DETAILED ACTION/EXAMINER’S COMMENT
This Office action responds to the amendments filed on 01/13/2026.
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 . In the event the determination of the status of the application as subject to AIA is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for a 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.
Amendment Status
Applicant’s response filed on 01/13/2026 in reply to the non-final rejection mailed on 10/21/2025, has been entered. The present Office action is made with all previously suggested amendments being fully considered. Claim 4 is cancelled. Claims 12-20 are added. Accordingly, pending in this Office action are claims 1-3, & 5-20.
Claim Objections
Claim 18 is objected to because of the following informalities:
“wherein the second resin insulating layer is surrounds a circumference of the conductor foil,” in lines 1-2, is grammatically incorrect.
Appropriate correction is required.
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.
Claims 1-3, 5-7, & 10-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kotani (US 20110031584) in view of Nogawa (US 20210305144) as evidenced by MatWeb (matweb.com).
Regarding Claim 1, Kotani (see, e.g., fig. 2, annotated figure 2) shows a semiconductor device comprising:
a resin insulated substrate including
a first resin insulating layer 5 (see, e.g., para.0044) including a first resin (polyimide resin),
a conductor base 1 (see, e.g., para.0043) provided on a first main surface of the first resin insulating layer (see, e.g., annotated figure 2),
and a conductor foil 7 (see, e.g., para.0045) provided in direct contact with a second main surface of the first resin insulating layer opposite the first main surface (see, e.g., annotated figure 2),
the first resin insulating layer extended along an entire surface of the conductor foil and interposed between the conductor base and the conductor foil;
a power semiconductor element 11 (see, e.g., para.0050) bonded to the conductor foil;
a sealing resin 12 (see, e.g., para.0050) provided inside the case to seal the power semiconductor element:
and a second resin insulating layer 10 (see, e.g., para.0048) including a second resin (polyimide resin), and provided between the first resin insulating layer and the sealing resin,
the second resin insulating layer having a water-absorption rate that is less than a water absorption rate of the sealing resin (see, e.g., para.0048)
wherein the second resin insulating layer is not interposed between the conductor foil and the first resin insulating layer (see, e.g., fig. 2).
Kotani, however, fails to show
a case surrounding an outer circumference of the resin insulated substrate;
Nogawa (see, e.g., fig. 11, para.0053), in a similar device to Kotani, teaches that a case 40 surrounding an outer circumference of the resin insulated substrate would increase the strength of the overall semiconductor device.
It would have been obvious at the time of filing the invention to one of ordinary skill in the art to use the case surrounding an outer circumference of the resin insulated substrate of Nogawa in the device of Kotani to increase the strength of the overall semiconductor device.
Kotani (see, e.g., para.0044, para.0048), in view of Nogawa, states the first resin insulating layer 5 and second resin insulating layer 12 are both polyimide resin.
Kotani, in view of Nogawa, however, fails to show
the second resin insulating layer having a water-absorption rate that is less than a water-absorption rate of the first resin insulating layer
The water absorption rates of various polyimide resins are known as evidenced by MatWeb (0.04-3.29%, see, e.g., matweb.com, Overview of Materials for Polyimide) (0.08-1.12%, see, e.g., matweb.com, Overview of Materials for Thermoplastic Polyimide, Unfilled).
Since there are well known polyimide resins available for insulating layers, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to arrive at the limitation second resin insulating layer (Thermoplastic Polyimide, Unfilled) having a water-absorption rate that is less than a water-absorption rate of the first resin insulating layer (Polyimide) through routine experimentation of the various polyimide resins.
Regarding Claim 2, Kotani (see, e.g., para.0048), in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein the second resin insulating layer 10 includes at least one kind of resin selected from
liquid crystal polymer,
silicone,
polyamide imide,
polyimide (see, e.g., para.0048),
and para-xylene polymer.
Regarding Claim 3, Kotani (see, e.g., para.0048), in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein the first resin insulating layer further includes filler.
MatWeb (see, e.g., matweb.com, Overview of Materials for Polyimide) states the polyimide resin can have a filler percentage between 0-40%.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to arrive at the limitation first resin insulating further including filler through routine experimentation of the various filler percentages of polyimide.
Regarding Claim 5, Kotani (see, e.g., fig. 1, annotated figure 1), in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein the second resin insulating layer 10 has a thickness that is smaller than a thickness of the conductor foil 7 (7b, see, e.g., annotated figure 1).
Since Applicant has not established a direction for thickness, the thicknesses of the second resin insulating layer and conductor foil are interpreted as shown in annotated figure 1.
Regarding Claim 6, Kotani, in view of Nogawa (see, e.g., annotated fig. 3, annotated figure 4, para.0041, para.0034) as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein: a part of the case 40 is bonded to a top surface of an end part of the first resin insulating layer (see, e.g., para.0041) via an adhesive layer 16 (see, e.g., para.0034):
and the second resin insulating layer is provided to cover a side surface of the adhesive layer (see, e.g., annotated figure 4).
Regarding Claim 7, Kotani (see, e.g., fig. 2, see, e.g., annotated figure 2), in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein the second resin insulating layer 10 is selectively provided at a position in contact with a side surface of the conductor foil 7 (between 7b & 7c, see, e.g., annotated figure 2).
Regarding Claim 10, Kotani, in view of Nogawa (see, e.g., annotated figure 4, para.0038) as evidences by MatWeb, shows the semiconductor device of claim 1,
wherein: the power semiconductor element 11 is bonded to the conductor foil with a bonding material 15 (see, e.g., para.0038) interposed:
and the second resin insulating layer 17 (of Nogawa corresponding to 10 of Kotani) has a greater thickness than a total of a thickness of the conductor foil 12 (of Nogawa corresponding to 7 of Kotani) and a thickness of the bonding material 15 (see, e.g., annotated figure 4).
Since Applicant has not established a direction for thickness, the thicknesses of the second resin insulating layer and conductor foil are interpreted as shown in annotated figure 4.
Regarding Claim 11, Kotani (see, e.g., fig. 1, annotated figure 1), in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein the second resin insulating layer further includes a plurality of resin insulating layers 10 (left and right insulating layers in plan view, see, e.g., annotated figure 1).
Regarding Claim 12, Kotani (see, e.g., para.0044, para.0048), in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein the first resin and the second resin are a same resin (polyimide resin, see, e.g., para.0044, para.0048).
Regarding Claim 13, Kotani, in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein the second resin insulating layer further includes filler.
MatWeb (see, e.g., matweb.com, Overview of Materials for Polyimide) states polyimide resin can have a filler percentage between 0-40% and a water absorption rate between 0.04-3.29%.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to arrive at the limitation wherein the second resin insulating layer further includes filler (Polyimide) through routine experimentation of the various filler percentages of polyimide resins.
Additionally, the second resin insulating layer having a lower water absorption rate than the first resin insulating layer, as required by Claim 1, would still be satisfied since there is range of water absorption rates that would be tested along with the filler percentage.
Regarding Claim 14, Kotani, in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 13,
a filled percentage of the first resin insulating layer is greater than a filled percentage of the second resin insulating layer.
MatWeb (see, e.g., matweb.com, Overview of Materials for Polyimide) states the polyimide resin can have a filler percentage between 0-40%.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to arrive at the limitation a filled percentage of the first resin insulating layer (Polyimide) is greater than a filled percentage of the second resin insulating layer (Polyimide) through routine experimentation of the various filler percentages of polyimide resins and ratios of the first and second resin insulating layers.
Regarding Claim 15, Kotani (see, e.g., fig. 2, annotated figure 2), in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein the second resin insulating layer 10 has a thickness that is greater than a thickness of the conductor foil 7 (see, e.g., annotated figure 2).
Regarding Claim 16, Kotani, in view of Nogawa (see, e.g., annotated figure 3, annotated figure 4, para.0034) as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein a part of the case 40 is bonded to a top surface of an end part of the first resin insulating layer via an adhesive layer 16 (see, e.g., annotated figure 3, para.0034);
and the second resin insulating layer has a thickness that is greater than a thickness of the adhesive layer (see, e.g., annotated figure 4).
Since Applicant has not established a direction for thickness, the thicknesses of the second resin insulating layer and adhesive layer are interpreted as shown in annotated figure 4.
Regarding Claim 17, Kotani (see, e.g., fig. 2, annotated figure 2), in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein the second resin insulating layer is provided on an exposed part of a top surface of the first resin insulating layer that is not covered by the conductor foil (between 7b & 7c, see, e.g., annotated figure 2).
Regarding Claim 18, Kotani (see, e.g., fig. 1, annotated figure 1), in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein the second resin insulating layer 10 is surrounds a circumference of the conductor foil 7c (see, e.g., annotated figure 1).
Regarding Claim 19, Kotani, in view of Nogawa (see, e.g., fig. 11, annotated figure 3, para.0034) as evidenced by MatWeb, shows the semiconductor device of claim 1,
wherein a part of the case 40 is bonded to a top surface of an end part of the first resin insulating layer via an adhesive layer 16 (see, e.g., para.0034);
and the water-absorption rate of the second resin insulating layer (polyimide resin) is less than a water absorption rate of the adhesive layer (silicone).
MatWeb (see, e.g., matweb.com, Overview of Materials for Polyimide, Overview of Materials for Silicone, RTV, Encapsulation Grade) states the polyimide resin can have a water absorption rate between 0.04-2% and silicone has a water absorption rate between 0.05-.5%
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to arrive at the limitation the water-absorption rate of the second resin insulating layer (Polyimide) is less than a water absorption rate of the adhesive layer (Silicone, RTV, Encapsulation Grade) through routine experimentation of the various water absorption rates of polyimide and silicone.
Regarding Claim 20, Kotani, in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 12,
wherein the first resin insulating layer further includes filler,
and the second resin insulating layer does not include filler.
MatWeb (see, e.g., matweb.com, Overview of Materials for Polyimide, Overview of Materials for Thermoplastic Polyimide, Unfilled) states the polyimide resin can have a filler percentage between 0-40% and a thermoplastic polyimide can be unfilled at 0%.
Therefore, it would have been obvious at the time of filing the invention to one of ordinary skill in the art to arrive at the limitation first resin insulating layer (Polyimide) further including filler, and the second resin insulating layer (Thermoplastic Polyimide, Unfilled) does not include filler through routine experimentation of the various filler percentages of polyimide resins.
Claim 8 & 9 are rejected under 35 U.S.C. 103 as being unpatentable over Kotani (US 20110031584) in view of Nogawa (US 20210305144) as evidenced by MatWeb (matweb.com) and further in view of Otsubo (US 20170034911).
Regarding Claim 8, Kotani, in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
Kotani, in view of Nogawa as evidenced by MatWeb, however, fails to show
wherein the conductor foil 7 has a side surface having a regular tapered shape with a width that gradually increases in a direction of the first resin insulating layer.
Kotani (see, e.g., fig. 2), in view of Nogawa as evidenced by MatWeb shows instead the conductor foil has a side surface with a constant width in a direction of the first resin insulating layer. However, it is noted that the specification fails to provide teachings about the criticality of having a side surface having a regular tapered shape with a width that gradually increases in a direction of the first resin insulating layer, as claimed in the instant application. Additionally, the limitation “regular” is broad and does not further limit the claimed shape.
Therefore, absent any criticality, this limitation is only considered to be an obvious modification of the shape of the conductor foil side surface disclosed by Kotani, in view of Nogawa as evidenced by MatWeb as the courts have held that a change in shape or configuration, without any criticality, is within the level of skill in the art, and the particular shape of the conductor foil side surface claimed by applicant is nothing more than one of numerous shapes that a person having ordinary skill in the art will find obvious to provide using routine experimentation as a matter of choice or based on its suitability for the intended use of the invention. See In re Daily, 149 USPQ 47 (CCPA 1976).
Furthermore, the claimed limitation is known in the art:
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Otsubo (see, e.g., fig. 12, para.0070), in the same field of endeavor teaches that the shape of the conductor foil 16 side surface can be a regular tapered shape with a width that gradually increases in a direction of the first resin insulating layer 2 (bottom layer). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the shape of Otsubo in the device of Kotani, in view of Nogawa as evidenced by MatWeb, because the shape is known in the semiconductor art to have a width that gradually increases in a direction of the first resin insulating layer as an obvious configuration as suggested by Otsubo, and implementing a known structure shape for its conventional use/purpose would have been a common sense choice by the skilled artisan. KSR Int’l Co. v. Teleflex Inc., 550 U.S, 82 USPQ2d 1385 (2007).
Regarding Claim 9, Kotani, in view of Nogawa as evidenced by MatWeb, shows the semiconductor device of claim 1,
Kotani, in view of Nogawa as evidenced by MatWeb, however, fails to show
wherein the conductor foil has a side surface having an inverse tapered shape with a width gradually decreasing as being closer to the first resin insulating layer.
Kotani (see, e.g., fig. 2), in view of Nogawa as evidenced by MatWeb shows instead the conductor foil has a side surface with a constant width in a direction of the first resin insulating layer. However, it is noted that the specification fails to provide teachings about the criticality of having a side surface having an inverse tapered shape with a width gradually decreasing as being closer to the first resin insulating layer, as claimed in the instant application.
Therefore, absent any criticality, this limitation is only considered to be an obvious modification of the shape of the conductor foil side surface disclosed by Kotani, in view of Nogawa as evidenced by MatWeb as the courts have held that a change in shape or configuration, without any criticality, is within the level of skill in the art, and the particular shape of the conductor foil side surface claimed by applicant is nothing more than one of numerous shapes that a person having ordinary skill in the art will find obvious to provide using routine experimentation as a matter of choice or based on its suitability for the intended use of the invention. See In re Daily, 149 USPQ 47 (CCPA 1976).
Furthermore, the claimed limitation is known in the art:
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Otsubo (see, e.g., fig. 3, para.00039), in the same field of endeavor teaches that the shape of the conductor foil 6 side surface can be an inverse tapered shape with a width gradually decreasing as being closer to the first resin insulating layer 2 (bottom layer). Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the shape of Otsubo in the device of Kotani, in view of Nogawa as evidenced by MatWeb, because the shape is known in the semiconductor art to be gradually decreasing as being closer to the first resin insulating layer as an obvious configuration as suggested by Otsubo, and implementing a known structure shape for its conventional use/purpose would have been a common sense choice by the skilled artisan. KSR Int’l Co. v. Teleflex Inc., 550 U.S, 82 USPQ2d 1385 (2007).
Response to Arguments
Applicant's arguments, see page 5 filed 01/13/2026, with respect to the claim objections of claims 1 & 10 have been fully considered and are persuasive. The claim objections of claims 1 & 10 have been withdrawn.
Applicant’s arguments with respect to claim(s) 1-11 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 FERNANDO JOSE RAMOS-DIAZ whose telephone number is (571) 270-5855. The examiner can normally be reached Mon-Fri 8am-5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Wael Fahmy can be reached on 571-272-1705. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/F.R.D./ Examiner, Art Unit 2814
Examiner, Art Unit 2814
/WAEL M FAHMY/Supervisory Patent Examiner, Art Unit 2814
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