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 .
DETAILED ACTION
This action is responsive to the application No. 18/316,376 filed on December 18, 2025.
Priority
3. Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
4. Acknowledgement is made of Applicant’s Information Disclosure Statement (IDS) form PTO-1449. These IDS has been considered.
Specification
5. The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The title of the invention is suggested as “Power Semiconductor Module Arrangement Comprising Heat-Conducting Layer and Heat Sink”.
Claim Rejections - 35 USC § 102
6. 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 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.
7. 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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
8. Claims 1-5, 9 are rejected under 35 U.S.C. 102(a)(1)/ (a)(2) as¶ being anticipated by Hohlfeld (US 2020/0083138 A1).
Regarding independent claim 1, Hohlfeld teaches a power semiconductor module arrangement comprising a power semiconductor module (20/10, Fig. 2), wherein the power semiconductor module (20/10) comprises:
a substrate (10, para [0021]) for carrying at least one semiconductor body (20, para [0020]); and
a heat-conducting layer (40, para [0021]) arranged on a lower surface of the power semiconductor module (20/10), wherein the lower surface of the power semiconductor module (20/10) is a surface that is configured to be mounted to a heat sink (30, para [0020]), wherein
the heat-conducting layer (40) consists of a metallic (64, fibers made of metallic material, Cu, see para [0027], see Fig. 4) and non-eutectic material (ceramic material, para [0025] non-eutectic ceramics melt over a wide temperature range) (thermal conductive paste material/particles 62/64 changes its phase depending on temperature, para [0027], [0035], see Figs. 3-4) that is solid at temperatures below a first threshold temperature (at room temperature, para [0035]), that is viscous (between solid and liquid stage) at temperatures above the first threshold temperature and below a second threshold temperature (melting temperature), and that is fluid at temperatures (when heated, para [0035] the heat-conducting paste 40 liquefy) above the second threshold temperature.
Regarding claim 2, Hohlfeld teaches wherein (Fig. 2), the substrate (10, para [0020]) comprises a dielectric insulation layer (110, para [0020]) and a first metallization layer (112, para [0020]) attached to the dielectric insulation layer (110), the first metallization layer configured to carry the at least one semiconductor body (20).
Regarding claim 3, Hohlfeld teaches wherein (Fig. 2), the lower surface of the power semiconductor module (20/10) is formed by a surface of the substrate (10) (a product-by-process limitation).
Regarding claim 4, Hohlfeld teaches wherein (Fig. 2), the power semiconductor module (20/10) further comprises a base plate (50, para [0022]), wherein the substrate (10) is arranged on a first surface (upper surface) of the base plate (50) and the lower surface of the power semiconductor module (20/10) is formed by a second surface (bottom surface) of the base plate (50) (a product-by-process limitation) opposite the first surface.
Regarding claim 5, Hohlfeld teaches wherein (Fig. 2), further comprising a heat sink (30, para [0021]), wherein the heat-conducting layer (40) is arranged between the power semiconductor module (20/10) and the heat sink (30), and permanently attaches the heat sink (30) to the power semiconductor module (20/10).
Regarding claim 9, Hohlfeld teaches wherein (Fig. 2), the heat- conducting layer (40) undergoes at least one phase change from solid to viscous or solid to liquid when heating up from room temperature to an operating temperature of the power semiconductor module (20/10) (see para [0035] the heat-conducting paste 40 may be solid, semi-solid, viscous or gel-like and may adhere to the surface 61. When heated, the heat-conducting paste 40 may liquefy).
Claim Rejections - 35 USC § 103
9. 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 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.
10. 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.
11. 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.
12. The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
a. Determining the scope and contents of the prior art.
b. Ascertaining the differences between the prior art and the claims at issue.
c. Resolving the level of ordinary skill in the pertinent art.
d. Considering objective evidence present in the application indicating obviousness or non-obviousness.
13. Claims 6-7 are rejected under 35 U.S.C. 103 as being unpatentable over Hohlfeld (US 2020/0083138 A1) as applied to claim 1 above, and further in view of
Nakahara et al. (US 9,412,679 B1).
Regarding claim 6, Hohlfeld teaches all of the limitations of claim 1 from which this claim depends.
Hohlfeld is explicitly silent of disclosing wherein, the first threshold temperature is between 80°C and 125°C.
Nakahara et al. teaches wherein (Fig. 2), the first threshold temperature (temperature above the ambient temperature) of the heat conducting layer (20) is between 80°C and 125°C (45°C -125°C, column 4, lines 55-67) (which overlaps the range).
It would have been obvious to one of ordinary skill in the art before the effective filing date, to select the claimed temperature of the heat conducting layer within the quoted range to optimize the result effective variable of the heat transfer material in order to improve the device performance/reliability. In addition, to an ordinary artisan practicing the invention, absent evidence of disclosure of criticality for the range giving unexpected results, it is not inventive to discover optimal or workable ranges by routine experimentation. In re Aller, 220 F. 2d 454, 105 USPQ 233, 235 (CCPA 1955).
Furthermore, the specification contains no disclosure of either the critical nature of the claimed temperature or any unexpected results arising therefrom. Where patentability is said to be based upon particular chosen temperature of the heat conducting layer or upon another variable recited in a claim, the Applicant must show that the chosen temperature is critical. See In re Woodruff, 919 F.2d 1575, 1578, 16 USPQ 2d 1934, 1936 (Fed. Cir. 1990).
Regarding claim 7, Hohlfeld teaches all of the limitations of claim 1 from which this claim depends.
Hohlfeld is explicitly silent of disclosing wherein, the second threshold temperature is between 140°C and 180°C.
Nakahara et al. teaches wherein (Fig. 2), the second threshold temperature (temperature that produces viscous or grease-like state) of the heat conducting layer (20) is between 140°C and 180°C (125°C, column 4, lines 55-67).
Even Nakahara et al. does not explicitly disclose wherein the second threshold temperature is between 140°C and 180°C.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to determine the range of the second threshold temperature is between 140°C and 180°C.
It should be noted that although the range of the threshold temperature taught by Nakahara et al. is not within the range specified in the present claim, it has be held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP §2144.05 I).
Furthermore, it has been held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. The differences in temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wt% is critical (MPEP §2144.05 II/III).
14. Claims 8, 10-11 are rejected under 35 U.S.C. 103 as being unpatentable over Hohlfeld (US 2020/0083138 A1) as applied to claim 1 above, and further in view of
Morozumi et al. (US 2006/0263235 A1).
Regarding claim 8, Hohlfeld teaches all of the limitations of claim 1 from which this claim depends.
Hohlfeld is explicitly silent of disclosing wherein, the heat-conducting layer consists of a metal alloy.
Morozumi et al. discloses wherein (Fig. 1), the heat-conducting layer (9 solder alloy, para [0024]) consists of a metal alloy (para [0020]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to apply the teaching as taught by Morozumi et al., and modify the heat conducting material of Hohlfeld, along with solder alloy, in order to allow and manage effective heat dissipation, and contribute to the reliability of electronic devices.
Regarding claim 10, Hohlfeld teaches all of the limitations of claim 9 from which this claim depends.
Hohlfeld is explicitly silent of disclosing wherein, the heat-conducting layer comprises tin.
Morozumi et al. discloses wherein (Fig. 1), the heat-conducting layer (9 solder alloy, para [0024]) comprises tin (para [0005]).
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to apply the teaching as taught by Morozumi et al., and modify the heat conducting material of Hohlfeld, along with solder alloy, in order to allow and manage effective heat dissipation, and contribute to the reliability of electronic devices.
Regarding claim 11, Hohlfeld and Morozumi et al. teach all of the limitations of claim 10 from which this claim depends.
Hohlfeld is explicitly silent of disclosing wherein, the heat-conducting layer comprises between 50 and 55 weight% of tin.
Morozumi et al. discloses wherein (Fig. 1), solder alloy (9) layer comprises between 65 to 90 wt% of tin (Sn) (para [0005]).
Even Morozumi et al. does not explicitly disclose the range of tin in the solder alloy is between between 50 and 55 weight% of tin.
It would have been obvious to one of ordinary skill in the art, before the effective filing date of the invention to determine the range of tin in the solder alloy between 50 and 55 weight%.
It should be noted that although the wt% of tin in the solder alloy taught by Morozumi et al. is not within the range specified in the present claim, it has be held that a prima facie case of obviousness exists where the claimed ranges or amounts do not overlap with the prior art but are merely close (MPEP §2144.05 I).
Furthermore, it has been held where the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation. The differences in wt% will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such wt% is critical (MPEP §2144.05 II/III).
15. Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hohlfeld (US 2020/0083138 A1), in view of Nakahara et al. (US 9,412,679 B1), and further in view of Morozumi et al. (US 2006/0263235 A1).
Regarding claim 12, Hohlfeld and Nakahara et al. teach all of the limitations of claim 7 from which this claim depends.
Hohlfeld is explicitly silent of disclosing wherein, the heat- conducting layer consists of an alloy comprising more than 10 weight% tin and less than 90 weight% of additional metals selected from the group of indium, bismuth, antimony, silver, and lead.
Morozumi et al. discloses wherein (Fig. 1), the heat-conducting layer (9 solder alloy, para [0024]) consists of an alloy (solder alloy, para [0005]) comprising more than 10 weight% tin (65 to 90 wt %) and less than 90 weight% of additional metals selected from the group of indium, bismuth, antimony (5 to 30 wt%), silver, and lead.
It would have been obvious to a person of ordinary skill in the art before the effective filing date of the invention to apply the teaching as taught by Morozumi et al., and modify the heat conducting material of Hohlfeld, along with solder alloy, in order to allow and manage effective heat dissipation, and contribute to the reliability of electronic devices.
Response to Arguments
16. Applicant’s arguments in pages 6-10 of the remarks section, with respect to the heat-conducting layer have been carefully reviewed, however, the arguments were not found persuasive, because the previously cited prior art, Hohlfeld revealed the heat-conducting layer 40 comprises metallic material 64, made of copper and non-eutectic material 62, made of ceramic material (non-eutectic ceramics melt over a wide temperature range) and performs similar functionality and possesses three different states at different ranges of temperatures as explained above. Additional similar references are included in PTO-892. In addition, no response was received for title amendment, see section 5 above.
Conclusion
17. 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.
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIDARUL MAZUMDER whose telephone number is (571)272-8823. The examiner can normally be reached M-F 9-5.
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.
19. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, William Partridge can be reached at 571-270-1402. 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.
/DIDARUL A MAZUMDER/Primary Examiner, Art Unit 2812