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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 02/10/2026 has been entered.
Response to Arguments made in Amendment
Applicant’s arguments, see Pages. 7-8 in Applicants Arguments/Remarks, filed 02/10/2026, with respect to the 35 U.S.C. 112(b) rejections for Claims 1, 8, and 9 have been fully considered and are persuasive. Applicant amended claim 1 to remove the term of degree of “distant” and replaced it with “spaced apart from” which clarifies the metes and bounds as to what the claim limitation actually covers. Claims 8 and 9 were rejected for antecedent basis, and the amendment to claims 1 and 8 regarding the adding or removing “the” before groove, makes it clear what groove the claims language is referring to. The 35 U.S.C. 112(b) rejections for Claims 1, 8, and 9 has been withdrawn.
Applicant's arguments see Pages. 8-10 in Applicants Arguments/Remarks, filed 02/10/2026, with respect to the 35 U.S.C. 102(a)(1) rejection for Claim 1 have been fully considered but they are not persuasive.
Applicant amended claim 1 which already limited the metal joining portion to be disposed on the second surface of the heat sink and the case to now also include the limitation that “the metal joining portion seals a circumference of the heat dissipation portion and gateways of cooling medium between the first surface of the case and the second surface of the heat sink.” Applicant argues that this new limitation overcomes the cited reference of Tsuyuno (JP-2020088122-A; Tsuyuno) because Tsuyuno fails to disclose the above feature and instead Tsuyuno discloses where joining structure (650) connects fin base connection portion 810 and case frame 601 and does not seal a circumference of both the heat dissipation portion and cooling medium gateways in the claimed manner. Examiner disagrees that Tsuyuno doesn’t disclose this newly claimed limitation. To begin with, it is important to answer if Tsuyuno joining structure (650) even makes a circumference/loop, which does appear to be the case (On provided translation, Page. 35, second to last last paragraph, “the joint portion 650 is formed over the entire circumference on the resin 850 that seals the outer peripheral side surfaces of the first to fourth conductors 410 to 413”, with further evidence in Fig. 10, showing what appears to be joining structure going around the device). Examiner further believes that the circumference joint portion 650 in Tsuyuno, seals a circumference of gateways of cooling medium between the first surface of the case and the second surface of the heatsink (Where the first surface of the case will be understood to be the same surface that the joining portion is already on, see 112(b) below). At first it may seem counter intuitive to say that the circumference of the joining portion of Tsuyuno also includes the gateways of cooling medium as there are some differences between in the instant applicant and the reference as to how much of the gateway of cooling medium is within the circumference, it is obvious that both have parts of the gateway of cooling medium within the circumference of the joining member and both have parts of the gateway of cooling medium outside the circumference of the joining member (See annotated
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Figures below).
Figure 1: Annotated Fig. 8 of instant application and Fig. 16 of Tsuyuno reference.
As the instant application has portions of the gateways of cooling medium that are outside the circumference, it would not be correct to limit the “sealing” as reading that the portions are only inside circumference. When taking this approach, it is clear that Tsuyuno still reads on this new limitation added by the application. As far as the heat dissipation portion is concerned, it is clear that both the instant application and the reference have heat dissipation portions within the circumference of the joining portion.
Another argument that applicant presents is that the instant application in claim 1 requires that the metal joining portion be “disposed at a part of the second surface of the heat sink distant from the edges of the second surface of the heat sink that are in contact but not directly fixed to the case. There are two different parts of this claim limitation that need to be addressed. One is that the metal joining portion be distant from the edges of the second surface of the heatsink. Under broadest reasonable interpretation, to be distant from an edge, could be reasonably interpreted as being some distance from the edge. Examiner believes that the joining portion (650) of Tsuyuno could reasonably be interpreted as no being at the edge of the second surface of the heatsink (Fig. 10, where the surface pointing towards the fins of the heat dissipation portion is the second surface). It is important to note that applicants’ arguments, are related to “distant”, however applicant has amended “distant” to be “spaced apart.” Regardless, the same points made by applicant in their response dated 02/10/2026, and Examiner in this action still contend that Spaced apart, is some distance.
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Figure 2: Annotated Fig. 10 of the Tsuyuno reference
The other part that needs to be addressed, is that the location of the joining portion needs to be where the second surface of the heat sink and the case are in contact but not directly fixed to one another. However, this raises an issue of definitiveness under 35 U.S.C. 112(b), which is discussed below as well as the treatment on how this limitation is to be handled for this office action.
Claim Objections
Claim 1 is objected to because of the following informalities:
The phrase "second surface of the heat sink spaced apart from edges second surface of the heat sink," is objected to because of there not being an limitation of edges second surface. This appears to be a simple ordering error and as such doesn't actually rise to a definiteness issues. Examiner believes that the intended claim language should be "from edges of the second surface of the heatsink," and the claim in this Office Action will be examined as such, however, appropriate action is still needed to correct this.
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.
Claims 1 and 2 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.
Flor Claim 1, the lines "wherein the metal joining portion is disposed on the second surface of the heat sink where the heat sink contacts the case and is disposed at a part of the second surface of the heat sink spaced apart from *edges of the second surface of the heatsink* that are in contact but not directly fixed to the case" renders the claim indefinite as A single claim which claims both an apparatus and a method step is indefinite under 35 U.S.C. 112(b), second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1318, 97, USPQ2d 1737, 1748-49 (Fed. Cir. 2011).
The problem with this is that the metal joining portion is exactly the portion that is joining the heatsink and the case to one another. So how can the metal joining be a portion where the heat sink and the case are in contact but the case and heat sink are not affixed with one another, when the same affixing is being done by the metal joining. The claim language reads as if it is trying to claim the location of the metal joining portion before the metal joining portion is disposed at said location. By doing this, the claim is attempting to claim the device before and after the metal joining portion is disposed. It would be ok to claim what the joining portions does, such as affixing the certain areas of the case and heat sink, but not what was happening with said areas of the case and heat sink before the joining portion was introduced.
Furthermore, after the amendment, claim 1 introduces an antecedent issue by reciting the limitation "the first surface of the case" in line 13. There is insufficient antecedent basis for this limitation in the claim. Before the amendment, claim 2, introduced “a first surface of the case.” In an effort for compact prosecution, "the first surface of the case" in line 13 of claim 1, will be understood to be the same first surface, however, appropriate action is still required.
For at least these above reasons claim 1 is rejected under 35 U.S.C. 112(b) and appropriate action is required.
Claim 2 recites the limitation "a first surface of the case " on line 2. There is insufficient antecedent basis for this limitation in the claim. There is a question on if the “a first surface of the case” is just any surface of the case or the same first surface as introduced in claim 1 after the amendment. Examiner believes this was meant to be the same first surface that was introduced in claim 1 after amendment and will treat it as such during examination and will read the limitation as "the first surface of the case," however, appropriate action is still required.
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.
(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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Japanese Patent Publication by Tsuyuno et al. (JP 2020088122 A; Tsuyuno).
Regarding Claim 1, Tsuyuno discloses a semiconductor device, comprising: a power semiconductor (156/158),
a heat sink (800 – Fig. 8c), having a first surface on which the power semiconductor is provided (Fig. 10, where the first surface of heat sink 800 would be the surface towards the power semiconductor element), and a second surface: on an opposite side of the first surface, a heat dissipation portion is provided (Fig. 10, where the surface opposite the first surface has fins to dissipate heat),
a case (600/601), made of metal (On provided translation, Page. 27, Para. Starting “A Pair”, discusses that the upper- and lower-case parts are joined via metal joining, meaning the case would need to be made of metal), in which the power semiconductor and the heat sink are stored (Fig. 10, where the case encloses the heatsink and the power devices), and a metal joining portion fixing the heat sink and sealing the case (On provided translation, Page. 35, last paragraph, where Case is fixed to the fin)
wherein the metal joining portion (630/650) is disposed on the second surface of the heat sink where the heat sink contacts the case and is disposed at a part of the second surface of the heat sink spaced apart from edges of the second surface of the heat sink that are in contact but not directly fixed to the case (Fig. 10, where the heatsink is joined to the case by metal joining portion 630 on the second surface of the heatsink yet at a distance from the edge of the heatsink), and the metal joining portion seals a circumference of the heat dissipation portion and gateways of cooling medium between a (see above 112b) first surface of the case and the second surface of the heat sink (below, See annotated Fig. 8 of instant application and Fig. 16 of Tsuyuno reference side by side showing the location of the gateways that are within the circumference).
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Figure 3: Annotated Fig. 8 of instant application and Fig. 16 of Tsuyuno reference.
Regarding Claim 2, Tsuyuno discloses the semiconductor device according to Claim 1, wherein the (see above 112b) first surface of the case is in contact with the second surface of the heat sink (Fig. 16, the fins of heatsink 800 are in contact with a surface of the case which we will call the first surface or the inside surface),
on a second surface of the case, which becomes an outside of the case, gateways (Fig. 16, the inlet and outlet ports 13/14) of cooling medium which cools the heat dissipation portion are provided, and
between the first surface of the case and the second surface of the heat sink, the circumference of the heat dissipation portion and the gateways is sealed by the metal joining portion (On provided translation, Page. 35, Para. 7, and; Fig. 16, where between first surface of the case [inside] and second surface of the heatsink [surface toward case] in a lateral direction, metal joining portion 650 circumscribes the gateways).
Regarding Claim 3, Tsuyuno discloses the semiconductor device according to Claim 2, wherein, on the first surface of the case, a groove portion which stores the heat dissipation portion is provided (Fig. 10, where the case has a flat outer portion and a bend that makes a pocket or “groove” [603 in figure] for the heat dissipation portion).
Regarding Claim 4, Tsuyuno discloses the semiconductor device according to Claim 2, wherein on the second surface of the heat sink, a groove portion which has the heat dissipation portion is provided (Fig. 10, where the case has a flat outer portion and a bend that makes a pocket or “groove” [603 in figure] for the heat dissipation portion).
Regarding Claim 5, Tsuyuno discloses the semiconductor device according to Claim 2, and further wherein the gateways provided on the second surface of the case penetrate through the first surface of the case (Fig. 16, where the gateways 13/14 penetrate through the second surface of the case).
Regarding Claim 6, Tsuyuno discloses the semiconductor device according to Claim 5, wherein, the heat dissipation portion is exposed from the gateways toward the outside of the case (Because the gateways and the path that they control are all intertwined with the heat dissipating portion, it is reasonable to say that the heat dissipation portions are exposed from the gateways toward the outside of the case).
Regarding Claim 7, Tsuyuno discloses the semiconductor device according to Claim 2, wherein, the heat dissipation portion is made from a plurality of fins of plate shape or pin shape (On provided translation, Page. 30, Para. 5, “The fin base 800 having a large number of fins 800a is a heat dissipation member”).
Regarding Claim 8, Tsuyuno discloses the semiconductor device according to Claim 7, wherein, the second surface of the heat sink has a projection portion including the plurality of fins which project toward the first surface of the case or a groove portion provided on the first surface of the case (Fig. 10, where the fins are projecting towards the first surface of the case).
Regarding Claim 9, Tsuyuno discloses the semiconductor device according Claim 8, wherein a part of the fins or the projection portion is in contact with the first surface of the case or the bottom surface of the groove portion provided on the first surface of the case, and is fixed to the case by a second metal joining portion (Fig. 10, where the fins are at least in contact with the case and a part of the fins or projection portion are fixed to the case by metal joining portion 650).
Regarding Claim 10, Tsuyuno discloses the semiconductor device according to Claim 1, wherein, the case is a die-cast material (Die cast materials are metals with lower melting points such as zinc, aluminum, magnesium and Tin. On provided translation, Page. 39, Para. 7, “the flow path forming body 600B of the semiconductor module 900 is formed of iron, an aluminum alloy, or the like,” which are known die cast materials).
Regarding Claim 11, Tsuyuno discloses the semiconductor device according to Claim 1, wherein, the case has a uniformed wall thickness, within an area in which the metal joining portion fixes the case with the heat sink (Metal joining portion circumscribes the power semiconductor element, however, one can choose any “an area” where the metal joining portion is that makes the metal joining portion to have uniform thickness).
Regarding Claim 12, Tsuyuno discloses the semiconductor device according to Claim 2, and further wherein the gateways have a header which is a feed in port (13) of the cooling medium, and a header which is a feed out port (14) of the cooling medium (On provided translation, top Paragraph of Page. 39).
Regarding Claim 13, Tsuyuno discloses the semiconductor device according to Claim 12, wherein pipes are joined to headers which are provided in the gateways, and
feed in and feed out of the cooling medium is achieved through the pipes (On provided translation, top Paragraph of Page. 39).
Regarding Claim 14, Tsuyuno discloses the semiconductor device according to Claim 2, wherein the case has, on the first surface, a wall portion which covers outer peripheries of the heat sink and the power semiconductor, and
an end part of the wall portion is sealed with a lid (Fig. 10, where the case is built of two parts and either could be considered the lid, both parts do cover the peripheries of the heatsink and the power semiconductor).
Regarding Claim 15, Tsuyuno discloses the semiconductor device according to Claim 1, wherein the power semiconductor is solder joined (51) with the heat sink (Fig. 2, where power semiconductor element is joined to outer members by solder joint 51).
Regarding Claim 16, Tsuyuno discloses the semiconductor device according to Claim 2, wherein on the second surface of the case, metal joining marks corresponding to the metal joining portion are disposed (Fig. 10, where metal joining marks 630 are present on the second surface of the case).
Regarding Claim 17, Tsuyuno discloses a method for producing a semiconductor device, where the semiconductor device is according to Claim 1, the method comprising:
a first joining process for joining the power semiconductor and the heat sink as a combination component (Fig. 2, where power semiconductor element is joined to outer members by solder joint 51), and
a second joining process for metal joining the case and the heat sink of the combination component (Fig. 10, where the heatsink is joined to the case by metal joining portion 630 on the second surface of the heat sink).
Examiner note, while it may appear a glance that the first joining process is done before the second joining process based on the name scheme of first and second process. There is actually nothing stating that one process is before or after the other, and as such the claim limitations should be that these processes occur, but not their order in which they occur. Same is true for claim 18 below.
Regarding Claim 18, Tsuyuno discloses a method for producing a semiconductor device, where the semiconductor device is according to Claim 1, the method comprising:
a first joining process for metal joining the case and the heat sink as a combination component (Fig. 2, where power semiconductor element is joined to outer members by solder joint 51), and
a second joining process for joining the power semiconductor on the first surface of the heat sink of the combination component (Fig. 10, where the heatsink is joined to the case by metal joining portion 630 on the second surface of the heat sink).
Regarding Claim 19, Tsuyuno discloses the method for producing a semiconductor device according to Claim 17, and further wherein the metal joining is performed by friction-stir welding or energy irradiation (On provided translation, Page. 35, last paragraph, the welding can be done via laser welding. The specification in the instant application on page 8 discusses that energy irradiation can be laser welding).
Regarding Claim 20, Tsuyuno discloses the method for producing a semiconductor device according to Claim 18, wherein the metal joining is performed by friction-stir welding or energy irradiation (On provided translation, Page. 35, last paragraph, the welding can be done via laser welding. The specification in the instant application on page 8 discusses that energy irradiation can be laser welding).
Conclusion
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 8am-5pm 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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