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 .
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.
Response to Amendment
The following office action is in response to the amendment and remarks filed on 6/8/26.
Applicant’s amendment to claims 1 is acknowledged.
Applicant’s cancellation of claims 5 and 15 is acknowledged.
Applicant’s addition of new claims 18-21 is acknowledged.
Claims 1-4, 6-14 and 16-21 are pending and claims 8-10 are withdrawn.
Claims 1-4, 6, 7, 11-14 and 16-21 are subject to examination at this time.
Response to Arguments
Applicant's arguments filed 6/8/26 have been fully considered but they are not persuasive.
Applicant has incorporated claims 5 and 15 into claims 1 and 11, respectively. Applicant presents arguments for fig. 4 indicating layers 42 and 52 are an integral layer so one of ordinary skill in the art would not form them of different materials.
The rejection of claims 1 and 11 cites to fig. 8.
The rejection of claim 5 cited to figs. 4 and 6 for teaching preventing the infiltration of moisture. The citation to fig. 4 does not modify fig. 8 to form layers 41 and 52 to be an integral layer. In fig. 8, it is clear that layers 41 and 52 are two distinct layers. In fig. 6 it is also clear that layers 43 and 51 are also two distinct layers. Notably, Applicants did not present arguments for fig. 6.
When the layers are formed as two distinct layers as shown in figs. 1, 6 and 8, Kaji specifically teaches the materials should be different at para. [0020] “…the first insulating layer 41 and the second insulating layer 51 are separate members made of different materials.”
Kaji discloses a list of materials for layer 41 at para. [0021].
Kaji discloses a list of materials for layer 51 at para. [0022].
MPEP § 2144.07, Art Recognized Suitability for an Intended Purpose indicates:
“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301.”
“It is within the general skill of a worker in the art to select known material on the basis of its suitability for the intended purpose as a matter of obvious design choice.” In re Leshin, 125 USPQ 416.
Referring to MPEP § 2141, Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103:
“A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S., 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Office personnel may also take into account “the inferences and creative steps that a person of ordinary skill in the art would employ.”, 82 USPQ2d at 1396.
Because Kaji teaches a list of materials for layers 41 and 51 and indicates the materials should be different and chosen to prevent moisture infiltration, it would have been obvious to one having ordinary skill in the art, who is a person of ordinary creativity, to read from the list and pick two different materials to prevent moisture infiltration such that (see fig. 8) the fifth resin layer (51) has a moisture permeability lower than the moisture permeability of the first resin (77) and the moisture permeability of the fourth resin (41).
Finally, Applicant’s argument at page 10 that “…forming the second insulating layer 52 with a resin having a lower moisture permeability than the first insulating layer 41 would not prevent moisture infiltrating through the first insulating layer 41, which is addressed by the claimed invention” is not persuasive.
Applicant’s cite to layer (52); however, in fig. 8 the layer is labeled (51) as a layer distinct from layer (41). Applicant’s argument is not persuasive because forming the insulating layer (51) is to have a lower moisture permeability than the insulating layer (41) would provide another barrier to block any moisture that gets pass insulating layer (41).
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.
Claim(s) 1-4, 6, 7, 18 and 19 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hitomi et al., US Publication No. 2022/0165700 (from the IDS) in view of Kaji et al., US Publication No. 2022/0223546 A1.
Hitomi teaches:
1. A semiconductor device comprising (see fig. 1):
a base plate (37);
a substrate (10) provided on the base plate, the substrate having a first metal layer (e.g. 12 right) and a second metal layer (e.g. 12 left) on a surface thereof;
a semiconductor chip (15) provided on the first metal layer, the semiconductor chip including an upper electrode (17), a lower electrode (18) connected to the first metal layer, and a semiconductor layer (e.g. para. [0042]) provided between the upper electrode and the lower electrode;
a bonding wire (20) having a first end portion (e.g. right end) and a second end portion (e.g. left end), the first end portion being connected to the upper electrode (17), and the second end portion being connected to the second metal layer (e.g. 12 left);
a first resin layer (40) covering the substrate, the semiconductor chip, and the bonding wire, the first resin layer containing a first resin;
a second resin layer (33) covering at least a part of a bonding portion between the first end portion (e.g. right end of 20) and the upper electrode (17), the second resin layer containing a second resin having a Young's modulus higher than a Young's modulus of the first resin (e.g. para. [0055], [0061]);
a frame body (38) surrounding the substrate, the first resin layer, and the third resin layer… See Hitomi at para. [0001] – [0119], figs. 1-31.
Regarding claim 1:
Hitomi does not expressly teach:
a third resin layer provided on the first resin layer so as to be in contact with the first resin layer, the third resin layer containing a third resin having a moisture permeability lower than a moisture permeability of the first resin;
the frame body surrounding the third resin layer;
a fourth resin layer provided between the base plate and the frame body and bonding the base plate and the frame body, the fourth resin layer containing a fourth resin; and
a fifth resin layer provided between the first resin layer and the fourth resin layer the fifth resin layer containing a fifth resin having a moisture permeability lower than the moisture permeability of the first resin and a moisture permeability of the fourth resin.
In an analogous art, Kaji teaches:
(see fig. 8) a third resin layer (91) provided on the first resin layer (77) so as to be in contact with the first resin layer, the third resin layer containing a third resin (e.g. material at para. [0049]) having a moisture permeability (e.g. para. [0050], para. [0028]) lower than a moisture permeability of the first resin (77; material at para. [0030]);
a frame body (61) surrounding a substrate (21), the first resin layer (77), and the third resin layer (91),
a fourth resin layer (41) provided between the base plate (21) and the frame body (61) and bonding the base plate and the frame body, the fourth resin layer containing a fourth resin (e.g. material para. [0021]); and
a fifth resin layer (51) provided between the first resin layer (77) and the fourth resin layer (41), the fifth resin layer containing a fifth resin (e.g. material at para. [0022]), para. [0048] – [0060]…
Kaji is silent “the fifth resin layer containing a fifth resin having a moisture permeability lower than the moisture permeability of the first resin and a moisture permeability of the fourth resin”
However, it would have been obvious to one of ordinary skill in the art to form “the fifth resin layer containing a fifth resin having a moisture permeability lower than the moisture permeability of the first resin and a moisture permeability of the fourth resin”because Kaji teaches in fig. 4 that layers (42, 52) prevent infiltration of moisture at para. [0037]; in fig. 6 that layers (43, 51) prevent infiltration of moisture at para. [0043]; in fig.7 that layers (44, 51) prevent infiltration of moisture at para. [0045]; and from the materials disclosed at para. [0021] – [0022].
Hitomi further teaches:
2. The semiconductor device according to claim 1, wherein the Young's modulus of the second resin is equal to or more than 1000 MPa, para. [0055], [0061].
3. The semiconductor device according to claim 1, wherein a glass transition temperature of the second resin is equal to or more than 250° C, para. [0059].
Regarding claim 4:
Hitomi teaches the first resin (40 in fig. 1) comprises a silicone get at para. [0060]
Kaji teaches the third resin (91 in fig. 8) comprises thermoplastic resin such as polyphenylene sulfide (PPS), polybutylene terephthalate (PBT), polyether ether ketone (PEEK), or polytetrafluoroethylene (PTFE) at para. [0049].
One of ordinary skill in the art modifying Hitomi with Kaji to form the third resin to comprise polybutylene terephthalate (PBT) would arrive at the claimed limitation:
wherein an elongation rate of the third resin (e.g. PBT) is more than an elongation rate of the first resin (e.g. silicon gel). (e.g. See properties of materials cited in the Relevant Art section above.)
It is within the general skill of a worker in the art to select known material on the basis of its suitability for the intended purpose as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP § 2144.07, Art Recognized Suitability for an Intended Purpose.
“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301.”
Kajii further teaches:
6. The semiconductor device according to claim 5, wherein the fifth resin layer (51) is in contact with the first resin layer (77) and the fourth resin layer (41), fig. 8.
7. The semiconductor device according to claim 6, wherein
the fifth resin layer (51) is provided between the frame body (61) and the first resin layer (77),
and the fifth resin layer (51) covers at least a part of the substrate (21), fig. 8.K
Kajii further teaches:
18. The semiconductor device according to claim 1, wherein the fifth resin layer (51) is separated (e.g. separated because layer 51 is a distinct layer and it also comprises a material that is different from the material of the substrate) from the substrate (31), fig. 8.
19. The semiconductor device according to claim 1, wherein the first resin (77) is a silicone gel, para. [0030].
It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the teachings of Hitomi with the teachings of Kaji because (i) “…by providing the barrier layer 91 on the sealing member 77 in a region inside the case 61, it is possible to prevent the infiltration of moisture from the upper surface of the sealing member 77, which makes it possible to prevent the deterioration of the semiconductor element, and therefore, it is possible to further improve the reliability of the semiconductor device” (e.g. Kaji at para. [0050]); and (ii) forming fourth and fifth resin layers around the case help prevent infiltration of moisture (e.g. Kaji at para. [0037], [0043], [0045]).
Claim(s) 11-14, 16, 17, 20 and 21 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kaji et al., US Publication No. 2022/0223546 A1 in view of Hitomi et al., US Publication No. 2022/0165700 (from the IDS).
Kaji teaches:
11. A semiconductor device comprising (see fig. 8):
a base plate (21);
a substrate (31) provided on the base plate, the substrate having a first metal layer (31A) and a second metal layer (31B) on a surface thereof;
a first semiconductor chip (71 left) provided on the first metal layer (31A),
a second semiconductor chip (71 right) provided on the second metal layer (31B), the second semiconductor chip including an upper electrode (e.g. upper electrode implicit at connection point to 84), a lower electrode (e.g. lower electrode implicit at interface with 81) connected to the second metal layer (31B), and a semiconductor layer (e.g. silicon at para. [0018]) provided between the upper electrode and the lower electrode;
a bonding wire (84) having a first end portion (e.g. left end) and a second end portion (e.g. right end), the first end portion (e.g. left end) being connected to the upper electrode (e.g. upper electrode implicit at connection point to 84), and the second end portion (e.g. right end) being connected to a first terminal (74 right), the second semiconductor chip (71 right) being located between the first semiconductor chip (71 left) and the first terminal (74 right);
a first resin layer (77) covering the substrate, the first and second semiconductor chips, and the bonding wire, the first resin layer containing a first resin;
…
a third resin layer (91) provided on the first resin layer so as to be in contact with the first resin layer, the third resin layer containing a third resin having a moisture permeability lower than a moisture permeability of the first resin;
a frame body (61) surrounding the substrate, the first resin layer, and the third resin layer;
a fourth resin layer (41) provided between the base plate (21) and the frame body (61) and bonding the base plate and the frame body, the fourth resin layer containing a fourth resin (e.g. material para. [0021]); and
a fifth resin layer (51) provided between the first resin layer (77) and the fourth resin layer (41), the fifth resin layer containing a fifth resin (e.g. material at para. [0022]), para. [0048] – [0060]… See Kaji at para. [0001] – [0084], figs. 1-9.
Regarding claim 11:
Kaji is silent “the fifth resin layer containing a fifth resin having a moisture permeability lower than the moisture permeability of the first resin and a moisture permeability of the fourth resin”
However, it would have been obvious to one of ordinary skill in the art to form “the fifth resin layer containing a fifth resin having a moisture permeability lower than the moisture permeability of the first resin and a moisture permeability of the fourth resin”because Kaji teaches in fig. 4 that layers (42, 52) prevent infiltration of moisture at para. [0037]; in fig. 6 that layers (43, 51) prevent infiltration of moisture at para. [0043]; in fig.7 that layers (44, 51) prevent infiltration of moisture at para. [0045]; and from the materials disclosed at para. [0021] – [0022].
Further regarding claim 11:
Kaji does not expressly teach:
a second resin layer covering at least a part of a bonding portion between the first end portion and the upper electrode, the second resin layer containing a second resin having a Young's modulus higher than a Young's modulus of the first resin;
In an analogous art, Hitomi teaches:
(see fig. 1) a second resin layer (33) covering at least a part of a bonding portion between the first end portion (e.g. right end of 20) and the upper electrode (17), the second resin layer containing a second resin having a Young's modulus higher than a Young's modulus of the first resin (e.g. para. [0055], [0061]). See Hitomi at para. [0040] – [0050].
Regarding claim 12:
Hitomi teaches the limitations as applied to claim 2 above.
Regarding claim 13:
Hitomi teaches the limitations as applied to claim 3 above.
Regarding claim 14:
Kaji teaches the first resin (77) comprises an electrically insulating resin such as epoxy resin, silicone resin, urethane resin, polyimide resin, polyamide resin, or acrylic resin at para. [0030].
Kaji teaches the third resin (91) comprises thermoplastic resin such as polyphenylene sulfide (PPS), polybutylene terephthalate (PBT), polyether ether ketone (PEEK), or polytetrafluoroethylene (PTFE) at para. [0049].
One of ordinary skill in the art forming the first resin to be the material silicon resin and the third resin to be the material polybutylene terephthalate (PBT) would arrive at the claimed limitation:
wherein an elongation rate of the third resin (e.g. PBT) is more than an elongation rate of the first resin (e.g. silicone gel). (e.g. See properties of materials cited in the Relevant Art section above.)
It is within the general skill of a worker in the art to select known material on the basis of its suitability for the intended purpose as a matter of obvious design choice. In re Leshin, 125 USPQ 416. See MPEP § 2144.07, Art Recognized Suitability for an Intended Purpose.
“Reading a list and selecting a known compound to meet known requirements is no more ingenious than selecting the last piece to put in the last opening in a jig-saw puzzle. 325 U.S. at 335, 65 USPQ at 301.”
Regarding claim 16:
Kaji teaches the limitations as applied to claim 6 above.
Regarding claim 17:
Kaji teaches the limitations as applied to claim 7 above.
Regarding claim 20:
Kaji teaches the limitations as applied to claim 18 above.
Regarding claim 21:
Kaji teaches the limitations as applied to claim 10 above.
It would have been obvious to a person of ordinary skill in the art before the effective filling date of the claimed invention to modify the teachings of Kaji with the teachings of Hitomi because “When the power semiconductor module 1 is subjected to a heat cycle, the second resin member 33 having the second tensile elastic modulus greater than the first tensile elastic modulus of the first resin member 30 may sufficiently prevent the deformation of the conductive wire 20. The second resin member 33 may prevent the breaking of the first resin member 30 caused by the deformation of the conductive wire 20.” See Hitomi at para. [0058].
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 Michele Fan whose telephone number is 571-270-7401. The examiner can normally be reached on M-F from 7:30 am to 4 pm.
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/Michele Fan/
Primary Examiner, Art Unit 2818
19 August 2026
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