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 .
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 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.
Foreign Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file, as electronically retrieved 04/11/2023.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 02/17/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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)(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.
Claim(s) 1-2, 8-9 and 15-16 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Moslehi (PG Pub 2016/0087579).
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Regarding claim 1, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches a semiconductor device (see claim limitations below) comprising:
a plurality of PN junction diodes (PN diode) each having a negative temperature characteristic (see Fig. 5 above) and connected to each other in series (see Fig. 5);
a plurality of resistance elements (R) connected respectively to the PN junction diodes in parallel and connected to each other in series (see Fig. 5); and
a Schottky barrier diode (annotated Schottky diode) having a positive temperature characteristic (see Fig. 5 above) and connected to the PN junction diodes in parallel (see Fig. 5).
The recited “having a negative temperature characteristic” and “having a positive temperature characteristic” (i.e., function) does not structurally distinguish an apparatus claim from the prior art apparatus see In re Danly, 263 F.2d 844, 838 (CCPA 1959) (apparatus claims must distinguish in terms of structure rather than function). The only structural limitation that appears to be required for the prior art apparatus to be capable of performing the aforementioned function is having a plurality of PN junction diodes connected to each other in series, a plurality of resistance elements connected respectively to the PN junction diodes in parallel and connected to each other in series and a Schottky barrier diode connected to the PN junction diodes in parallel, which Moslehi clearly shows or in other words, the prior art appears to inherently possess the capability of performing the recited functions. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See In re Swinehart, 439 F.2d 210 (CCPA 1971) to emphasize that “where the Patent [and Trademark] Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.").
Regarding claim 2, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches a total of respective forward voltages of the PN junction diodes (sum of) is greater than a forward voltage of the Schottky barrier diode (see Fig. 5).
Regarding claim 8, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches a semiconductor device comprising:
a plurality of PN junction diodes each having a partial pressure resistor (“Resistor”) and a negative temperature characteristic and connected to each other in series (see Fig. 5); and
a Schottky barrier diode (Shottky diode”) having a positive temperature characteristic and connected to the PN junction diodes in parallel (see Fig. 5).
The recited “a partial pressure” and “a negative temperature characteristic” and “a positive temperature characteristic “(i.e., function) does not structurally distinguish an apparatus claim from the prior art apparatus see In re Danly, 263 F.2d 844, 838 (CCPA 1959) (apparatus claims must distinguish in terms of structure rather than function). The only structural limitation that appears to be required for the prior art apparatus to be capable of performing the aforementioned function is having a plurality of PN junction diodes connected to each other in series and a Schottky barrier diode connected to the PN junction diodes in parallel, which Moslehi clearly shows or in other words, the prior art appears to inherently possess the capability of performing the recited functions. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See In re Swinehart, 439 F.2d 210 (CCPA 1971) to emphasize that “where the Patent [and Trademark] Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.").
Regarding claim 9, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches the same claimed structure (see claim 1), it follows that the same structure would functionally behave (e.g., having a total of respective forward voltages of the PN junction diodes is greater than a forward voltage of the Schottky barrier diode”) in the same claimed way. It is for this reason Moslehi is considered to teach this claimed limitation.
Regarding claim 15, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches a semiconductor device (see claim limitations below) comprising:
a PN junction diodes (PN diode) each having a negative temperature characteristic (see Fig. 5 above) and connected to each other in series (see Fig. 5);
a resistance element (R) connected to the PN junction diode in parallel (see Fig. 5); and
a MOSFET (metal-oxide-semiconductor field effect transistor) (annotated Schottky diode; para [0075]) having a positive temperature characteristic (see Fig. 5 above) and connected to the PN junction diodes in parallel (see Fig. 5).
The recited “having a negative temperature characteristic” and “having a positive temperature characteristic” (i.e., function) does not structurally distinguish an apparatus claim from the prior art apparatus see In re Danly, 263 F.2d 844, 838 (CCPA 1959) (apparatus claims must distinguish in terms of structure rather than function). The only structural limitation that appears to be required for the prior art apparatus to be capable of performing the aforementioned function is having a resistance element connected to a PN junction diode in parallel and a MOSFET connected to the PN junction diode in parallel, which Moslehi clearly shows or in other words, the prior art appears to inherently possess the capability of performing the recited functions. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See In re Swinehart, 439 F.2d 210 (CCPA 1971) to emphasize that “where the Patent [and Trademark] Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.").
Regarding claim 16, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches a semiconductor device (see claim limitations below) comprising:
a PN junction diodes (PN diode) having a partial pressure resistor (R) (see Fig. 5 above) and a negative temperature characteristic; (see Fig. 5); and
a MOSFET (metal-oxide-semiconductor field effect transistor) (annotated Schottky diode; para [0075]) having a positive temperature characteristic (see Fig. 5 above) and connected to the PN junction diodes in parallel (see Fig. 5).
The recited “having a partial pressure”, “a negative temperature characteristic” and “having a positive temperature characteristic” (i.e., function) does not structurally distinguish an apparatus claim from the prior art apparatus see In re Danly, 263 F.2d 844, 838 (CCPA 1959) (apparatus claims must distinguish in terms of structure rather than function). The only structural limitation that appears to be required for the prior art apparatus to be capable of performing the aforementioned function is having a MOSFET connected to a PN junction diode in parallel, which Moslehi clearly shows or in other words, the prior art appears to inherently possess the capability of performing the recited functions. "[T]he discovery of a previously unappreciated property of a prior art composition, or of a scientific explanation for the prior art’s functioning, does not render the old composition patentably new to the discoverer." Atlas Powder Co. v. IRECO Inc., 190 F.3d 1342, 1347, 51 USPQ2d 1943, 1947 (Fed. Cir. 1999). Thus, the claiming of a new use, new function or unknown property which is inherently present in the prior art does not necessarily make the claim patentable. In re Best, 562 F.2d 1252, 1254, 195 USPQ 430, 433 (CCPA 1977). See In re Swinehart, 439 F.2d 210 (CCPA 1971) to emphasize that “where the Patent [and Trademark] Office has reason to believe that a functional limitation asserted to be critical for establishing novelty in the claimed subject matter may, in fact be an inherent characteristic of the prior art, it possesses the authority to require the applicant to prove that the subject matter shown to be in the prior art does not possess the characteristic relied on.").
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.
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) 3-4 and 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Moslehi, as applied to claims 1 and claim 8 respectively above.
Regarding claim 3, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches the PN junction diodes, he does not explicitly teach which direction/shape they are in (e.g., are vertical diodes). However, one of ordinary skill in the art would have found it obvious to change the shape of the PN junction diodes (e.g., to be either one of the two options…vertical or horizontal) to best fit in the intended overall package.
Furthermore, according to MPEP § 2144(IV), where the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court. Examples directed to various common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients are discussed below.” See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). See Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); and In re Williams, 36 F.2d 436, 438 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”).
Regarding claim 4, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches the PN junction diodes, he does not explicitly teach which direction/shape they are in (e.g., are horizontal diodes). However, one of ordinary skill in the art would have found it obvious to change the shape of the PN junction diodes (e.g., to be either one of the two options…vertical or horizontal) to best fit in the intended overall package.
Furthermore, according to MPEP § 2144(IV), where the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court. Examples directed to various common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients are discussed below.” See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). See Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); and In re Williams, 36 F.2d 436, 438 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original
Regarding claim 10, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches the PN junction diodes, he does not explicitly teach which direction/shape they are in (e.g., are vertical diodes). However, one of ordinary skill in the art would have found it obvious to change the shape of the PN junction diodes (e.g., to be either one of the two options…vertical or horizontal) to best fit in the intended overall package.
Furthermore, according to MPEP § 2144(IV), where the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court. Examples directed to various common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients are discussed below.” See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). See Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); and In re Williams, 36 F.2d 436, 438 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions.”).
Regarding claim 11, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches the PN junction diodes, he does not explicitly teach which direction/shape they are in (e.g., are horizontal diodes). However, one of ordinary skill in the art would have found it obvious to change the shape of the PN junction diodes (e.g., to be either one of the two options…vertical or horizontal) to best fit in the intended overall package.
Furthermore, according to MPEP § 2144(IV), where the facts in a prior legal decision are sufficiently similar to those in an application under examination, the examiner may use the rationale used by the court. Examples directed to various common practices which the court has held normally require only ordinary skill in the art and hence are considered routine expedients are discussed below.” See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.). See Smith v. Nichols, 88 U.S. 112, 118-19 (1874) (a change in form, proportions, or degree “will not sustain a patent”); and In re Williams, 36 F.2d 436, 438 (CCPA 1929) (“It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original
Claim(s) 5 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Moslehi, as applied to claims 1 and claim 8 respectively above, and further in view of Tadokoro et al. (PG Pub 2018/0337175; hereinafter Tadokoro).
Regarding claim 5, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches each of the PN junction diodes contains silicon.
In the same field of endeavor, Tadokoro teaches a PN junction diode comprising silicon (para [0002]’ A pn junction diode made of silicon (Si) has been widely used.”).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the PN junction diode made of silicon, as taught by Tadokoro, to create a PN diode that can have a high withstand voltage and a low forward voltage (para [0002]).
Regarding claim 12, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches each of the PN junction diodes contains silicon.
In the same field of endeavor, Tadokoro teaches a PN junction diode comprising silicon (para [0002]’ A pn junction diode made of silicon (Si) has been widely used.”).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the PN junction diode made of silicon, as taught by Tadokoro, to create a PN diode that can have a high withstand voltage and a low forward voltage (para [0002]).
Claim(s) 6 and claim 13 are rejected under 35 U.S.C. 103 as being unpatentable over Moslehi, as applied to claim 1 above and claim 8 respectively above, and further in view of Chen et al. (PG Pub 2017/0229515; hereinafter Chen).
Regarding claim 6, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches the PN junction diodes (PN diode; see Fig. 5). He does not teach the PN diode “include a PiN diode”.
In the same field of endeavor, Chen teaches a diode can comprise “a PN-junction diode, PIN diode, and Schottky diode” (para [0020]).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to simply substitute the PN junction diode of Moslehi, with the PIN diode of Chen, for the purpose of choosing a diode with as equally recognized substation.
Regarding claim 13, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches the PN junction diodes (PN diode; see Fig. 5). He does not teach the PN diode “include a PiN diode”.
In the same field of endeavor, Chen teaches a diode can comprise “a PN-junction diode, PIN diode, and Schottky diode” (para [0020]).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to simply substitute the PN junction diode of Moslehi, with the PIN diode of Chen, for the purpose of choosing a diode with as equally recognized substation.
Claim(s) 7 and claim 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over Moslehi, as applied to claim 1 and claim 8 respectively above, and further in view of Yoshikawa et al. (PG Pub 2017/0148882; hereinafter Yoshikawa).
Regarding claim 7, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches the Schottky barrier diode (“Schottky diode”). He does not teach the material composition of the Shottky diode as comprising: gallium oxide or mixed crystal of gallium oxide.
In the same field of endeavor, Yoshikawa teaches a Shottky diode 100 (para [0042]) of gallium oxide (para [0042]).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the material composition of the Schottky diode comprise gallium oxide, as taught by Yoshikawa, for the purpose of choosing a suitable and well-known diode material composition.
Regarding claim 14, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches the Schottky barrier diode (“Schottky diode”). He does not teach the material composition of the Shottky diode as comprising: gallium oxide or mixed crystal of gallium oxide.
In the same field of endeavor, Yoshikawa teaches a Shottky diode 100 (para [0042]) of gallium oxide (para [0042]).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the material composition of the Schottky diode comprise gallium oxide, as taught by Yoshikawa, for the purpose of choosing a suitable and well-known diode material composition.
Claims 17-18 are rejected under 35 U.S.C. 103 as being unpatentable over Moslehi, as applied to claim 1 above, and further in view of Adachi et al. (PG Pub 2012/0057386; hereinafter Adachi).
Regarding claim 17, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches the semiconductor device (as a power semiconductor device; see claim 1 above). He does not teach the power semiconductor device is a power convertor.
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In the same field of endeavor, refer to Fig. 1-provided above, Adachi teaches a power converter comprising: a power semiconductor device (para [0001-0099]).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the power semiconductor device (of clm 1) be part of a power controller, as taught by Adachi, to create a device that can be used in applications that require a high breakdown voltage and a large amount of current (para [0001]).
Regarding claim 18, refer to the Examiner’s amendment of Fig. 5 provided above, Moslehi teaches the semiconductor device (as a power semiconductor device; see claim 1 above). He does not teach the power semiconductor device is within a control system.
In the same field of endeavor, refer to Fig. 1-provided above, Adachi teaches a control system 1000 comprising: a power semiconductor device 1100 (para [0001-0099]).
In light of such teachings, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have the power semiconductor device (of clm 1) be part of a power controller, as taught by Adachi, to create a device that can be used in applications that require a high breakdown voltage and a large amount of current (para [0001]).
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
a. Yanagida et al. (PG Pub 2023/0207431) teaches a semiconductor device.
b. Uemura (PG Pub 2017/0054360) teaches a semiconductor device.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Christina A Sylvia whose telephone number is (571)272-7474. The examiner can normally be reached on 8am-4pm (M-F).
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marlon Fletcher can be reached on 571-272-2063. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHRISTINA A SYLVIA/Examiner, Art Unit 2817
/MARLON T FLETCHER/Supervisory Primary Examiner, Art Unit 2817