Prosecution Insights
Last updated: April 19, 2026
Application No. 18/166,642

MODULE AND METHOD FOR MANUFACTURING MODULE

Non-Final OA §103§112
Filed
Feb 09, 2023
Examiner
KAO, SOPHIA WEI-CHUN
Art Unit
2817
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Murata Manufacturing Co. Ltd.
OA Round
1 (Non-Final)
96%
Grant Probability
Favorable
1-2
OA Rounds
3y 2m
To Grant
99%
With Interview

Examiner Intelligence

Grants 96% — above average
96%
Career Allow Rate
75 granted / 78 resolved
+28.2% vs TC avg
Minimal +5% lift
Without
With
+4.7%
Interview Lift
resolved cases with interview
Typical timeline
3y 2m
Avg Prosecution
19 currently pending
Career history
97
Total Applications
across all art units

Statute-Specific Performance

§103
48.4%
+8.4% vs TC avg
§102
29.6%
-10.4% vs TC avg
§112
20.0%
-20.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 78 resolved cases

Office Action

§103 §112
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 . Information Disclosure Statement The information disclosure statement (IDS) submitted on 2/9/2023 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner. Specification The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed. 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. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 13 and 16 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 13 recites “A method for manufacturing the module according to claim 3”, which requires a module including a shield connected to a ground potential and electrically connected to the upper protruding portion. However the method steps of claim 13 do not recite providing/forming the shield, connecting the shield to ground, or making the required electrical connection. The scope of claims 13 is not reasonably certain because it is unclear what steps are required to manufacture the module according to claim 3. Therefore claim 13 is indefinite. Claim 16 similarly recites “A method for manufacturing the module according to claim 6”, which requires a module including a shield connected to a ground potential and electrically connected to the upper/right/left surface of the sealing resin layer and electrically connected to a right or left protruding portion. However the method steps of claim 16 do not recite providing/forming the shield, connecting the shield to ground, or making the required electrical connection. The scope of claims 16 is not reasonably certain because it is unclear what steps are required to manufacture the module according to claim 6. Therefore claim 16 is indefinite. 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. Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Liao et. al. (US-2012/0025356-A1, hereinafter Liao), and further in view of Han et. al. (US-2020/0323077-A1, hereinafter Han) Regarding Claim 1. PNG media_image1.png 563 747 media_image1.png Greyscale Liao teaches A module comprising: a substrate (Fig.1 #102) having an upper main surface and a lower main surface arranged in an up-down direction; a metal member (#122b, Fig.1 in view of Fig. 11C-11G) provided on the upper main surface of the substrate, the metal member having a plate-shaped portion (Fig.1 #122b) including a front main surface and a back main surface arranged in a front-back direction; a first electronic component (#104 left component) mounted on the upper main surface of the substrate and disposed in front of the metal member; a second electronic component (#104 right component) mounted on the upper main surface of the substrate and disposed behind the metal member; and a sealing resin layer (#108) provided on the upper main surface of the substrate and covering the first electronic component (#104, left), the second electronic component (#104, right), and the metal member (#122b), wherein the metal member includes an upper protruding portion (Fig.1 #122 d) extending on one side of the front-back direction from an upper end of the plate-shaped portion, (See Liao [0027-0029][0040-0046]) Liao does not explicitly disclose a thickness of the upper protruding portion in the up-down direction is thinner than a thickness of the plate-shaped portion. However, this limitation would have been obvious to one of ordinary skill in the art at the time of the invention because it is a matter of determining optimum process conditions by routine experimentation with a limited number of species of result effective variables. These claims are prima facie obvious without showing that the claimed ranges achieve unexpected results relative to the prior art range. PNG media_image2.png 457 752 media_image2.png Greyscale In addition, in an analogous art pertaining to semiconductor module package, Han teaches in Fig.12 and in related text a metal member with upper protruding portion(#15/#15-1/#15-b), wherein a thickness of the upper protruding portion in the up-down direction is thinner than a thickness of the plate-shaped portion (as shown in Fig.12). (See also Han [0113-0116] a top portion of the upper protruding portion could be removed during the grinding process therefore the thickness is reduced.) It would have been obvious to one of ordinary skill in the art at the effective filing date of the claimed invention to modify Liao with the teachings of Han, as identified above, in order to provide an even top surface and to have better connection between the metal member and the outer shielding layer. Regarding Claim 3. Liao modified by Han teaches The module according to claim 1, Liao further teaches further comprising: a shield (Fig.1 #114), wherein the shield is connected to a ground potential and covers an upper surface of the sealing resin layer (#108), and the upper protruding portion (#122d) and the shield (#114) are electrically connected. (Liao [0027-0029]) Allowable Subject Matter Claims 13 and 16 are rejected. Claims 13 and 16 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AlA), 2nd paragraph, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims Claims 2 and 4-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: Claim 2 contains allowable subject matter, because the prior art, either singly or in combination, fails to anticipate or render obvious, the device, wherein… the plate-shaped portion is inclined with respect to the up-down direction such that the upper end of the plate-shaped portion is located in front of a lower end of the plate-shaped portion, or the plate-shaped portion is inclined with respect to the up-down direction such that the upper end of the plate-shaped portion is located behind the lower end of the plate-shaped portion. These features in combination with the other elements of the claim are neither disclosed nor suggested by the prior art of record. Claims 8, 9 and 12 contain allowable subject matter because they depend from claim 2 . Claim 4 contains allowable subject matter, because the prior art, either singly or in combination, fails to anticipate or render obvious, the device, wherein… the metal member further includes at least one of a right protruding portion extending on one side of the front-back direction from a right end of the plate-shaped portion and a left protruding portion extending on one side of the front-back direction from a left end of the plate-shaped portion, and each of thicknesses of the right protruding portion and the left protruding portion in a left-right direction is thinner than a thickness of the plate-shaped portion. These features in combination with the other elements of the claim are neither disclosed nor suggested by the prior art of record. Claims 5-6, 11, and 14-16 contain allowable subject matter because they depend from claim 4. Claim 7 contains allowable subject matter, because the prior art, either singly or in combination, fails to anticipate or render obvious, the method, wherein… grinding the upper end of the plate-shaped portion to form the upper protruding portion extending on the one side of the front-back direction from the upper end of the plate-shaped portion, the upper protruding portion having a thickness in the up-down direction thinner than a thickness of the plate-shaped portion. These features in combination with the other elements of the claim are neither disclosed nor suggested by the prior art of record. Claim 10 contains allowable subject matter, because the prior art, either singly or in combination, fails to anticipate or render obvious, the device, wherein… the metal member further includes at least one of a right protruding portion extending on one side of the front-back direction from a right end of the plate-shaped portion and a left protruding portion extending on one side of the front-back direction from a left end of the plate-shaped portion, and each of thicknesses of the right protruding portion and the left protruding portion in a left-right direction is thinner than a thickness of the plate-shaped portion. These features in combination with the other elements of the claim are neither disclosed nor suggested by the prior art of record. Claim 13 would be allowable, because of the prior art, either singly or in combination, fails to anticipate or render obvious, the method, wherein… grinding the upper end of the plate-shaped portion to form the upper protruding portion extending on the one side of the front-back direction from the upper end of the plate-shaped portion, the upper protruding portion having a thickness in the up-down direction thinner than a thickness of the plate-shaped portion. These features in combination with the other elements of the claim are neither disclosed nor suggested by the prior art of record. Claim 16 would be allowable, because of the prior art, either singly or in combination, fails to anticipate or render obvious, the method, wherein… grinding the upper end of the plate-shaped portion to form the upper protruding portion extending on the one side of the front-back direction from the upper end of the plate-shaped portion, the upper protruding portion having a thickness in the up-down direction thinner than a thickness of the plate-shaped portion. These features in combination with the other elements of the claim are neither disclosed nor suggested by the prior art of record. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Ono et. al. – US-20100044100A1 Kimura – US-20120320559A1 Any inquiry concerning this communication or earlier communications from the examiner should be directed to SOPHIA W KAO whose telephone number is (703)756-4797. The examiner can normally be reached Monday-Friday 9am-5pm Pacific Time. 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, Eliseo Ramos-Feliciano can be reached at (571) 272-7925. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /SOPHIA W KAO/Examiner, Art Unit 2817 /ELISEO RAMOS FELICIANO/Supervisory Patent Examiner, Art Unit 2817
Read full office action

Prosecution Timeline

Feb 09, 2023
Application Filed
Jan 07, 2026
Non-Final Rejection — §103, §112 (current)

Precedent Cases

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
96%
Grant Probability
99%
With Interview (+4.7%)
3y 2m
Median Time to Grant
Low
PTA Risk
Based on 78 resolved cases by this examiner. Grant probability derived from career allow rate.

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