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 .
Response to Arguments
Claims 1-8 stand rejected under Section 103. Claims 1-8 stand rejected under Section 112(b). Claims 1-8 stand objected to. The specification and drawings stand objected to.
Applicants filed a response on March 23, 2026, to which the Office sent a Notice of Non-Compliant Amendment on April 1, 2026. Applicants filed another response on May 25, 2026, to which the Office sent a second Notice of Non-Compliant Amendment on June 10, 2026. Applicants filed a third response on August 5, 2026. The Office’s analysis draws upon these responses.
For the record: The Office notes that the set of claims that were presented to the Office in the August 5, 2026 include changes in the claims which are not underlined or differ from the originally filed claims. They are the following:
Claim 1, line 18: The amendment indicates that this line originally stated “tires”, which in the amendment, applicants changed to “tiers”. However, the term “tiers” was correct in this line in the originally filed claims. The misspelling was in line 10 (which applicants have corrected).
Claim 8, line 5: After “because the Office’s staff, when issuing a patent, adjust the claim language based on changes that are indicated by applicants. If the change is not indicated by applicants, then the change may not be included in a patent that issues from the application.
Turning first to the drawings: Applicants filed two sets of drawings: March 23, 2026, and August 5, 2026. Some of the drawings in the March 23, 2026 filing address some of the drawing objections and some of the drawings in the March 23, 2026 filing did not address the drawing objections. Some of the drawings in the August 5, 2026 filing address some of the drawing objections and some of the drawings in the August 5, 2026 filing did not address the drawing objections, and furthermore, some of the drawings in the August 5, 2026 filing reverted the correct changes in the March 23, 2026 filing back to the original, objected-to drawings. The Office is left to sort these out.
First, the March 23, 2026 filing includes the correct version of Figures 1-3 and 6. These figures are accepted and entered.
Next, the August 5, 2026 filing includes the correct version of Figures 8 and 9. These figures are accepted and entered. The August 5, 2026 filing includes the original, objected-to versions of Figures 3 and 6. These drawings are NOT entered.
Applicants have included NO discussion as to any changes in Figures 4, 5, 7, 10, and 11, and therefore, these drawings are NOT entered. If applicants want these drawings included in any patent that issues from this application, applicants will need to explain any differences between these drawings and the originally filed drawings, including how the changes are supported by the originally filed disclosure.
Note that the remaining objections are re-stated below.
Specification: Applicants’ amendments address the previously noted specification and one set of drawing objections and are accepted and entered. No new matter has been added. The previously noted specification objections are withdrawn. That said, by changing the preamble of the claims from “A heat-electricity discrete power module” to “A thermally and electrically separated power module”, as well as changing references from “three-dimensional” to “stepped” in the body of the claims, applicants should also include those changes in the Title, Abstract, and Specification. (The change in the reference in the specification from “three-dimensional” conductive layer to a “stepped” conductive layer should be done where the drawing specifically shows a stepped conductive layer.) Objections to that effect are included below.
Claim objections: Applicants’ amendments address the previously noted claim objections and are accepted and entered. No new matter has been added. The previously noted claim objections are withdrawn.
Section 112(b) rejections: Applicants’ amendments address the previously noted Section 112(b) rejections and are accepted and entered. No new matter has been added. The previously noted Section 112(b) rejections are withdrawn. A new set of Section 112(b) rejections are included based on applicants’ newly added claim language.
Section 103 rejections: Applicants’ arguments are persuasive, in particular, applicants’ remarks about the primary reference, Yoo, having channels created to laterally remove heat from the power transistor dies when applicants’ invention, with the specific use of the encapsulant, is directed to avoiding lateral heat removal from the power transistor dies. The Office considered using Shibuya as the primary reference by replacing its leadframes with metal-clad ceramic substrates, but determined that this arrangement would constitute impermissible hindsight because applicants’ design is based on a problem which they solved and which is not addressed in Shibuya. Other references cited in the rejection as well as other references which were previously identified provided no basis for a Section 103 rejections. These rejections are withdrawn.
Updated searches yielded no further prior art that anticipates or renders obvious the claims, or that could be used with previously cited prior art to render obvious the claims.
Applicants’ amendments introduce bases for Section 112(a) enablement and written description rejections, which are noted below.
Drawings
The drawings were received on March 23, 2026 and August 5, 2026. These drawings are entered in part and rejected in part.
March 23, 2026 drawings:
Figures 1-3 and 6 are entered. The remainder of the drawings are not entered.
August 5, 2026 drawings:
Figures 8 and 9 are entered. The remainder of the drawings are not entered.
The drawings are objected to because of the following:
Figures 8 and 9: It is unclear how Figure 9 is a plan view of Figure 8, if that is what is intended.
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In Figure 11: Second to last line in step (62): Check the translation of “further”. The current translation is awkward.
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Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Specification
The title of the invention, previously consistent with the claims’ preamble, is—after applicants’ amendments to the claims—no longer consistent with the claim preamble. A new title is required that is clearly indicative of the invention to which the claims are directed.
The abstract of the disclosure is objected to because, after applicants’ change to the preamble of the claims, the previously used terms “heat-electricity discrete” and “three-dimensional” are still in the abstract. Please update the abstract to reflect the changes. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b).
The disclosure is objected to because of the following informalities:
In general, the reference to “heat-electricity discrete power module” throughout the specification should be changed to “thermally and electrically separated power module” to reflect the preamble of the claims, as currently amended. Because of changes to the body of the claims, the term “three-dimensional” should be changed to “stepped” in the specification where appropriate based on the drawing that is being discussed in the paragraph of the specification.
Appropriate correction is required.
Claim Objections
Claims 1-8 are objected to because of the following informalities:
Claim 1, line 24: Change “and” to “wherein”.
Claim 1, line 30: Add “wherein” at the beginning of the line, and add “is” after “insulating encapsulant”.
Claim 1, line 36: Add “die” after “transistor”. Compare with line 34.
Claims 2-6 are objected to for depending from objected-to base claim 1.
Claim 7, line 35: Add “die” after “transistor”. Compare with line 31.
Claim 8 is objected to for depending from objected-to base claim 7.
Appropriate correction is required.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Regarding claim 1: This claim has been amended to require that lateral surfaces of the power transistor die be completely encapsulated by the insulating encapsulant such that heat generated from the power transistor die be constrained to conducting toward the first and second double-sided metal-clad ceramic substrates while blocked from conducting laterally. The underlined language is interpreted to require a complete blocking of the heat conduction. Because a complete blocking of the heat conduction is impossible, claim 1 is rejected for lack of enablement.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is "undue." These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988).
(A) The breadth of the claims: The breadth of the claims encompasses an insulating encapsulant which is selected to block heat generated from the power transistor die from conducting laterally, while conducting the heat towards the first and second double-sided metal-clad ceramic substrates. This language is interpreted as completely blocking the lateral heat transfer.
(B) The nature of the invention: The invention is a semiconductor package in which first and second metal-clad ceramic substrates are electrically connected to opposing sides of at least one power transistor die, and the power transistor die has upper and lower surfaces thermally connected to first and second metal-clad ceramic substrates, respectively. An encapsulant completely encapsulates the power transistor die, and is configured to direct heat transfer through the metal-clad ceramic substrates and not laterally.
(C) The state of the prior art: In order to completely block lateral heat transfer, the insulation would have to be infinitely insulative, which is not possible. A portion, and a significant portion, of the heat can be blocked, but not in its entirety.
(D) The level of one of ordinary skill: One having ordinary skill in the art would have a bachelor’s degree in electrical engineering or materials science and 5 years of experience in the semiconductor industry.
(E) The level of predictability in the art: The level of predictability is low for a complete block of lateral heat transfer, for the reasons stated above.
(F) The amount of direction provided by the inventor: The inventor does not provide guidance on how to completely block lateral heat transfer. Instead, the inventor states that “the heat transferred laterally is also limited by the thermal resistance of the insulation sealant and thus has little impact on other circuit components in the package….” Applicants’ specification ¶ 31.
(G) The existence of working examples: The disclosure has no working examples for a complete block of lateral heat transfer.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure: Given the information provided by the inventor, the state of the prior art, and the scope of the claims, the quantity of experimentation is undue. For these reasons, claim 1 is rejected for lack of enablement.
Claims 2-6 are rejected for depending from rejected base claim 1.
Regarding claim 7: Claim 7, a method claim, has the same heat transfer requirement at issue in claim 1, and is rejected for the same reasons for lack of enablement. The discussion in the rejection of claim 1 is incorporated by reference.
Claim 8 is rejected for depending from rejected base claim 7.
Claims 1-8 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Regarding claim 1: This claim has been amended to require “wherein lateral surfaces of the power transistor die are completely encapsulated by the insulating encapsulant such that heat generated from the power transistor is constrained to conducting towards the first and second double-sided metal-clad ceramic substrates while blocked from conducting laterally.” (emphasis added). A search for the term “block” in applicants’ disclosure turned up no results. The Office searched for the term “lateral”, which turned up 4 hits, the latter two references being pertinent: “the heat transferred laterally is also limited by the thermal resistance of the insulation sealant and thus has little impact on other circuit components in the package”, applicants’ specification ¶ 31, and “In addition to the good thermally-conductive paths in the vertical direction, the lateral sides of the power transistor die are completely encapsulated by an insulation sealant with a low thermal conductivity, such that the heat can hardly affect other circuit components…,” id. ¶ 36. The disclosure does not indicate that the heat is completely blocked. Because heat transfer that is completely blocked from conducting laterally is not disclosed in the originally filed disclosure, claim 1 is rejected for failing to meet the written description requirement.
Claims 2-6 are rejected for depending from rejected base claim 1.
Regarding claim 7: This claim has been amended to require “potting the at least one power transistor die with an insulating encapsulant to achieve complete encapsulation, the thermal conductivity coefficient of the insulating encapsulant being lower than that of the first and second ceramic insulation layers and that of the first and second heat-conducting metallic layers such that heat generated from the power transistor is constrained to conducting towards the first and second double-sided metal-clad ceramic substrates while blocked from conducting laterally.” As noted above, a search for the term “block” in applicants’ disclosure turned up no results. The Office searched for the term “lateral”, which turned up 4 hits, the latter two references being pertinent: “the heat transferred laterally is also limited by the thermal resistance of the insulation sealant and thus has little impact on other circuit components in the package”, applicants’ specification ¶ 31, and “In addition to the good thermally-conductive paths in the vertical direction, the lateral sides of the power transistor die are completely encapsulated by an insulation sealant with a low thermal conductivity, such that the heat can hardly affect other circuit components…,” id. ¶ 36. The disclosure does not indicate that the heat is completely blocked. Because heat transfer that is completely blocked from conducting laterally is not disclosed in the originally filed disclosure, claim 7 is rejected for failing to meet the written description requirement.
Claim 8 is rejected for depending from rejected base claim 7.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1: As discussed above, this claim has been amended to require “wherein lateral surfaces of the power transistor die are completely encapsulated by the insulating encapsulant such that heat generated from the power transistor is constrained to conducting towards the first and second double-sided metal-clad ceramic substrates while blocked from conducting laterally.” (emphasis added). The term “blocked” or “block” is not in the disclosure. This leaves open a question as to its interpretation, whether the term is intended to be interpreted as to completely block the heat transfer or to inhibit the heat transfer. The latter interpretation would be consistent with the disclosure, but if applicants had wanted to use the terms in the disclosure, applicants would have used that terminology and not used “block”. Because the language is confusing, claim 1 is rejected as indefinite.
Claims 2-6 are rejected for depending from rejected base claim 1.
Regarding claim 7: This claim has been amended to require “potting the at least one power transistor die with an insulating encapsulant to achieve complete encapsulation, the thermal conductivity coefficient of the insulating encapsulant being lower than that of the first and second ceramic insulation layers and that of the first and second heat-conducting metallic layers such that heat generated from the power transistor is constrained to conducting towards the first and second double-sided metal-clad ceramic substrates while blocked from conducting laterally.” (emphasis added). The term “blocked” or “block” is not in the disclosure. This leaves open a question as to its interpretation, whether the term is intended to be interpreted as to completely block the heat transfer or to inhibit the heat transfer. The latter interpretation would be consistent with the disclosure, but if applicants had wanted to use the terms in the disclosure, applicants would have used that terminology and not used “block”. Because the language is confusing, claim 7 is rejected as indefinite.
Claim 8 is rejected for depending from rejected base claim 7.
Allowable Subject Matter
Claims 1-8 would likely be allowable if rewritten or amended to overcome the rejections under 35 U.S.C. 112(a) and 112(b), set forth in this Office action, and if the claim objections were addressed. The Office is not prepared to identify specific language on which allowability would be based until applicants overcome the Section 112 rejections.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 VICTORIA KATHLEEN HALL whose telephone number is (571)270-7567. The examiner can normally be reached Monday-Friday, 8 a.m.-5 p.m.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fernando Toledo can be reached at 571-272-1867. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Victoria K. Hall/Primary Examiner, Art Unit 2897
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