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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7 April 2026 has been entered.
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 1-3, and 5-8 are rejected under 35 U.S.C. 103 as being unpatentable over Shimizu et al (US Patent 6201696B1) in view of Hori et al (US Publication 20160254255).
Regarding claim 1, Shimizu teaches a power semiconductor device which includes
an insulating substrate (Fig. 9, 2, column 18 lines 1-10, AlN or DBC),
a semiconductor element provided on a front surface of the insulating substrate (Fig. 9, 22), and
a gel-like first insulating material that seals the semiconductor element (Fig. 9, 91 – mislabeled as ‘9’ in Fig. 9, column 20 lines 55-60),
the device comprising a plate-shaped terminal for electrically connecting the semiconductor element and external equipment (Fig. 9, 71),
wherein a [[entire]] portion of the plate-shaped terminal surrounded by the first insulating material is covered with a second insulating material having a higher hardness than the first insulating material (Fig. 9, portion of 71 covered by 16 and surrounded by 91, resin harder than silicone gel, column 21 lines 2-5, column 2 line 7), wherein the gel-like first insulating material is in contact with a part of the semiconductor element and a part of the insulating substrate (Fig. 9, 91 in contact with part of 22 and 2).
Shimizu does not specifically teach wherein a bonded portion between the semiconductor element and an electrode of the insulating substrate is covered with the second insulating material and the entire portion of the plate shaped terminal surrounded by the first insulating material is covered with a second insulating material.
Hori teaches wherein a bonded portion between the semiconductor element and an electrode of the insulating substrate is entirely covered with the second insulating material (Fig. 1, bonded portion of 9a between 5 and 3 entirely covered with 13)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Shimizu to include a bonded portion between the semiconductor element and an electrode of the insulating substrate is covered with the second insulating material (so fully covering the electrode) as taught by Hori in order to improve the reliability and operability of the device.
Regarding claim 2, Shimizu as modified teaches the limitations of claim 1 upon which claim 2 depends.
Shimizu does not specifically teach wherein one end of the plate-shaped terminal is bonded to an electrode of the front surface of the insulating substrate.
Hori teaches wherein one end of the plate-shaped terminal is bonded to an electrode of the front surface of the insulating substrate (Fig. 1, 9a bonded to top/front surface of 3).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application for Shimizu to include the terminal bonded to an electrode of the front surface of the insulating substrate as taught by Hori in order to improve the mechanical robustness of the device.
Regarding claim 3, Shimizu as modified teaches the limitations of claim 1 upon which claim 3 depends.
Shimizu teaches further comprising a case that houses the insulating substrate, the semiconductor element, and the first insulating material (Fig. 9, case 6 housing 2, 22, and 91), wherein the plate-shaped terminal is provided in the case (Fig. 9, 71 in 8), and is electrically connected via a metal wire to an electrode of the front surface of the insulating substrate or an electrode of the semiconductor element (Fig. 9, wire 31 electrically connecting 71 to 22).
Regarding claim 5, Shimizu as modified teaches the limitations of claim 1 upon which claim 5 depends.
Shimizu teaches wherein the semiconductor element and the electrode of the insulating substrate are bonded by a sintered metal (Fig. 9, conductive film 1, column 18 lines 1-10).
Furthermore, the present claim is drawn to a device, thus the method of sintering does not patentably distinguish the claimed invention from that of the invention of Simizu.
It should be noted that a "product by process claim" is directed to the product per se, no matter how actually made, In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also In re Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ 324; In re Avery, 186 USPQ 161; In re Wertheim, 191 USPQ 90 (209 USPQ 554 does not deal with this issue); and In re Marosi et al., 218 USPQ 289, all of which make it clear that it is the patentability of the final product per se which must be determined in a "product by process" claim, and not the patentability of the process, and that an old or obvious product produced by a new method is not patentable as a product, whether claimed in " product by process" claims or not. Note that applicant has the burden of proof in such cases, as the above caselaw makes clear. See also MPEP 2113 [R-1].
Regarding claim 6, Shimizu as modified teaches the limitations of claim 1 upon which claim 6 depends.
Shimizu teaches wherein the second insulating material is at least one of a polyamideimide resin, an epoxy resin, a fluororesin, an acrylic resin, and a silicone resin (Fig. 9, 16, column 21 lines 2-5, resin).
Regarding claim 7, Shimizu as modified teaches the limitations of claim 1 upon which claim 7 depends.
Shimizu teaches wherein the second insulating material is a resin, and is in contact with the first insulating material (Fig. 9, 16, column 21 lines 2-5, resin, in contact with 91).
Regarding claim 8, Shimizu as modified teaches the limitations of claim 7 upon which claim 8 depends.
Shimizu teaches wherein the second insulating material is at least one of a polyamideimide resin, an epoxy resin, a fluororesin, an acrylic resin, and a silicone resin (Fig. 9, 16, column 21 lines 2-5, resin).
Response to Arguments
Applicant's arguments filed 7 April 2026 have been fully considered but they are not persuasive. Also, there is also a new ground of rejection presented for claims 1-3 and 5-8 that only uses Hori as a secondary reference and a new reference to Shimizu is used as the primary reference.
Applicant argues that Hori does not teach “a bonded portion between the semiconductor element and an electrode of the insulating substrate is covered with the second insulating material, and wherein the gel-like first insulating material is in contact with a part of the semiconductor element and a part of the insulating substrate”.
Hori Fig. 1 teaches a bonded portion between the semiconductor element 5 and electrode 9a (the potion bonding 9a to substrate 3) is covered with the second insulating material 13, and a gel-like first insulating material 15 in contact with a part of the semiconductor element 5 and a part of the insulating substrate 3.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICHOLAS HUTSON whose telephone number is (571)270-1750. The examiner can normally be reached Mon-Fri 8am-5pm.
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/NICHOLAS LELAND HUTSON/ Examiner, Art Unit 2818
/JEFF W NATALINI/ Supervisory Patent Examiner, Art Unit 2818
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