DETAILED ACTION
This application, 18/257,795, attorney docket 203417-US-PCT (13362-542, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This application is a National Stage entry of PCT/EP2021/084787, international Filing Date: 12/08/2021, and claims foreign priority to 10 2020 216 315.4, filed 12/18/2020. Claims 1-14 are pending and are considered below. Note that examiner will use numbers in parentheses to indicate numbered elements in prior art figures, and brackets to point to paragraph numbers where quoted material or specific teachings can be found.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 5 and 12 are rejected under 35 U.S.C. 112(a), because the specification, while being enabling for the disclosed arrangements “contact wires are arranged differently on the first side than on the second side,” does not reasonably provide enablement for all possible arrangements of wires. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims. One skilled is a semiconductor designer who may create a novel arrangement of wires that is not disclosed.
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.
Claims 5 and 12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 5 and 12 recite “wherein the contact wires are arranged differently on the first side than on the second side. It is not clear whether this is process limitation describing how the arrangement is accomplished, or a structural limitation describing the layout of the wires.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 10 and 11 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
Claim 10 recites, “using a lithography process in which a shadow mask is used to determine positions of the contact wires”. The limitation is a product by process limitation, but it does not further limit the structure.
Claim 11 recites, “the electrically conductive layer and the heat sink are attached using a diffusion process.” The limitation is a product by process limitation, but it does not further limit the structure.
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, 2, 4-9, 12 13 and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Noda et al. (U.S. 5,767,573) in view of Miyachi et al. (U.S. 2004/0066610).
As for claim 1,
Noda teaches in figure 6, a method for producing a power module, comprising:
providing an insulating substrate comprising a first metal layer, a second metal layer, and an insulating layer placed between the first metal layer and second metal layer (305/306/307, [co12 ln 34]),
applying an electrically conductive layer (1A) to the first side, which comes in contact with numerous power switches,
and applying a heatsink (104) to the second side.
Noda does not teach forming numerous contact wires located on a first side of the insulating substrate facing away from the second metal layer and on a second side of the insulating substrate facing away from the first metal layer.
However, Miyachi teaches using vertical nanotubes (41/42/43) to connect the device (35) to the substrate (11 and 20) The nanotube correspond to the contact wires and replace the solder joints of Noda.
It would have been obvious to one skilled in the art at the effective filing date of this application to substitute nanotubes of Miyachi for the solder of Noda to improve heat transfer, and electrically conductivity while using a pressure weld instead of thermal weld. Miyachi [0013-0014]. One skilled in the art would have combined these elements with a reasonable expectation of success.
As for claim 2,
Noda in view of Miyachi makes obvious the method of claim 2, and in the combination, Miyachi teaches that the contact wires are nanowires. Miyachi [0020]
As for claim 4,
Noda in view of Miyachi makes obvious the method according to claim 1,
and Miyachi teaches attaching the electrically conductive layer and the heat sink are attached using a diffusion process. (called pressure welding by Miyachi [0065]).
As for claim 5,
Noda in view of Miyachi makes obvious the method according to claim 1, and Miyachi teaches arranging the contact wires differently on the first side than on the second side. (the areas of contact are different between the heat sink and the discrete switches.)
As for claim 6,
Noda in view of Miyachi makes obvious the method according to the method according to any claim 1 wherein the first and/or second sides have cleared regions in which there are no contact wires. (there are no contact wires between the discrete switches.)
As for claim 7,
Noda in view of Miyachi makes obvious the method according to claim 6, and Noda teaches that the cleared regions are generated using a mechanical, chemical, and/or laser process. (the bonding material is “shaped”, an inherently mechanical process because the shape is changed [co10 ln37]).
As for claim 8,
Noda teaches in figure 6, a power module for operating an electric vehicle drive (operating a vehicle is an intended use of the device and does not limit the device structure. It has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex Parte Masham, 2 USPQ F.2d 1647 (1987)), comprising:
an insulating substrate (305/306/307), comprising a first metal layer (306), a second metal layer (307), and an insulating layer (305) placed between the first metal layer and second metal layer ([co12 ln 34])
an electrically conductive layer (1A) applied to the first side, which comes in contact with numerous power switches (301a, 301b) and
a heatsink (104) applied to the second side. ([co12 ln 34])
Noda does not teach numerous contact wires located on a first side of the insulating substrate facing away from the second metal layer and on a second side of the insulating substrate acing away from the first metal layer.
However, Miyachi teaches using vertical nanotubes (41/42/43) to connect the device (35) to the substrate (11 and 20) The nanotube correspond to the contact wires. And replace the solder joints of Noda.
It would have been obvious to one skilled in the art at the effective filing date of this application to substitute nanotubes of Miyachi for the solder of Noda to improve heat transfer, and electrically conductivity while using a pressure weld instead of thermal weld. Miyachi [0013-0014]. One skilled in the art would have combined these elements with a reasonable expectation of success.
As for claim 9,
Noda in view of Miyachi makes obvious the power module according to claim 8, wand in the combination, Miyachi teaches that the contact wires are nanowires.
As for claim 10,
Noda in view of Miyachi makes obvious the power module according to claim 8, and claim 10 includes no additional distinguishing structural limitations, so is obvious for the reasons given in claim 8.
As for claim 11,
Noda in view of Miyachi makes obvious the power module according to claim 8, and claim 10 includes no additional distinguishing structural limitations, so is obvious for the reasons given in claim 8.
As for claim 12,
Noda in view of Miyachi makes obvious the power module according to claim 8, and in the combination, Miyachi teaches that the contact wires are arranged differently on the first side than on the second side. (the areas of contact are different between the heat sink and the discrete switches.)
As for claim 13,
Noda in view of Miyachi makes obvious the power module according to claim 8, and in the combination, Miyachi teaches that the first and/or second sides have cleared regions in which there are no contact wires. (there are no contact wires between the discrete switches.)
As for claim 14,
Noda in view of Miyachi makes obvious the power module according to claim 13, and in the combination, Miyachi teaches that the cleared regions are generated using a mechanical, chemical, and/or laser process (the cleared regions are prevented from forming nanotubes by using photoresist masks, which are chemically formed and removed. Miyachi [0165]).
It would have been obvious to one skilled in the art at the effective filing date of this application use a chemical process to form the cleared regions because photolithography is precise, common and well understood. One skilled in the art would have combined these elements with a reasonable expectation of success.
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Noda in view of Miyachi and further in view of Goren et al. (U.S. 6,297,592).
As for claim 3,
Noda in view of Miyachi makes obvious the method according to claim 1, comprising:
But does not teach forming the contact wires using a lithography process in which a shadow mask is used to determine positions of the contact wires.
However, Goren teaches forming the contact wires using a lithography process in which a shadow mask is used to determine positions of the contact wires. ([co6 ln16]).
It would have been obvious to one skilled in the art at the effective filing date of this application use the method of Goren to form the nanotubes of Noda because it allows a patterned formation without a removal step. One skilled in the art would have combined these elements with a reasonable expectation of success.
Conclusion
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/JOHN A BODNAR/Primary Examiner, Art Unit 2893