DETAILED ACTION
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.
This Office Action is in response to Amendments/Remarks filed on February 18, 2026.
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)(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.
Claim(s) 1-2, 8, and 10-11 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by U.S. Patent Application Publication No. 2023/0163464 A1 to Furutani (“Furutani”). As to claim 1, Furutani discloses a power semiconductor module, comprising: a power semiconductor die (10) arranged on a power substrate (35), a housing (30, 60) enclosing the power semiconductor die (10) and the power substrate (35), wherein an interior volume formed by the housing (30, 60) is divided by interior walls into at least a first compartment (40) and a second compartment (above 40), wherein the power semiconductor die (10) is arranged within the first compartment (40), a first encapsulation material (71) encapsulating the power semiconductor die (10) and at least partially filling the first compartment (40), and a second encapsulation material (72) different from the first encapsulation material (71), the second encapsulation material (72) encapsulating the first encapsulation material (71) and at least partially filling the second compartment (above 40), wherein the first encapsulation material (71) is arranged within the first compartment (40) but not within the second compartment (above 40) (See Fig. 1, ¶ 0023-¶ 0031, ¶ 0033-¶ 0037) (Notes: the power substrate supports the power semiconductor die disposed thereon and the housing provides structural support. Further, the limitation “compartment” is defined as a separate division or section by merriam-webster.com). As to claim 2, Furutani further discloses wherein the second encapsulation material (72) encapsulates the first encapsulation material (71) on all sides except for the side comprising the power substrate (35) (See Fig. 1) (Notes: the second encapsulation material encapsulates the first encapsulation material on all sides directly or indirectly with intermediate elements therebetween). As to claim 8, Furutani discloses further comprising: an electrical connector (terminal ¶ 0028) connecting the power semiconductor die (10) to the power substrate (35), wherein the electrical connector (terminal ¶ 0028) is arranged within the first compartment (40) and encapsulated by the first encapsulation material (71) (See Fig. 1, ¶ 0028). As to claim 10, Furutani further discloses wherein the power semiconductor die (10) is arranged on a first side of the power substrate (35), and wherein the second encapsulation material (72) is coupled to the first side of the power substrate (35) such that a water-tight seal for the first encapsulation material (71) is provided (See Fig. 1) (Notes: the physical barrier of the second encapsulation material provides the water-tight seal on the first encapsulation material). As to claim 11, Furutani further discloses wherein the first compartment (40) comprises a part of the module with a comparatively higher operating temperature and the second compartment (above 40) comprises a part of the module with a comparatively lower operating temperature (See Fig. 1, ¶ 0025, ¶ 0027).
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) 3-7 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2023/0163464 A1 to Furutani (“Furutani”) as applied to claim 1 above, and further in view of JP 2012-109451 A to Obara et al. (“Obara”). The teaching of Furutani has been discussed above. As to claim 3, although Furutani discloses the first encapsulation material (71) (See Fig. 1), Furutani does not further disclose wherein the first encapsulation material is a liquid. However, Obara does disclose wherein the first encapsulation material (50, 51) is a liquid (See Fig. 1, Fig. 2, Fig. 3, First/Second Embodiment, Page 2-Page 5). In view of the teaching of Obara, 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 teaching of Furutani to have wherein the first encapsulation material is a liquid because the liquid exhibits an electrohydrodynamic phenomenon such that the flow and convection of the liquid remove the heat generated by the power semiconductor die more easily (See Page 2-Page 5). As to claim 4, Furutani in view of Obara further discloses wherein the first encapsulation material (71/50, 51) is a liquid at temperatures between −40°C. and 200°C (See Page 2) ( Notes: the disclosed silicone oil is met by Obara). As to claim 5, Furutani in view of Obara further discloses wherein the first encapsulation material (71/50, 51) is a silicon-based oil (See Page 2). As to claim 6, although Furutani discloses the second encapsulation material (72) (See Fig. 1), Furutani does not further disclose wherein the second encapsulation material is or comprises a gel. However, Obara does disclose wherein the second encapsulation material (51) is or comprises a gel (51) (See Fig. 1, Fig. 2, Fig. 3, First/Second Embodiment, Page 2-Page 5). In view of the teaching of Obara, 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 teaching of Furutani to have wherein the second encapsulation material is or comprises a gel because the second encapsulation material is or comprises the gel can reliably hold and maintain a volume change of the first encapsulation material formed of a liquid exhibiting an electrohydrodynamic phenomenon, where the flow and convection of the liquid remove the heat generated by the power semiconductor die more easily (See Page 2-Page 5). As to claim 7, although Furutani discloses wherein the second encapsulation material (72) is configured to maintain the first encapsulation material (71) at a substantially constant pressure (See Fig. 1), Furutani does not further disclose wherein the constant pressure is maintained by elastically deforming in response to a thermal expansion or a thermal contraction of the first encapsulation material. However, Obara does disclose wherein the constant pressure is maintained by elastically deforming in response to a thermal expansion or a thermal contraction of the first encapsulation material (50) (See Fig. 1, Fig. 2, Fig. 3, First/Second Embodiment, Page 2-Page 5). In view of the teaching of Obara, 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 teaching of Furutani to have wherein the constant pressure is maintained by elastically deforming in response to a thermal expansion or a thermal contraction of the first encapsulation material because the second encapsulation material of a gel can reliably hold and maintain a volume change of a thermal expansion or a thermal contraction of the first encapsulation material formed of a liquid exhibiting an electrohydrodynamic phenomenon, where the flow and convection of the liquid remove the heat generated by the power semiconductor die more easily (See Page 2-Page 5).
Claim(s) 9 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication No. 2023/0163464 A1 to Furutani (“Furutani”) as applied to claim 1 above, and further in view of U.S. Patent Application Publication No. 2018/0166363 A1 to Heppner et al. (“Heppner”). The teaching of Furutani has been discussed above. As to claim 9, although Furutani discloses the first encapsulation material (71) (See Fig. 1), Furutani does not disclose further comprising: a three-dimensional grid structure that is substantially rigid at room temperature and is immersed within the first encapsulation material. However, Heppner does disclose further comprising: a three-dimensional grid structure (320) that is substantially rigid at room temperature and is immersed within the first encapsulation material (330) (See Fig 1, Fig. 3, ¶ 0026, ¶ 0030, ¶ 0031, ¶ 0036). In view of the teaching of Heppner, 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 teaching of Furutani to have further comprising: a three-dimensional grid structure that is substantially rigid at room temperature and is immersed within the first encapsulation material because the three-dimensional grid structure provides EMI shielding on the power semiconductor die (See ¶ 0036).
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent No. 5,807,768 to Shin (“Shin”) in view of U.S. Patent Application Publication No. 2023/0163464 A1 to Furutani (“Furutani”) and U.S. Patent Application Publication No. 2007/0090502 A1 to Zhao et al. (“Zhao”). As to claim 16, although Shin discloses a power semiconductor module, comprising: a power semiconductor die (2b) arranged on a power substrate (8b), a housing (3b, 4b), wherein an interior volume formed by the housing (3b, 4b) is divided by interior walls (9) into at least a first compartment (between 9) and a second compartment (outside 9), wherein the power semiconductor die (2b) is arranged within the first compartment (between 9), a first encapsulation material (6b) encapsulating the power semiconductor die (2b) and at least partially filling the first compartment (between 9), and a second encapsulation material (7b) different from the first encapsulation material (6b), the second encapsulation material (7b) encapsulating the first encapsulation material (6b) and at least partially filling the second compartment (outside 9), wherein the first encapsulation material (6b) is arranged within the first compartment (between 9) but not within the second compartment (outside 9), wherein the second encapsulation material (7b) in the second compartment (outside 9) laterally surrounds the first compartment (between 9) (See Fig. 3, Column 4, lines 3-67, Column 5, lines 1-67, Column 6, lines 1-67, Column 7, lines 1-20) (Notes: the power substrate supports the power semiconductor die disposed thereon and the housing provides structural support. Further, the limitation “compartment” is defined as a separate division or section by merriam-webster.com. Lastly, the power semiconductor die requires power supply, where such a power semiconductor die that generates high heat is cooled by the heat sink. Furutani also discloses the power semiconductor die that requires better heat dissipation paths surrounding thereof (See ¶ 0025, ¶ 0035)), Shin does not further disclose the housing enclosing the power semiconductor die and the power substrate. However, Zhao does disclose the housing (510, 600, 607) enclosing the power semiconductor die (150) and the power substrate (170) (See Fig. 1, Fig. 7, ¶ 0060, ¶ 0061). In view of the teaching of Zhao, 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 teaching of Shin to have the housing enclosing the power semiconductor die and the power substrate because the housing further improves structural integrity, thermal performance, and environmental protection (See ¶ 0060).
Response to Arguments
Applicant's arguments filed February 18, 2026 have been fully considered but they are not persuasive. Applicants argue “the device of Furutani does not comprise interior walls that divide the alleged corresponding ‘first compartment’ and the alleged corresponding ‘second compartment’…These inner sidewalls cannot be corresponded to the claimed ‘interior walls’ because they do not separate the first recess 40 from the second recess 50.” This is not found persuasive because the raised interior walls adjacent 36 clearly laterally separate the first recess 40 from the second recess 50 as clearly seen in FIG. 1B of Furutani. This meets the recited interior walls 152 that laterally separates the compartment 151’ from the second compartment 151”.
Applicants further argue “one would have to introduce a corresponding sealed enclosure around the alleged corresponding ‘first compartment’…but rather an improper hindsight based reconstruction of the claims.” This is not found persuasive because the sealed enclosure may be provided by the sealing member 51 or heat sinks 40 and 41 in FIG. 5 and FIG. 6 of Obara. It appears any barrier may provide the sealed enclosure such that at least the second encapsulation material of Furutani provides the sealed enclosure. Further, adjusting the size of the first recess to accommodate the power semiconductor die and the first encapsulation material is commonly practiced in the art in view of design requirements and constraints. A limited size of the first recess does not appear to discourage the application of the liquid first encapsulation material as FIG. 6 of Obara still provides the insulating fluid 50 even with a smaller size than other embodiments. Lastly, in response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
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 DAVID CHEN whose telephone number is (571)270-7438. The examiner can normally be reached M-F 12-6.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JOSHUA BENITEZ can be reached at (571) 270-1435. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID CHEN/Primary Examiner, Art Unit 2815
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