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 .
Claim Rejections - 35 USC § 112
Claims 1, 7, 10, and 14 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. The term “targeted manner” in said claims is a relative term which renders the claim indefinite. The term is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. As such, it is impossible to determine how exactly the volume of the potting compound changes and by extension how the at least one structure is configured.
Claims 1, 7, 10, and 14 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.
Claim limitation(s) “at least one structure that is configured to withstand a change of the volume of the potting compound occurring under changed external conditions in a targeted manner” (emphasis added) invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Specifically, there is no language in the claims that discloses how the structure is actually able to withstand a change of the potting compound’s volume. Therefore, the claims are indefinite and are rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 103
Claim(s) 1-2, 7-9, and 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Masumoto (PGPub No. 20200286799).
Regarding claim 1, Masumoto teaches a semiconductor package, comprising a die carrier; at least one semiconductor die disposed on the die carrier (Fig. 1 points to a semiconductor device comprising semiconductor chips 6 and 7 provided on the circuit pattern 3 (die carrier).); a potting compound at least partially covering the die carrier and the semiconductor die (Fig. 1 and [0025] point to a sealing resin 21 (potting compound) which seals the semiconductor chips 6 and 7.); and at least one structure that is configured to withstand a change of the volume of the potting compound occurring under changed external conditions in a targeted manner (Fig. 1 points to a cover 20.), wherein each of the at least one structure is formed at a surface of the potting compound, the surface being remote from the die carrier (Fig. 1 points to a portion of the cover 20 (at least one structure) formed along a surface of the sealing resin 21 (potting compound) defined by the cavity 22.), wherein the potting compound is covered at the surface by a layer, and wherein each of the at least one structure is formed by a thin membrane inserted in the layer (Id. points to a portion of the cover 20 (at least one structure) formed along a surface of the sealing resin 21 (potting compound) defined by the cavity 22. [0035] further points to an alternative embodiment of said cover 20 (the layer) which may have its thickness reduced (thin membrane) in order to lower the total value of rigidity above the internal components. In light of this, it is considered obvious that at least a portion of the cover 20 could be reduced/thinned to the point of forming at least one thin membrane above the internal potting compound.).
Regarding claim 2, Masumoto teaches a housing, wherein the potting compound is filled into an interior of the housing (Fig. 1 points to a structure (housing) as defined by base plate 1 and case 10.).
Regarding claim 7, Masumoto teaches a semiconductor package, comprising a die carrier; at least one semiconductor die disposed on the die carrier (Fig. 1 points to a semiconductor device comprising semiconductor chips 6 and 7 provided on the circuit pattern 3 (die carrier).); a potting compound at least partially covering the die carrier and the semiconductor die (Fig. 1 and [0025] point to a sealing resin 21 (potting compound) which seals the semiconductor chips 6 and 7.); and at least one structure that is configured to withstand a change of the volume of the potting compound occurring under changed external conditions in a targeted manner (Fig. 1 points to a cover 20.), wherein the at least one structure is formed by at least one cavity in the potting compound (Fig. 1 and [0025] point to a cavity 22 located within the sealing resin 21 (potting compound).), and wherein each of the at least one cavities is completely isolated from the potting compound by a plastic foil and is entirely bound by the plastic foil, entirely bound by a combination of the plastic foil and the die carrier, entirely bound by a combination of the plastic foil and an inner wall of a housing of the semiconductor package, or formed in an upper surface of the potting compound and open to a volume above the upper surface of the potting compound (Fig. 10 points to a concave portion 20a and/or cavity 22 (at least one cavity/cavities).).
Regarding claim 8, Masumoto teaches a plurality of the cavities distributed within the potting compound (Fig. 10 points to a concave portion 20a and/or cavity 22. The court has held that mere duplication of parts has no patentable significance unless a new and unexpected result is produced. In re Harza, 274 F.2d 669, 124 USPQ 378 (CCPA 1960).).
Regarding claim 9, Masumoto teaches a housing, wherein the potting compound is filled into an interior of the housing (Fig. 1 points to a structure (housing) as defined by base plate 1 and case 10.), and wherein at least one cavity is located at an inner wall of the housing so that the cavity is partially bounded by the inner wall (Fig. 10 points to a concave portion 20a and/or cavity 22. It is considered obvious that one of ordinary skill in the art would rearrange the concave portion 20a such that cavity 22 is partially bounded by both portion 20a and an inner wall of the case 10 (housing) in order to lower the amount of material(s) needed to form the cover 20 and/or to reduce the volume of the sealing resin 21 (potting compound) along a specific region of the device.).
Regarding claim 16, Masumoto teaches wherein at least one thin membrane is formed by a thinned section of the layer (Fig. 1 points to a portion of the cover 20 (the layer) formed along a surface of the sealing resin 21 (potting compound) defined by the cavity 22. [0035] further points to an alternative embodiment of said cover 20 (the layer) which may have its thickness reduced (thinned section; thin membrane) in order to lower the total value of rigidity above the internal components. In light of this, it is considered obvious that at least a portion of the cover 20 could be reduced/thinned to the point of forming at least one thin membrane above the internal potting compound.).
Regarding claim 17, Masumoto teaches wherein a thickness of at least one thin membrane is in a range from 1 µm to 10 µm (One of ordinary skill in the art before the effective filing date of the claimed invention would have recognized the thickness of the thin membrane(s) to be a result effective variable. Thus, it would have been obvious to modify the device of Masumoto to have the cover 20 comprising a reduced thickness (thin membrane) within the claimed range in order to reduce rigidity, which would by extension reduce stress on the sealing resin 21 (potting compound) and improve reliability of the overall product, 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.).
Claim(s) 10-13 are rejected under 35 U.S.C. 103 as being unpatentable over Masumoto in further view of Yamada (US Patent No. 5243223).
Regarding claim 10, Masumoto teaches a semiconductor package, comprising a die carrier; at least one semiconductor die disposed on the die carrier(Fig. 1 points to a semiconductor device comprising semiconductor chips 6 and 7 provided on the circuit pattern 3 (die carrier).); a potting compound at least partially covering the die carrier and the semiconductor die (Fig. 1 and [0025] point to a sealing resin 21 (potting compound) which seals the semiconductor chips 6 and 7.); at least one structure that is configured to withstand a change of the volume of the potting compound occurring under changed external conditions in a targeted manner (Fig. 1 points to a cover 20.); and a housing, wherein the potting compound is filled into an interior of the housing (Fig. 1 points to a structure (housing) as defined by base plate 1 and case 10.), and
Masumoto fails to teach wherein the at least one structure is formed by a movable foil.
Yamada teaches teach wherein the at least one structure is formed by a movable foil (Fig. 3(a) points to a semiconductor device comprising a first partition wall 12 (movable foil) that penetrates through a sealing resin layer 8.). Thus, it would have been obvious to a person of ordinary skill in the art (POSITA) prior to the filing date of the claimed invention to combine the teachings of Masumoto and Yamada, such that a partition wall/movable foil is additionally added to the structure in order to absorb any pressure resulting from temperature changes in the sealing resin/potting compound and to move accordingly so as to prevent stress damage.
Regarding claim 11, Yamada teaches wherein the movable foil is disposed without adhesion at an inner wall of the housing (Fig. 3(a) and Col. 5, line 60 – Col. 6, line 6 point to the first partition wall 12 (movable foil) consisting of an L-shaped partition wall portion 12a extending inwardly from the housing 5.). Thus, it would have been obvious to a POSITA prior to the filing date of the claimed invention to combine the teachings of Masumoto and Yamada, such that the partition wall/movable foil is disposed at an inner wall of the housing in order to absorb any pressure resulting from temperature changes in the sealing resin/potting compound while making use of the physical stability provided by the housing.
Regarding claim 12, Yamada teaches wherein the movable foil is decoupled from the housing and is movable in a lateral direction (Fig. 3(a) and Col. 5, lines 60-66 point to a second partition wall 13 (movable foil) provided on the upper cover 6. Based on the shape of said wall 13 and the pressure that would be applied as a result of the pressure absorbing chamber 9 (Id.), it is considered obvious that the partition wall 13 would have some ability to move in a lateral direction.). Thus, it would have been obvious to a POSITA prior to the filing date of the claimed invention to combine the teachings of Masumoto and Yamada, such that the partition wall/movable foil is decoupled from the housing in order to absorb any pressure resulting from temperature changes in the sealing resin/potting compound without being restricted by the housing.
Regarding claim 13, Yamada teaches wherein the movable foil is part of the housing and is movable in a lateral direction (Fig. 3(a) and Col. 5, line 60 – Col. 6, line 6 point to the first partition wall 12 (movable foil) consisting of an L-shaped partition wall portion 12a extending inwardly from the housing 5. Based on the shape of said wall 12 and the pressure that would be applied as a result of the pressure absorbing chamber 9 (Id.), it is considered obvious that the partition wall 13 would have some ability to move in a lateral direction.). Thus, it would have been obvious to a POSITA prior to the filing date of the claimed invention to combine the teachings of Masumoto and Yamada, such that the partition wall/movable foil is disposed at an inner wall of the housing in order to absorb any pressure resulting from temperature changes in the sealing resin/potting compound while making use of the physical stability provided by the housing.
Claim(s) 14 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Masumoto in further view of Hatanaka (PGPub No. 20190267331).
Regarding claim 14, Masumoto teaches a semiconductor package, comprising a die carrier; at least one semiconductor die disposed on the die carrier (Fig. 1 points to a semiconductor device comprising semiconductor chips 6 and 7 provided on the circuit pattern 3 (die carrier).); a potting compound at least partially covering the die carrier and the semiconductor die (Fig. 1 and [0025] point to a sealing resin 21 (potting compound) which seals the semiconductor chips 6 and 7.); at least one structure that is configured to withstand a change of the volume of the potting compound occurring under changed external conditions in a targeted manner (Fig. 1 points to a cover 20.).
Masumoto fails to teach a housing cover comprising at least one portion which projects into the potting compound, the at least one portion comprising a foil or layer which is disposed without adhesion at the at least one portion.
Hatanaka teaches a housing cover comprising at least one portion which projects into the potting compound, the at least one portion comprising a foil or layer which is disposed without adhesion at the at least one portion (Fig. 1 and [0014-15] point to a power semiconductor device 100 comprising a cover 7 (housing cover) with multiple protrusions (at least one portion) extending downward into the silicone gel 8 (potting compound). [0022] further points to the cover 7 comprising a material such as PET-PBT (foil or layer).). Thus, it would have been obvious to a POSITA prior to the filing date of the claimed invention to combine Masumoto and Hatanaka, such that the semiconductor package further includes a housing cover with at least one portion embedded/projected into the potting compound in order to reduce the vibration of the potting compound and prevent breakage of the underlying structure(s).
Regarding claim 15, Hatanaka teaches a plurality of portions projecting into the potting compound, wherein a part of the portions or all portions comprise a foil or layer which is disposed without adhesion at the respective portion. (Fig. 1 and [0014-15] point to a power semiconductor device 100 comprising a cover 7 (housing cover) with multiple protrusions (a plurality of portions) extending downward into the silicone gel 8 (potting compound). [0022] further points to the cover 7 comprising a material such as PET-PBT (foil or layer).). Thus, it would have been obvious to a POSITA prior to the filing date of the claimed invention to combine Masumoto and Hatanaka, such that the semiconductor package further includes a housing cover with a plurality of portions embedded/projected into the potting compound in order to reduce the vibration of the potting compound and prevent breakage of the underlying structure(s).
Response to Arguments
Applicant’s arguments, see Remarks, filed 03/26/2026, with respect to the rejection of claim 17 35 U.S.C. §112(a) and the rejection of amended claim 7 (and by extension dependent claims 8 and 9) under 35 U.S.C. §103 have been fully considered and are persuasive. Therefore, the rejection(s) of said claims have been withdrawn.
Applicant's arguments filed 03/26/2026 regarding claims 1, 16, and 17 have been fully considered but they are not persuasive. Specifically, Applicant argues that said claims should be patentable over Masumoto, stating 1) that there is no suggestion to reduce the thickness of only part(s) of the cover 20 to form thin membranes and 2) that a person of ordinary skill in the art would find no teaching or suggestion in Masumoto relating to accommodating a volume change of a potting compound. Additionally, Applicant argues that 3) claim 7 should be patentable for reasons essentially the same as points 1) and 2), and
Regarding the first argument, Examiner argues that Applicant’s interpretation of Masumoto is narrower than what is actually supported by the reference. Specifically, Applicant’s argument relies mainly on the drawings of Masumoto, in particular Fig. 10, to show that the reference teaches that the thickness of the entire cover 20 is reduced rather than only portions of said cover that could form thin membranes. However, [0035] specifically states that “it is necessary to design such that the total value of the rigidity of the cover 20 […] is lowered. For example, it is necessary to reduce the rigidity of the cover 20 by reducing the thickness of the cover 20 or selecting a material having a low Young's modulus” (emphasis added); in this case, the term “total value” is interpreted under the broadest reasonable interpretation to mean the sum total of the rigidity across all portions that make up the cover 20. In light of this, it is considered obvious that one of ordinary skill in the art would achieve a change in the total value by only altering the value of (i.e., reducing the thickness of) certain portions of the cover 20, resulting in the formation of at least one thin membrane. Thus, Applicant’s argument(s) are considered unpersuasive and fail to overcome the previous rejections.
In response to applicant's argument that Masumoto is completely silent with respect to any volume change of a potting compound, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Thus, Applicant’s argument(s) are considered unpersuasive and fail to overcome the previous rejections.
Applicant's arguments filed 03/26/2026 regarding claim 7 have been fully considered but they are not persuasive. In response to applicant's argument that Masumoto fails to teach “at least one structure that is configured to withstand a change of the volume of the potting compound occurring under changed external conditions in a targeted manner” due to being silent in regards to any flexure/movement of the cover 20, a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. It should also be noted that the subject matter in question is considered improper and rejected under 35 U.S.C. §112(b), as discussed above. Additionally, Applicant also argues that Masumoto fails to teach the newly amended subject matter of claim 7, specifically 1) the requirement that each cavity be completely isolated from the potting compound and 2) the formation of an additional extension of the cover 20 that would be required to completely isolate Masumoto’s cavity 22 from the sealing resin 21; Examiner argues that both points are conclusory statements based on interpretations that are narrower than what is actually supported by the claim. Under the broadest reasonable interpretation, the subject matter in question discloses a single cavity (“each of the at least one cavities” (emphasis added)) that is completely isolated from the potting compound by a plastic foil, which may be done by the cavity being “formed in an upper surface of the potting compound and open to a volume above the upper surface of the potting compound” (i.e., a cavity formed along one of the top portions of the potting compound with an exposed top surface, the plastic foil being formed between said cavity and potting compound); Examiner argues that this is taught by Fig. 10 of Masumoto and is discussed above. Thus, Applicant’s argument(s) are considered unpersuasive and fail to overcome the previous rejections.
Applicant's arguments filed 03/26/2026 regarding claims 10-13 have been fully considered but they are not persuasive. Specifically, Applicant argues that Examiner’s use of reference Yamada in the rejection of said claims is improper, stating that 1) it is quite possible that the pressure in pressure absorbing chamber 9 is insufficient to cause the partition walls 12/13 to move, and 2) Yamada does not explicitly teach that the partition walls 12/13 move, and thus they are not explicitly configured to withstand a volume change of a potting compound as the pending claims require. Regarding the first point, Examiner argues that Applicant has made a conclusory statement: while it may be possible that the chamber 9 may be configured such that the pressure is insufficient to move walls 12/13, this does not exclude the possibility that said chamber may likewise be configured to have enough pressure to move said walls. Regarding the second point, Examiner argues that Applicant is relying on an intended use argument: a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. Additionally, the configuration mentioned by Applicant has been deemed indefinite under 35 U.S.C. 112(b)/112(f), which is discussed above. Thus, Applicant’s arguments are considered unpersuasive and fail to overcome the previous rejections.
Applicant's arguments filed 03/26/2026 regarding claim 14 have been fully considered but they are not persuasive. Specifically, Applicant argues reference Hatanaka fails to teach or suggest “a housing cover comprising at least one portion which projects into the potting compound, the at least one portion comprising a foil or layer which is disposed without adhesion at the at least one portion” (emphasis added), stating that the wording of said claim requires a distinct foil or layer that intentionally prevents adhesion between the housing cover projection and the potting compound, and that Hatanaka does not in fact teach or suggest a feature that prevents adhesion between the protrusions of the cover 7 (housing cover; at least one portion) and the silicone gel 8 (potting compound). Examiner argues that Applicant is relying on an interpretation that is narrower than what is actually supported by the claim: claim 14 makes no mention of the “foil or layer” in relation to the potting compound, but only its relationship to the “at least one portion” of the housing cover. Under the broadest reasonable interpretation, claim 14 discloses a foil or layer that is disposed (i.e., located, positioned, placed, etc.) without adhesion at the one portion of the housing cover: in other words, the foil or layer is a coating or top layer formed on the at least one portion, with no intervening adhesive between the foil/layer and said portion. There is no discussion of disposing the foil or layer within the potting compound itself or any kind of relationship between the two components. Thus, Applicant’s arguments are considered unpersuasive and fail to overcome the previous rejections.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Patrick L Cullen whose telephone number is (703)756-1221. The examiner can normally be reached Monday - Friday, 8:30AM - 5PM EST.
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/PATRICK CULLEN/ Assistant Examiner, Art Unit 2899 /DALE E PAGE/Supervisory Patent Examiner, Art Unit 2899
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