heat radiation plate 408 is exposed from [that is not exposed to] the first surface, where the second surface would be 402a).
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.
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 7 and 8 rejected under 35 U.S.C. 103 as being unpatentable as obvious by Sugita in view WIPO PCT publication (WO 2020255663 A1; Fuji).
Regarding claim 7, Sugita discloses the semiconductor device according to claim 1, but fails to explicitly disclose wherein a screw hole for fixing the first heat radiation plate and the second heat radiation plate to the heatsink is provided in the first heat radiation plate and the second heat radiation plate.
In a similar field of endeavor, Fuji discloses semiconductor device where there are heat radiation plates 21 and 23 extending from a resin body where the heat radiation plates are also electrically connected to the semiconductors first and second electrodes. Furthermore, the heat radiation plates contain through holes 23d and 22f.
In view of the disclosure of Fuji, it would have been obvious for a person of ordinary skill in the art to apply the disclosure of Fuji to Sugita at the time the instant application was filed to incorporate holes in the first and second heat radiation plates. Accordingly, one would have been motivated to make the modification because one of ordinary skill in the art would understand the advantages that having a hole in the protruding heat radiation plates allows for more structural support and design choices” (Fuji: Para, 102, “The through holes 22f extend through the intermediate portion 22e in the thickness-wise direction Z. Each through hole 22f receives a portion of the encapsulation resin 10. This resists separation of the encapsulation resin 10 from the input lead 22).
Regarding claim 8, Sugita discloses the semiconductor device according to claim 2, but fails to explicitly disclose wherein a screw hole for fixing the first heat radiation plate and the second heat radiation plate to the heatsink is provided in the first heat radiation plate and the second heat radiation plate.
In a similar field of endeavor, Fuji discloses semiconductor device where there are heat radiation plates 21 and 23 extending from a resin body where the heat radiation plates are also electrically connected to the semiconductors first and second electrodes. Furthermore, the heat radiation plates contain through holes 23d and 22f.
In view of the disclosure of Fuji, it would have been obvious for a person of ordinary skill in the art to apply the disclosure of Fuji to Sugita at the time the instant application was filed to incorporate holes in the first and second heat radiation plates. Accordingly, one would have been motivated to make the modification because one of ordinary skill in the art would understand the advantages that having a hole in the protruding heat radiation plates allows for more structural support and design choices” (Fuji: Para, 102, “The through holes 22f extend through the intermediate portion 22e in the thickness-wise direction Z. Each through hole 22f receives a portion of the encapsulation resin 10. This resists separation of the encapsulation resin 10 from the input lead 22).
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 DANIEL J HIBBERT whose telephone number is (703)756-1562. The examiner can normally be reached Monday - Friday 10am-6pm EST.
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/DANIEL J HIBBERT/Examiner, Art Unit 2899
/ZANDRA V SMITH/Supervisory Patent Examiner, Art Unit 2899
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