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 made in Amendment
Applicant’s arguments, see “Applicant Arguments/Remarks Made in an Amendment” filed on 12/10/2025, with respect to Claims 10, 12, 13, 15, and 21 have been fully considered and are persuasive. Applicant has canceled claims and therefor the rejections of said claims are no longer proper, so the rejections of claims 10, 12, 13, 15, and 21 are hereby withdrawn.
Applicant’s arguments, see “Applicant Arguments/Remarks Made in an Amendment” for the 35 USC § 112(a) rejections of claims 1, 5, 15, and 16 have been addressed by applicant through amendment and the cancelation of claim 15, and as such the 35 USC § 112(a) rejections of claims 1, 5, 15, and 16 are hereby withdrawn.
Furthermore, the claim objections to claims 1 and 22 have been addressed in amendment and therefor the objections to claims 1 and 22 are withdrawn.
Applicant’s arguments, see “Applicant Arguments/Remarks Made in an Amendment” filed on 12/10/2025, with respect to the rejection(s) of claim(s) 1, 20, and 22 under 35 U.S.C. 102(a)(1) by 1 or more of Tsunoda (EP 1121009 A2), Keil (DE 102014211698 A1), Lin (US 20160247735 A1), Obiraki (US 20100013086 A1) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made as necessitated by the amendment, either by an alternate embodiment by the same reference, an obvious combination, or a finding of allowable subject matter.
Claim Rejections - 35 USC § 112
Claim 22 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 22 recites the limitation "the annular portion" in line 15. There is insufficient antecedent basis for this limitation in the claim. There has yet to be any annular portion so it is unclear as to what “the” annular portion is. In an effort for compact prosecution, the rest of the office action will assume that “the annular portion” is instead a new limitation called “an annular portion”.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by European Patent Application by Tsunoda et al. (EP 1121009 A2, Tsunoda).
Regarding Claim 1, Tsunoda discloses a power module, comprising:
a housing (16) made of a packaging mass (16 - See Para. 19, where resin is used to both make the housing and the packing material inside the housing) having a main surface (Top surface of housing 16 in as shown in Fig. 1, 10) and lateral surfaces (Side surface of housing 16 in as shown in Fig. 1);
a carrying substrate (10), inside the housing, the carrying substrate having a plurality of connection regions of conductive material (Col. 4, Line 7-8, where the connection regions are made of coper);
an electronic component (13) inside the housing, the electronic component is attached to a first connection region (Any of 12) of the plurality of connection regions (Fig. 1B, where the electronic component 13 is attached to first connection region 12);
an electrical connector (15b) coupled to at least one of the following of the electronic component and a second connection region of the plurality of connection regions (Fig. 10 where the electrical connector 15b is attached to the connection region 12), the electrical connector extends towards the main surface of the housing (Fig. 1A and 1C where the electrical connectors 15 extend to and through the main surface [top in figures] of the housing), the electrical connector is transverse to the main face of the housing (Fig. 1C, where the connectors appear to be transversely extending through the first main surface), the electrical connector is accessible from the outside of the housing (Fig. 1C, where the connector 15 is protruding through the housing and therefore accessible from the outside of the housing), the electrical connector includes an enlarged head at an upper end that extends outwards from the main surface of the housing (Fig. 10, where the upper head is the stress relaxing portion 15d) and a lower end that is opposite to the upper end (Where the lower head is the portion that is attached to connection region 12), the electrical connector includes a groove that extends into the enlarged head of the electrical connector, and the groove is filled with the packaging mass to interlock the electrical connector within the packaging mass (Para. 63, and Fig. 10, Where the relaxed portion 15d is bent back and forth making several grooves and some of the grooves are buried within the packing mass 16).
Regarding Claim 2, Tsunoda discloses the power module according to claim 1, wherein:
the packaging mass of is an electrically insulating material (16 - See Para. 19, where resin is used to both make the housing and the packing material inside the housing);
and the electrical connector further includes a pillar element coupled to the enlarged head, and the pillar element being embedded in the packaging mass (Fig. 10, where the pillar element is the large vertical portion from electrical connector 15b that connects the part of the electrical connector that is in contact with the contact with connection portion and the enlarged head at the top of 15b).
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.
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.
Claims 1-9, 11, 16, 27-29 are rejected under 35 U.S.C. 103 as being unpatentable as obvious over Keil et al. (DE 102014211698 A1, Keil) in view Tsunoda.
Regarding Claim 1, Keil discloses a power module (1), comprising:
a housing (24), made of a packaging mass (having a main surface (top surface of Fig. 1) and lateral surfaces (Side surfaces lateral to top surface in Fig. 1);
a carrying substrate (2), inside the housing (Fig. 1, shows the carrying substrate 2 inside the housing), the carrying substrate plurality of connection regions (4, 5) of conductive material (In attached machine translation, Page 12, line 5, where layer 4 is copper);
an electronic component (7 - semiconductor) inside the housing, the electronic component is attached to a first connection region of the plurality of connection regions (Fig. 1, where the electronic component 7 is in the housing, and attached to connection region 4, where connection region 4 can be called the first connection region); and
an electrical connector (11 or 12) coupled to at least one of the following of the electronic component and a second connection region of the plurality of connection regions (Fig. 1, where electrical connector 12 is connected to second connection region 5), the electrical connector extends towards the main surface of the housing, the electrical connector is transverse to the main surface of the housing, the electrical connector is accessible from the outside of the housing (Fig. 1/2 where the electrical connector 11 or 12 extend toward the main surface [top surface in figures] of the housing 24, where the extension is at a transverse direction to the main surface and because it penetrates the housing it is accessible from outside the housing), the electrical connector includes a groove that extends into the enlarged head of the electrical connector (Fig. 19 where the enlarged head at curve 19 appears to have a groove that is within the packaging mass).
However, Keil fails to disclose where the electrical connector includes an enlarged head at an upper end that extends outwards from the main surface of the housing, specifically, the enlarged head of Keil fails to protrude outward from the main surface as it sits flush with the surface.
In a similar field of endeavor, Tsunoda a power module including a housing (Tsunoda: 16), having a main surface (Tsunoda: Top surface of housing 16 in as shown in Fig. 1, 10), carrying substrate (10), electronic component (13), and an electrical connector electrical connector (15) where the electrical connector is coupled to the connection region (any of 12) and extending outward from the main surface of the housing.
In view of the disclosure of Tsunoda, it would have been obvious for a person of ordinary skill in the art to apply the disclosure of Tsunoda to Keil at the time the instant application was filed to incorporate having the electrical connector from Keil to protrude outward from the main surface as in Tsunoda. Accordingly, one would have been motivated to make the modification because one of ordinary skill in the art would understand the advantages that having the electrical connectors protrude from the housing allow for “circuit to be arranged with flexibility (Tsunoda: Para. 22).
Regarding Claim 2, Keil and Tsunoda disclose the power module according to claim 1, wherein the packaging mass is an electrically insulating material;
and the electrical connector further includes a pillar element (11/12, the sleeve can be construed as a pillar element) coupled to the enlarged head (19), and the pillar element being embedded in the packaging mass (Fig. 1, where pillar element is embedded in the packing mass of the housing).
Regarding Claim 3, Keil and Tsunoda discloses the power module according to claim 2, and further wherein the pillar element has a solid cylindrical shape (Keith calls sleeve 12 a “cylindrical sleeve wall”)
Regarding Claim 4, Keil and Tsunoda discloses the power module according to claim 3, and further wherein the electrical connector further comprises a rod-shaped element soldered to the enlarged head (Keil: Solder 18’ is soldered to both rod 21 and enlarged head 19).
Regarding Claim 5, Keil and Tsunoda disclose the discloses the power module according to claim 2, wherein the electrical connector further comprises a pin holder (18) having by an axially holed cylindrical body (32), and provided with a flange end (19), the flange end being attached to the enlarged head and extending away from the main surface of the housing towards the outside thereof (It is extending diagonally at the amin surface of the housing), in continuation of the enlarged head (It is still part of the pillar element).
Regarding Claim 6, Keil and Tsunoda discloses the power module according to claim 5, and further discloses the limitation “press-fit” is a process, and the claim is directed to a product. It has been held that a product-by-process claim is directed to the product per se, regardless of how the product is actually made. In re Thorpe, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein make it clear that it is the final product which must determine patentability in a product-by-process claim, and not the process by which it is made. Further, an old or obvious product produced by a new method is not patentable as a product, whether claimed in a product-by-process claim or not. As stated in In re Thorpe, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 162 USPQ 145 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26, USPQ 57, 61 (2d. Cir 1935) Perdue Pharma v. Epic Pharma, App. No. 2014-1294 (Fed. Cir. 2016);
In the instant case, so long as the final product has rod-shaped element in the axial hole, it doesn’t matter if it was press fit unless there is more structural language claimed regarding pressed fit.
Keil discloses the power module according to claim 5, and further wherein the electrical connector further comprises a rod-shaped element (21) in pin holder (Fig. 2, where rod 21 is in the pin holder 18).
Regarding Claim 7, Keil and Tsunoda discloses the power module according to claim 2, and further wherein the pillar element has a cylindrical shape (Page. 11, Para 5, “The sleeve has a round cross section in the hollow cylindrical design”, where sleeve is the pillar element) and the electrical connector further includes an axial hole that extends through the enlarged head and into the pillar element. (Fig. 1, where the pillar element has an axial hole).
Regarding Claim 8, The limitation “press-fit or screwed” is a process, and the claim is directed to a product. It has been held that a product-by-process claim is directed to the product per se, regardless of how the product is actually made. In re Thorpe, 227 USPQ 964 (CAFC, 1985) and the related case law cited therein make it clear that it is the final product which must determine patentability in a product-by-process claim, and not the process by which it is made. Further, an old or obvious product produced by a new method is not patentable as a product, whether claimed in a product-by-process claim or not. As stated in In re Thorpe, even though product-by-process claims are limited by and defined by the process, determination of patentability is based on the product itself. In re Brown, 459 F.2d 531, 535, 173 USPQ 685, 688 (CCPA 1972); In re Pilkington, 411 F.2d 1345, 162 USPQ 145 (CCPA 1969); Buono v. Yankee Maid Dress Corp., 77 F.2d 274, 279, 26, USPQ 57, 61 (2d. Cir 1935) Perdue Pharma v. Epic Pharma, App. No. 2014-1294 (Fed. Cir. 2016);
In the instant case, so long as the final product has rod-shaped element in the axial hole, it doesn’t matter if it was press fit or screwed unless there is more structural language claimed regarding pressed fit or screwed such as for example the introduction of threads of a screw/screw receiver.
Keil and Tsunoda discloses the power module according to claim 7, and further wherein the electrical connector further comprises a rod-shaped element (21), extending in prosecution of the pillar element (Fig. 2, where connector has the rod-shaped element that is continuing the pillar element).
Regarding Claim 9, Keil and Tsunoda discloses the power module according to claim 2, and further wherein the electrical connector further comprises a pin portion monolithic with the enlarged head, the pin portion being rod-shaped and extending externally to the housing in prosecution of the pillar element (Keil: Contact pin 20 is soldered 18 to the enlarge head 19 making a secure connection and one that could be considered monolithic at least in that it is now intrinsically indivisible as a single piece).
Regarding Claim 11, Keil and Tsunoda disclose the power module according to claim 2, wherein the groove is closer to the a respective surface of the enlarged head exposed from the packaging mass than an opposite end of the pillar element coupled to the at least one of the following of the electronic component and the second connection region of the plurality of connection regions (Keil: Fig. 2, The groove is closer to the exposed part of the enlarged head rather than the other end of the pillar).
Regarding Claim 16, Keil and Tsunoda disclose the power module according to claim 1, and further wherein the electronic component includes a first electronic component (Keil: 4) and the housing houses a second electronic component (Keil: 5), the power module further comprising electrical leads (8) extending from or on the lateral surfaces of the housing and electrically coupled to external connection regions of the carrying substrate and electrically coupled to the first or the second electronic component (Keil: Fig. 2, where the electrical lead extends from the lateral surface of the housing and is coupled to the first electrical component 4).
Regarding Claim 27, Keil and Tsunoda disclose the power module of claim 1, further comprising electrical leads (8) extending from or on the lateral surfaces of the housing and electrically coupled to external connection regions of the carrying substrate and electrically coupled to the first or the second electronic component (Keil: Fig. 2, where the electrical lead extends from the lateral surface of the housing and is coupled to the first electrical component 4).
Regarding Claim 28, Keil and Tsunoda disclose the power module of claim 1, wherein the electrical connector further comprises a pin portion monolithic with the enlarged head, the pin portion being rod-shaped and extending externally to the housing in prosecution of the pillar element.
Regarding Claim 29, Keil and Tsunoda disclose the power module of claim 1, and further wherein the electrical connector further comprises a pin holder having an axially holed cylindrical body and provided with a flange end, the flange end being attached to the enlarged head and extending away from the main surface of the housing towards the outside thereof, in continuation of the enlarged head.
Claims 20 and 26 are rejected under 35 U.S.C. 103 as being unpatentable as obvious over United States Patent Application Publication by Lin et al. (US 20160247735 A1; Lin) in view of United States Patent Application Publication by Tschirbs et al. (US 20090213553 A1; Tschirbs).
Regarding Claim 20, Lin discloses a device (2), comprising:
a shell (64 – Top being 66 and bottom being 78) including a first internal surface (bottom surface of top 66 of housing 64 in Fig. 6) and a second internal surface opposite to the first internal surface (Top surface of bottom baseplate 78 of housing 64 in Fig. 6), the first and second internal faces face each other (Fig. 6, where the surfaces face each other); and a sidewall that is transverse to the first internal surface and the second internal surface (Fig. 6, part of shell 66 on either side within internal cavity 68);
(68);
a carrying substrate (6) within cavity (Fig. 6, where the cavity 68 includes carrying substrates 6), the carrying substrate includes a plurality of connection regions (12) of conductive material (Para. 43, where layers 12 are copper layers);
an electronic component (4) inside the cavity (Fig. 6, where the cavity 68 includes electronic component 4), the electronic component is attached to a first connection region of the plurality of connection regions (Fig. 6, where electronic component 4 is on one of the connection regions 12, we will call first connection region); and
an electrical connector (86) is coupled to the at least one of the following of the electronic component and a second connection region of the plurality of connection regions (Fig. 6, where electrical connector is connected to a second connection region of the connection regions), the electrical connector extends towards the first internal surface (Fig. 6, where the connector extends and goes through the first internal surface), the electrical connector is transverse to the first and second internal surfaces (Fig. 6, where the electrical connector 86 extends in a direction that is transverse to the first and second internal surfaces), the electrical connector is accessible from an outside of the shell (Fig. 6, where the electrical connector 86 goes through the shell and accessible from outside the shell), and the electrical connector including a groove that extends into the electrical connector (Fig. 6, where the center of electrical connector 86 is bent and forms a groove at the bend).
However, Lin fails to disclose a gel material within the cavity.
If a similar field of endevor, Tschirbs discloses a device (230) that has a housing with a first internal surface (bottom surface of top 252 of housing in Fig. 11) and a second internal surface opposite to the first internal surface (Top surface of bottom baseplate 238 of housing in Fig.11) and a cavity (240 in fig. 11). Tschirbs discloses a gel material (23/254, Para. 91) within the cavity, the gel material covers the carrying substrate (Tschirbs: Fig. 11, where gel compound 254 is covering the substrate), the gel material is on a side surface of the electrical connector (Tschirbs: Fig. 11, the electrical connector 234 has gel 254 on its side surface), and the gel material includes a surface that faces towards the first internal surface and is spaced apart from the first internal surface; and a space is present between the first internal surface of the shell and the surface of the gel material (Tschirbs: Fig. 11, The top of gel compound 254 is facing the first internal surface and there is a space 240 above the gel and before the first main surface where the gel is not present).
In view of the disclosure of Tschirbs, it would have been obvious for a person of ordinary skill in the art to apply the disclosure of Tschirbs to Lin at the time the instant application was filed to incorporate a gel within the cavity that covers the electronical components and part of the electrical connector but still leaves a space within the cavity between the gel and the first inner surface. Accordingly, one would have been motivated to make the modification because one of ordinary skill in the art would understand the advantages that using the compound reduces the detrimental effects that the housing might cause to the device (Tschirbs: Para 92).
However, the combination of Lin and Tschirbs fail to disclose where a lead extends through the sidewall of the shell and extends into the gel material, and the lead is electrically coupled to a third connection region of the plurality of connection regions
If a similar field of endeavor, Keil discloses a similar device (1) where there is a filled housing (Keil: 24) with first surface being the top and side sidewall being the left side in Fig. 1, a carrying substrate (2) inside the housing, an electronic component (7), a connection region (4) of the plurality of connection regions (4/5) and a lead that extends through the sidewall of the housing and the lead is electrically coupled to a third connection region of the plurality of connection regions.
In view of the disclosure of Keil, it would have been obvious for a person of ordinary skill in the art to apply the disclosure of Keil to the combination of Tschirbs and Lin at the time the instant application was filed to incorporate a lead penetrating the shell at a sidewall so that the lead as in Keil extends through the sidewall and extends through the gel material as disclosed by Tschirbs and that the lead is electrically coupled to a third connection region of the plurality of connection regions. Accordingly, one would have been motivated to make the modification because one of ordinary skill in the art would understand the advantages that having additional electrical connections outside the housing have (Keil, Page 12, Para. 8, of the provided machine translation).
Regarding Claim 26, the obvious combination of Lin, Tschirbs, and Keil discloses the device of claim 20, wherein the gel material fills the groove. (The obvious combination would have gel where the groove is which would fill the groove).
Allowable Subject Matter
Claim 22, and 24-25 allowed, claims 14 and 30 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:
Regarding Claim 22, Keil discloses a device (1), comprising:
a packaging mass (24) having a first surface (top surface packing mass 24 of Fig. 1), a second surface opposite to the first surface (the surface at the of the device in Fig. 1), and lateral surfaces transverse to the first surface and the second surface (Side surfaces lateral to top and second surface in Fig. 1);
a conductive layer in the packaging mass, the conductive layer (6) having a third surface and a fourth surface opposite to the third surface, the third surface of the conductive layer is exposed at the second surface of the packaging mass (Fig. 1, where conductive layer has a third surface at the bottom exposed from the packing mass 24 and a fourth surface above and opposite third surface);
an intermediate layer (3) on the fourth surface of the conductive layer (Fig. 1, where intermediate layer 3 is above and on fourth layer of the conductive layer 6);
a plurality of connection regions (4, 5) on the intermediate layer (Fig. 1, where the connection regions 4 and 5 are on intermediate layer 3);
a pillar (11/12, the sleeve can be construed as a pillar element) coupled to a first connection region of the plurality of connection regions (Fig. 1, where pillar 12 is connected to first connection region 5), the pillar extends from the first connection region to the first surface of the packaging mass (Fig. 1 where the pillar 12 extend toward the first surface [top surface in figures] of the packing mass 24), and the pillar includes an end exposed from the first surface of the packaging mass (Fig. 1, where pillar 12 extends to and through the main surface, where because it is fully through, it has an exposed surface at the first surface of the packing mass); and;
a lead (8) that is coupled to a second connection region (4) of the plurality of connection regions, the lead extends outward from a first lateral surface of the lateral surfaces (Fig. 1, where lead 8, is connected to the second connection region 4 by connection line 9 and chip 7, and lead 8 extends laterally and outward from the packing mass at a first lateral surface).
However, Keil fails to disclose a protrusion of the packaging mass protrudes outward from the first surface of the packaging mass and is surrounded by a recess that extends into the first surface of the packaging mass, the protrusion includes a third surface that faces away from the first surface of the packaging mass, the annular portion and the recess extend around the end of the pillar exposed from the packaging mass; and wherein the end of the pillar is exposed from the third surface of the protrusion of the packaging mass.
There also fails to be another reference in the prior art either anticipating or as an obvious combination to teach all of the limitations of claim 22. For this reason examiner believes that claim 22 is allowable as well as claims 24-25 which depend on claim 22. For a similar reason, claims 14 and 30 are also found to contain allowable subject matter.
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 DANIEL J HIBBERT whose telephone number is (703)756-1562. The examiner can normally be reached Monday - Friday 8am-5pm EST.
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/DANIEL J HIBBERT/Examiner, Art Unit 2899
/ZANDRA V SMITH/Supervisory Patent Examiner, Art Unit 2899