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 .
Response to Arguments
Applicant’s arguments, see Remarks, filed 29 December 2025, with respect to Objections to Specifications and Claims have been fully considered and are persuasive. The Objections to Specifications and Claims have been withdrawn.
Applicant's arguments filed 29 December 2025 have been fully considered but they are not persuasive. The applicant argues that Walsh is not analogous art with respect to both Fuergut and that neither Walsh nor Fuergut is analogous to the instant application and hence the prima facie case of obviousness cannot be established. The examiner respectfully disagrees.
First, Walsh is analogous to Fuergut since it meets the two tests of “same field of endeavor” and “reasonably pertinent.” See MPEP § 2141.01 (a) (I). Fuergut teaches an electronic device that is used in high-power applications such as AC power generation, AC/DC conversions, DC/AC conversions, DC/DC conversions, etc., which could be used in motor drive circuits such as half-bridge circuits. See Fuergut paragraph [0002]. The previous office action finds that Fuergut’s device comprise of device parts, which includes wiring (54), a composite coating material arranged on these device parts, specifically the wiring 54 is coated with composite coating material 55, and a molding compound. The previous office action acknowledges that Fuergut does not teach that the composite coating material is not made of a polymer matrix having ceramic particles. Walsh teaches a polymer-ceramic compound that is used to coat the wiring of high-voltage electrical cables in an aircraft. See Walsh paragraphs [0001]-[0002].
Both Fuergut and Walsh are in the same field of endeavor since both deal with issues related to wiring in high power applications (it is known in the art that power is directly proportional to voltage; Power = Voltage x Current). Also, "The field of endeavor is ‘not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.’" (quoting Unwired Planet, LLC v. Google Inc., 841 F.3d 995, 1001, 120 USPQ2d 1593, 1597 (Fed. Cir. 2016).
It is also known in the art that aircrafts use motor drive circuits such as half-bridge circuits. Hence, the device of Fuergut is reasonably pertinent to aircraft power applications. Conversely, the Walsh’s composite coating material for high-voltage electrical cables is reasonably pertinent to Fuergut’s composite coating, since Fuergut’s composite coating material envelops wiring in a high-voltage application. See also Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 1353, 1359, 2020 USPQ2d 11335 (Fed. Cir. 2020) ("Thus, when addressing whether a reference is analogous art with respect to the claimed invention under a reasonable-pertinence theory, the problems to which both relate must be identified and compared.")
Secondly, Fuergut in view of Walsh is analogous to the claimed invention. Paragraphs [0066]-[0068] of the instant application reveals that the claimed invention is a power semiconductor device used in high voltage applications, with the device further comprising of a power MOSFET, IGBT, or Schottky diode. These device components are exactly the same as Fuergut’s (see paragraph [0002]). Hence, Fuergut in view of Walsh, with respect to the instant application, meets the same field of endeavor test. The instant application discloses a composite coating material comprising of a polymer matrix and/or ceramic parts, with the composite coating material enveloping a wiring (210) of the high-power device. This places the instant application to be reasonably pertinent to the device of Fuergut in view of Walsh, as described above.
Furthermore, the commercial use of the device of the instant application, i.e., satellite communications, does not give it any patentable distinction over Fuergut in view of Walsh. See Unwired Planet, LLC v. Google Inc quoted above. Also, it is not necessary that the prior art suggest the combination to achieve the same advantage or result discovered by applicant. See In re Kahn, 441 F.3d 977, 987, 78 USPQ2d 1329, 1336 (Fed. Cir. 2006)
Lastly, "[w]hen a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one." KSR, 550 U.S. at 417, 82 USPQ2d at 1396. The Federal Circuit reads KSR as "direct[ing] us to construe the scope of analogous art broadly" because "familiar items may have obvious uses beyond their primary purposes, and a person of ordinary skill often will be able to fit the teachings of multiple patents together like pieces of a puzzle." Wyers v. Master Lock Co., 616 F.3d 1231, 1238, 95 USPQ2d 1525, 1530 (Fed. Cir. 2010) (quoting KSR, 550 U.S. at 402, 127 S. Ct. at 1727).
The applicant further argues that the Featherby, Gmunder, and Zhu references does not overcome the deficiencies of Fuergut in view of Walsh and that the Double Patenting rejection is not appropriate due to the deficiencies of Fuergut in view of Walsh. The examiner finds these arguments moot, due to the discussion above.
In summary, the instant application is not place in a condition for an allowance.
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.
Claim(s) 1-2, 4-14, 16-18, 22-26, 37-39 and 41 are rejected under 35 U.S.C. 103 as being unpatentable over Fuergut (US 2017/0287880 A1) and further in view of Walsh (US 2021/0130573 A1).
Regarding claim 1, Fuergut teaches a device (Fig. 5C) comprising:
device parts (50-54);
a composite coating material (55, see ¶ 0026: dielectric layer 55 made of compound materials of polymer, polyimide, resin, etc.; ¶ 0027) arranged on one or more of the device parts; and
a molding compound (56) arranged on and/or around one or more of the device parts.
However, Fuergut does not teach: wherein the composite coating material comprises a polymer matrix including and/or incorporating ceramic particles.
Walsh, in the same field of invention, teaches a device (¶ 0002) wherein the composite coating material (10; see ¶ 0002: dielectric material made of polymers used for coating cables) comprises a polymer matrix (14, see ¶ 0004, ¶ 0013) including and/or incorporating ceramic particles (12, ¶ 0004, ¶ 0013).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Walsh into the device of Fuergut to make a composite coating material to be comprised of a polymer matrix and/or incorporating ceramic particles in a device at least comprising of device parts; the composite coating material arranged on one or more of the device parts; and a molding compound arranged on and/or around one or more of the device parts. The ordinary artisan would have been motivated to modify Fuergut in the manner set forth above for at least the purpose of developing a robust composite material with a balance of high thermal conductivity and low electrical conductivity (Walsh ¶ 0003) for applications involving high voltages (Walsh ¶ 0002, ¶ 0013).
Regarding claim 2, the device according to claim 1 wherein the molding compound is further arranged on one or more of the device parts implemented without the composite coating material coated thereon (Fuergut Fig. 5C shows mold 56 on middle and lower layers of 50 without dielectric layer 55 on portions of the middle and lower layers of 50).
Regarding claim 4, the device according to claim 1 wherein the device parts comprise at least one lead frame (Fuergut ¶ 0039: carrier 50 is a leadframe); and
wherein the molding compound (Fig. 5C shows 56 is at least partially on the portion of 55 that is partially on 50; the rest of 56 is at least partially on other portions of 55 that is at least partially on other device parts such as 51-54) is at least partially on the composite coating material (Fig. 5C shows portions of 55 at least partially on 50) that is at least partially on the at least one lead frame.
Regarding claim 5, the device according to claim 1 wherein the composite coating material is arranged on all exposed surfaces of one or more of the device parts (Fuergut Fig. 5C shows 55 coating on all exposed surfaces of 54, 53, 52, 51).
Regarding claim 6, the device according to claim 1 wherein the composite coating material is arranged on surfaces of one or more of the device parts that contact the molding compound (Fuergut Fig. 5C shows 55 is on the top surfaces of 50 and also shows 56 contacting the bottom surfaces of 50).
Regarding claim 7, the device according to claim 1 wherein the composite coating material is formulated and/or configured to reduce failures of the device parts associated with interfacial stress (Fuergut ¶ 0025; Walsh ¶ 0002) exhibited during high temperature operation of the device (Walsh ¶ 0002).
Regarding claim 8, the device according to claim 1 wherein the polymer matrix comprises a polyimide, a silicon, a fluoropolymer, and/or copolymers of a polyimide- silicon (Fuergut ¶ 0026: polyimide, silicone; Walsh ¶ 0017: fluoropolymer).
Regarding claim 9, the device according to claim 1 wherein the ceramic particles comprise hexagonal boron-nitride (h-BN) particles (Walsh ¶ 0016); and wherein the hexagonal boron-nitride (h-BN) particles comprise 5 nm to 5 μm sized h-BN particles (Walsh ¶ 0018).
Regarding claim 10, the device according to claim 1 wherein the ceramic particles comprise hexagonal boron-nitride (h-BN) particles; and wherein the composite coating material comprises a filler (Walsh ¶ 0016: hexagonal boron-nitride particles are fillers of the polymer matrix 10).
Regarding claim 11, the device according to claim 1 wherein the ceramic particles comprise hexagonal boron-nitride (h-BN) particles (Walsh ¶ 0016); and wherein the hexagonal boron-nitride (h-BN) particles comprise h-BN in forms of h-BN nano-particles, h-BN microparticles, h-BN nanotubes (NT), and/or h-BN pallets (¶ 0018: size of particles ranges from nanometers to micrometer in range).
Regarding claim 12, the device according to claim 1 wherein the composite coating material comprises one of the following: a dispensed coating on one or more of the device parts, an inkjet coating on one or more of the device parts, a spray coating on one or more of the device parts, a screen printed coating on one or more of the device parts, a screen printed coating on one or more of the device parts, and/or a cured coating on one or more of the device parts (Fuergut Fig. 2A-2E and ¶ 0010).
Regarding claim 13, the device according to claim 1 wherein the composite coating material comprises an inkjet coating on one or more of the device parts (Fuergut ¶ 0010).
Regarding claim 14, the device according to claim 1 wherein the composite coating material comprises a spray coating on one or more of the device parts (Fuergut ¶ 0010).
Regarding claim 16, the device according to claim 1 wherein the composite coating material comprises a cured coating on one or more of the device parts (Fuergut ¶ 0044: cured at temperatures 200 °C to 400 °C with nitrogen).
Regarding claim 17, the device according to claim 1 wherein the ceramic particles comprise hexagonal boron-nitride (h-BN) particles (Walsh ¶ 0016); and wherein the composite coating material (10) comprises a mixture (Walsh Fig. 1 and ¶ 0016 - ¶ 0018) of at least the hexagonal boron-nitride (h-BN) particles (12) and the polymer matrix (14;).
Regarding claim 18, the device according to claim 1 wherein the ceramic particles comprise hexagonal boron-nitride (h-BN) particles (Walsh ¶ 0016); and wherein the composite coating material comprises a mixture (Walsh Fig. 1 and ¶ 0016 - ¶ 0018) of at least the hexagonal boron-nitride (h-BN) particles (12) and the polymer matrix (14) together with other fillers (¶ 0016: aluminum nitride, beryllium oxide, or any combinations thereof).
Regarding claim 22, the device according to claim 3 wherein the at least one device component comprises one or more MOSFETs and/or diodes (Fuergut ¶ 0020).
Regarding claim 23, the device according to claim 3 wherein the at least one device component comprises one or more active devices, passive devices, dies, chips, and/or transistors (Fuergut ¶ 0020).
Regarding claim 24, the device according to claim 3 wherein the at least one interconnect comprises one or more wires, wire bonds, and/or leads (Fuergut ¶ 0054: 54 is a bond wire).
Regarding claim 25, the device according to claim 1 wherein the device comprises a package, a power device package, and/or a power module (Fuergut ¶ 0020).
Regarding claim 26, Fuergut teaches a process of manufacturing a device (Figs. 5 & 8) comprising:
providing device parts (50-54);
arranging a composite coating material (55, see ¶ 0026: dielectric layer 55 made of compound materials of polymer, polyimide, resin, etc.; ¶ 0027) on one or more of the device parts; and
arranging a molding compound (56) on and/or around one or more of the device parts.
However, Fuergut does not teach: wherein the composite coating material comprises a polymer matrix including and/or incorporating ceramic particles.
Walsh, in the same field of invention, teaches a process of manufacturing a device (¶ 0002) wherein the composite coating material (10; see ¶ 0002: dielectric material made of polymers used for coating cables) comprises a polymer matrix (14, see ¶ 0004, ¶ 0013) including and/or incorporating ceramic particles (12, see ¶ 0004 ¶ 0013).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Walsh into the process of Fuergut to make a composite coating material to be comprised of a polymer matrix and/or incorporating ceramic particles in a process of manufacturing a device at least comprising of providing device parts; arranging the composite coating material arranged on one or more of the device parts; and arranging the molding compound arranged on and/or around one or more of the device parts. The ordinary artisan would have been motivated to modify Fuergut in the manner set forth above for at least the purpose of developing a robust composite material with a balance of high thermal conductivity and low electrical conductivity (Walsh ¶ 0003) for applications involving high voltages (Walsh ¶ 0002, ¶ 0013).
Regarding claim 37, the process of manufacturing a device according to claim 26 further comprising one of the following: dispensing the composite coating material on one or more of the device parts to form a dispensed coating on one or more of the device parts, ink jetting the composite coating material on one or more of the device parts to form an inkjet coating on one or more of the device parts, spray coating the composite coating material on one or more of the device parts to form a spray coating on one or more of the device parts, screen printing the composite coating material on one or more of the device parts to form a screen printed coating on one or more of the device parts, and/or curing the composite coating material on one or more of the device parts to form a cured coating on one or more of the device parts (Fuergut Fig. 2A-2E and ¶ 0010); and
wherein the molding compound (Fig 5C shows 56 is at least partially on the portion of 55 that is partially on 50; the rest of 56 is at least partially on other portions of 55 that is at least partially on other device parts such as 51-54) is at least partially on the composite coating material (Fig. 5C shows portions of 55 at least partially on 50) that is at least partially on one or more of the device parts.
Regarding claim 38, the process of manufacturing a device according to claim 26 further comprising ink jetting the composite coating material on one or more of the device parts to form an inkjet coating on one or more of the device parts (Fuergut ¶ 0010).
Regarding claim 39, the process of manufacturing a device according to claim 26 further comprising spray coating the composite coating material on one or more of the device parts to form a spray coating on one or more of the device parts (Fuergut ¶ 0010).
Regarding claim 41, the process of manufacturing a device according to claim 26 further comprising curing the composite coating material on one or more of the device parts to form a cured coating on one or more of the device parts (Fuergut ¶ 0044: cured at temperatures 200 °C to 400 °C with nitrogen).
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over Fuergut (US 20170287880 A1) in view of Walsh (US 20210130573 A1)., as applied to claim 1 above, and further in view of Featherby (US 6368899 B1).
Regarding claim 3, Fuergut in view of Walsh teaches device according to claim 1 wherein the device parts comprise at least one device component (52, see Fuergut Fig. 5C), a mount (top layer of 50), at least one interconnect (54), a component attach (51), and/or at least one connection (53); and
wherein the molding compound (Fig 5C shows 56 is at least partially on the portion of 55 that is partially on 50; the rest of 56 is at least partially on other portions of 55 that is at least partially on other device parts such as 51-54) is at least partially on the composite coating material (Fig. 5C shows portions of 55 at least partially on 50) that is at least partially on one or more of the device parts.
However, Fuergut in view of Walsh does not teach: one or more of a first lead and a second lead.
Featherby, in the same field of invention teaches a device (10) comprising one or more of a first lead (left 22) and a second lead (right 22).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Featherby into the device of Fuergut to provide one or more of a first lead and a second lead in a device at least consist of device parts, with the device parts comprising a device component, the first lead, the second lead, a mount, at least one interconnect, a component attach, and/or at least one connection; a composite coating material arranged on one or more of the device parts; and a mold compound arranges on and/or around one or more of the device parts.. The ordinary artisan would have been motivated to modify Fuergut in view of Walsh in the manner set forth above for at least the purpose of using the exterior ends of the first and the second leads as connection members to electrically connect the device component to a printed circuit board (Featherby Col. 4, Ln. 64-65).
Claim(s) 15 and 40 are rejected under 35 U.S.C. 103 as being unpatentable over Fuergut (US 20170287880 A1) in view of Walsh (US 20210130573 A1), as applied to claim 1 and/or 26 above, and further in view of Gmunder (US 20200111717 A1).
Regarding claim 15, Fuergut in view of Walsh teaches the device according to claim 1 wherein the composite coating material comprises a printed coating (Fuergut ¶ 0029, ¶ 0043: printing) on one or more of the device parts; and further teaches jet coating (¶ 0029) as an alternative for encapsulating the device parts.
However, Fuergut in view of Walsh does not specifically teach the printed coating to be screen printed coating.
Gmunder, in the same field of invention, teaches a printed coating to be screen printed coating (¶ 0008) together with teaches jet coating (¶ 0008) as methods for encapsulating device parts (¶ 0008, ¶ 0073).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Gmunder into the device of Fuergut in view of Walsh to use a screen printed coating to comprise a composite coating material on one or more device parts in a device at least consisting of the device parts, the composite coating material arranged on one or more of the device parts, and a molding compound arranged on and/or around one or more of the device parts. The ordinary artisan would have been motivated to modify Fuergut in view of Walsh in the manner set forth above for at least the purpose of using the screen printing method as an alternative method of coating and/or encapsulating device parts in a pressure-less way (Gmunder ¶ 0008, ¶ 0073) to avoid mechanical stress and to improve device reliability (Gmunder ¶ 0004).
Regarding claim 40, the process of manufacturing a device according to claim 26 further comprising printing (Fuergut ¶ 0029, ¶ 0043: printing) the composite coating material on one or more of the device parts to form a printed coating (55 is a coating of device layers) on one or more of the device parts and further teaches jet coating (¶ 0029) as an alternative coating method for encapsulating the device parts.
However, Fuergut in view of Walsh does not specifically teach the printed coating to be screen printed coating.
Gmunder, in the same field of invention, teaches a printed coating to be screen printed coating (¶ 0008) together with jet coating (¶ 0008) as methods for encapsulating device parts (¶ 0008, ¶ 0073).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Gmunder into the device of Fuergut in view of Walsh to use a screen printing the composite coating material on one or more device parts to form a screen printed coating on the one or more device parts in a process of manufacturing a device at least consisting of providing the device parts, arranging the composite coating material arranged on one or more of the device parts, and arranging a molding compound arranged on and/or around one or more of the device parts. The ordinary artisan would have been motivated to modify Fuergut in view of Walsh in the manner set forth above for at least the purpose of using the screen printing method as an alternative method of coating and/or encapsulating device parts in a pressure-less way (Gmunder ¶ 0008, ¶ 0073) to avoid mechanical stress and to improve device reliability (Gmunder ¶ 0004).
Claim(s) 19-21 and 44-46 are rejected under 35 U.S.C. 103 as being unpatentable over Fuergut (US 20170287880 A1) in view of Walsh (US 20210130573 A1), as applied to claim 1 and/or 26 above, and further in view of Zhu (US 20200163255 A1).
Regarding claim 19, Fuergut in view of Walsh teaches the device according to claim 1 wherein the ceramic particles comprise hexagonal boron-nitride (h-BN) particles (Walsh ¶ 0016). However, Fuergut in view of Walsh does not teach: wherein the hexagonal boron-nitride (h-BN) particles comprise a surface functionalization.
Zhu, in the same field of invention, teaches a device (¶ 0004) wherein the hexagonal boron-nitride (h-BN) particles (¶ 0008, ¶ 0013, ¶ 0028: non-conductive polymer coating comprises 0.2 wt % to 5 wt % boron nitride fillers) comprise a surface functionalization (¶ 0008, ¶ 0014, ¶ 0034).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Zhu into the device of Fuergut in view of Walsh to provide hexagonal boron-nitride particles comprising a surface functionalization in a device at least comprising of device parts, a composite coating material arranged on one or more of the device parts, and a molding compound arranged on and/or around one or more of the device parts, with the composite coating material comprising of a polymer matrix and/or incorporating ceramic particles, and with the ceramic particles being the above-mentioned hexagonal boron-nitride particles. The ordinary artisan would have been motivated to modify Fuergut in view of Walsh in the manner set forth above for at least the purpose of improving the functionality of the composite coating material to have better mechanical elasticity (Zhu ¶ 0005) and thermal conductivity (¶ 0045, ¶ 0059) for optical transparent composite coating materials (Zhu ¶ 0006) and for the further purpose of using this composite coating materials as insulators in electronic devices that require reduced sizes and increased performance (Zhu ¶ 0004).
Regarding claim 20, Fuergut in view of Walsh teaches the device according to claim 1 wherein the ceramic particles comprise hexagonal boron-nitride (h-BN) particles (Walsh ¶ 0016). However, Fuergut in view of Walsh does not teach: wherein the hexagonal boron-nitride (h-BN) particles are grafted to the polymer matrix.
Zhu, in the same field of invention, teaches a device (¶ 0004) wherein the hexagonal boron-nitride (h-BN) particles (¶ 0008, ¶ 0013, ¶ 0028: non-conductive polymer coating comprises 0.2 wt % to 5 wt % boron nitride fillers) are grafted to the polymer matrix (¶ 0034 using plain meaning, the h-BN particles are grafted, i.e., united with, the polymer matrix due to the functionalization that formed hydrogen or ionic bonds to form an interpenetrating network).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Zhu into the device of Fuergut in view of Walsh to provide hexagonal boron-nitride particles that are grafted to a polymer matrix in a device at least comprising of device parts, a composite coating material arranged on one or more of the device parts, and a molding compound arranged on and/or around one or more of the device parts, with the composite coating material comprising of the polymer matrix and/or incorporating ceramic particles, and with the ceramic particles being the above-mentioned hexagonal boron-nitride particles. The ordinary artisan would have been motivated to modify Fuergut in view of Walsh in the manner set forth above for at least the purpose of improving the functionality of the composite coating material to have better mechanical elasticity (Zhu ¶ 0005) and thermal conductivity (¶ 0045, ¶ 0059) for optical transparent composite coating materials (Zhu ¶ 0006) and for the further purpose of using this composite coating materials as insulators in electronic devices that require reduced sizes and increased performance (Zhu ¶ 0004).
Regarding claim 21, Fuergut in view of Walsh teaches the device according to claim 1 wherein the ceramic particles comprise hexagonal boron-nitride (h-BN) particles (Walsh ¶ 0016). However, Fuergut in view of Walsh does not teach: wherein the hexagonal boron-nitride (h-BN) particles comprise surface functionalization and the hexagonal boron-nitride (h-BN) particles are grafted to the polymer matrix.
Zhu, in the same field of invention, teaches a device (¶ 0004) wherein the hexagonal boron-nitride (h-BN) particles (¶ 0008, ¶ 0013, ¶ 0028: non-conductive polymer coating comprises 0.2 wt % to 5 wt % boron nitride fillers) comprise surface functionalization (¶ 0008, ¶ 0014, ¶ 0034) and the hexagonal boron-nitride (h-BN) particles are grafted to the polymer matrix (¶ 0034 using plain meaning, the h-BN particles are grafted, i.e., united with, the polymer matrix due to the functionalization that formed hydrogen or ionic bonds to form an interpenetrating network).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Zhu into the device of Fuergut in view of Walsh to provide hexagonal boron-nitride particles comprising a surface functionalization and are grafted to a polymer matrix in a device at least comprising of device parts, a composite coating material arranged on one or more of the device parts, and a molding compound arranged on and/or around one or more of the device parts, with the composite coating material comprising of the polymer matrix and/or incorporating ceramic particles, and with the ceramic particles being the above-mentioned hexagonal boron-nitride particles. The ordinary artisan would have been motivated to modify Fuergut in view of Walsh in the manner set forth above for at least the purpose of improving the functionality of the composite coating material to have better mechanical elasticity (Zhu ¶ 0005) and thermal conductivity (¶ 0045, ¶ 0059) for optical transparent composite coating materials (Zhu ¶ 0006) and for the further purpose of using this composite coating materials as insulators in electronic devices that require reduced sizes and increased performance (Zhu ¶ 0004).
Regarding claim 44, Fuergut in view of Walsh teaches the process of manufacturing a device according to claim 26 wherein the ceramic particles comprise hexagonal boron-nitride (h-BN) particles (Walsh ¶ 0016). However, Fuergut in view of Walsh does not teach the process further comprising processing the hexagonal boron-nitride (h-BN) particles to form a surface functionalization.
Zhu, in the same field of invention, teaches a process of manufacturing a device (¶ 0004) comprising processing the hexagonal boron-nitride (h-BN) particles (¶ 0008, ¶ 0013, ¶ 0028: non-conductive polymer coating comprises 0.2 wt % to 5 wt % boron nitride fillers) to form a surface functionalization (¶ 0008, ¶ 0014, ¶ 0034).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Zhu into the process of Fuergut in view of Walsh to process hexagonal boron-nitride particles to form a surface functionalization in a process of manufacturing a device at least comprising of providing device parts, arranging a composite coating material arranged on one or more of the device parts, and arranging a molding compound arranged on and/or around one or more of the device parts, with the composite coating material comprising of a polymer matrix and/or incorporating ceramic particles, and with the ceramic particles being the above-mentioned hexagonal boron-nitride particles. The ordinary artisan would have been motivated to modify Fuergut in view of Walsh in the manner set forth above for at least the purpose of improving the functionality of the composite coating material to have better mechanical elasticity (Zhu ¶ 0005) and thermal conductivity (¶ 0045, ¶ 0059) for optical transparent composite coating materials (Zhu ¶ 0006) and for the further purpose of using this composite coating materials as insulators in electronic devices that require reduced sizes and increased performance (Zhu ¶ 0004).
Regarding claim 45, Fuergut in view of Walsh teaches the process of manufacturing a device according to claim 26 wherein the ceramic particles comprise hexagonal boron-nitride (h-BN) particles (Walsh ¶ 0016). However, Fuergut in view of Walsh does not teach the process further comprising grafting the hexagonal boron-nitride (h-BN) particles to the polymer matrix.
Zhu, in the same field of invention, teaches a process of manufacturing a device (¶ 0004) comprising grafting (¶ 0034: using plain meaning, the h-BN particles are grafted, i.e., united with, the polymer matrix due to the functionalization that formed hydrogen or ionic bonds to form an interpenetrating network) the hexagonal boron-nitride (h-BN) particles (¶ 0008, ¶ 0013, ¶ 0028: non-conductive polymer coating comprises 0.2 wt % to 5 wt % boron nitride fillers) to the polymer matrix (¶ 0028, ¶ 0034, ¶ 0036).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Zhu into the process of Fuergut in view of Walsh to graft hexagonal boron-nitride particles to a polymer matrix in a process of manufacturing a device at least comprising of providing device parts, arranging a composite coating material arranged on one or more of the device parts, and arranging a molding compound arranged on and/or around one or more of the device parts, with the composite coating material comprising of a polymer matrix and/or incorporating ceramic particles, and with the ceramic particles being the above-mentioned hexagonal boron-nitride particles. The ordinary artisan would have been motivated to modify Fuergut in view of Walsh in the manner set forth above for at least the purpose of improving the functionality of the composite coating material to have better mechanical elasticity (Zhu ¶ 0005) and thermal conductivity (¶ 0045, ¶ 0059) for optical transparent composite coating materials (Zhu ¶ 0006) and for the further purpose of using this composite coating materials as insulators in electronic devices that require reduced sizes and increased performance (Zhu ¶ 0004).
Regarding claim 46, Fuergut in view of Walsh the process of manufacturing a device according to claim 26 wherein the ceramic particles comprise hexagonal boron-nitride (h-BN) particles (Walsh ¶ 0016). However, Fuergut in view of Walsh does not teach the process further comprising:
processing the hexagonal boron-nitride (h-BN) particles to form a surface functionalization; and
grafting the hexagonal boron-nitride (h-BN) particles to the polymer matrix.
Zhu, in the same field of invention, teaches a process of manufacturing a device (¶ 0004) comprising:
processing the hexagonal boron-nitride (h-BN) particles (¶ 0008, ¶ 0013, ¶ 0028: non-conductive polymer coating comprises 0.2 wt % to 5 wt % boron nitride fillers) to form a surface functionalization (¶ 0008, ¶ 0014, ¶ 0034); and
grafting (¶ 0034: using plain meaning, the h-BN particles are grafted, i.e., united with, the polymer matrix due to the functionalization that formed hydrogen or ionic bonds to form an interpenetrating network) the hexagonal boron-nitride (h-BN) particles to the polymer matrix (¶ 0028, ¶ 0034, ¶ 0036).
A person of ordinary skill in the art, prior to the effective date of the claimed invention, will find it obvious to combine the teachings of Zhu into the process of Fuergut in view of Walsh to process hexagonal boron-nitride particles to form a surface functionalization and to graft the hexagonal boron-nitride particles to a polymer matrix in a process of manufacturing a device at least comprising of providing device parts, arranging a composite coating material arranged on one or more of the device parts, and arranging a molding compound arranged on and/or around one or more of the device parts, with the composite coating material comprising of a polymer matrix and/or incorporating ceramic particles, and with the ceramic particles being the above-mentioned hexagonal boron-nitride particles. The ordinary artisan would have been motivated to modify Fuergut in view of Walsh in the manner set forth above for at least the purpose of improving the functionality of the composite coating material to have better mechanical elasticity (Zhu ¶ 0005) and thermal conductivity (¶ 0045, ¶ 0059) for optical transparent composite coating materials (Zhu ¶ 0006) and for the further purpose of using this composite coating materials as insulators in electronic devices that require reduced sizes and increased performance (Zhu ¶ 0004).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1- 3, 5-8, and 23-25 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-6, 12, 22, and 24-28 of copending Application No. 18/187,804 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because:
Regarding claim 1 of the instant application, the copending application also claims a
device comprising:
device parts (see claim 1 of copending application);
a composite coating material arranged on one or more of the device parts (see claims 1 and 22 of copending application); and
a molding compound arranged on and/or around one or more of the device parts (see claim 2 of the copending application),
wherein the composite coating material comprises a polymer matrix including and/or incorporating ceramic particles (see claim 25 of copending application).
A person of ordinary skill in the art would find it obvious to construe the diamond-like based material coating arranged on one or more of the devices in claim 1 of the copending application together with the second coating layer implemented with the diamond-like based material coating in claims 22 and 25 of the copending application together form a composite coating material that has the polymer matrix and/or ceramic particles as claimed in the instant application.
Regarding claim 2, the device according to claim 1 wherein the molding compound is further arranged on one or more of the device parts implemented without the composite coating material coated thereon (see claim 3 of the copending application).
Regarding claim 3, the device according to claim 1 wherein the device parts comprise one or more of a first lead, a second lead, at least one device component, a mount, at least one interconnect, a component attach, and/or at least one connection (see claim 4 of the copending application).
Regarding claim 5, the device according to claim 1 wherein the composite coating material is arranged on all exposed surfaces of one or more of the device parts (see claim 5 of the copending application).
Regarding claim 6, the device according to claim 1 wherein the composite coating material is arranged on surfaces of one or more of the device parts that contact the molding compound (see claim 6 of the copending application).
Regarding claim 7, the device according to claim 1 wherein the composite coating material is formulated and/or configured to reduce failures of the device parts associated with interfacial stress exhibited during high temperature operation of the device (see claim 12 of the copending application).
Regarding claim 8, the device according to claim 1 wherein the polymer matrix comprises a polyimide, a silicon, a fluoropolymer, and/or copolymers of a polyimide- silicon (see claim 24 of the copending application).
Regarding claim 23, the device according to claim 3 wherein the at least one device component comprises one or more active devices, passive devices, dies, chips, and/or transistors (see claim 26 of the copending application).
Regarding claim 24, the device according to claim 3 wherein the at least one interconnect comprises one or more wires, wire bonds, and/or leads (see claim 27 of the copending application).
Regarding claim 25, the device according to claim 1 wherein the device comprises a package, a power device package, and/or a power module (see claim 28 of the copending application).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
THIS ACTION IS MADE FINAL. 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 DOUGLAS YAP whose telephone number is (703)756-1946. The examiner can normally be reached Monday - Friday 8:00 AM - 5:00 PM ET.
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, Zandra Smith can be reached at (571) 272-2429. 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.
/DOUGLAS YAP/Assistant Examiner, Art Unit 2899
/ZANDRA V SMITH/Supervisory Patent Examiner, Art Unit 2899