Attorney’s Docket Number: 2663.1034
Filing Date: 12/26/2023
Claimed Foreign Priority Date: 02/07/2023 (JP2023-016798)
Applicants: Saito et al.
Examiner: Younes Boulghassoul
DETAILED ACTION
This Office action responds to the Amendment filed on 07/06/2026.
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Acknowledgment
The Amendment filed on 07/06/2026, responding to the Office action mailed on 04/06/2026, has been entered. The present Office action is made with all the suggested amendments being fully considered. Accordingly, pending in this application are claims 1-7.
Response to Amendment
Applicant’s amendments to the Claims have overcome some of the claim rejections under 35 U.S.C. 102, as previously formulated in the Non-Final Office action mailed on 04/06/2026. However, some of the previously presented prior art remains relevant, and new grounds for rejection are presented below, as necessitated by Applicant’s amendments to the claims.
Claim Objections
Claim 1 is objected to because of the following informalities:
- L. 8: amend to -- wherein the coupling portion of the terminal…--.
Appropriate correction is required.
Claim Rejections - 35 USC § 102
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 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.
Claims 1-4 and 7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Aoki et al. (US2019/0103329).
Regarding Claim 1, Aoki (see, e.g., Figs. 1-5 and Annotated Fig. 2) shows all aspects of the instant invention, including a semiconductor device (e.g., semiconductor apparatus 100) comprising:
- a semiconductor element (e.g., semiconductor device 3)
- a terminal (e.g., insert terminal 6) having a coupling portion (e.g., internal terminal portion 8) and an embedded portion (e.g., fixed portion 7a of external terminal portion 7)
- a housing (e.g., resin case 5) defining an internal space and surrounding the semiconductor element, the coupling portion of the terminal, and the embedded portion of the terminal
- an encapsulant sealing the internal space surrounded by the housing (see, e.g., Par. [0021],[0035]: the interior of semiconductor apparatus 100, having a side face constructed of a side wall of case 5 and a bottom surface constructed of integrated substrate 1, is sealed with a sealing material (not shown) which is an insulator)
- wherein the coupling portion of terminal is a protrusion that protrudes within the internal space from the embedded portion (e.g., 7a) and includes a coupling region that is a recess-shaped or protrusion-shaped coupling region (see, Annotated Fig. 2: end region of 8 has recesses or protrusions 8b) that is coupled to a wire (e.g., bonding wire 9).
Regarding Claim 2, Aoki (see, e.g., Figs. 1-5 and Annotated Fig. 2) shows that:
- the embedded portion (e.g., 7a) is embedded in the housing (e.g., 5)
- the protrusion (e.g., 8) is continuous with the embedded portion (see, e.g., Par. [0026]: terminal 6 is formed into a shape in which the external terminal portion 7 and the internal terminal portion 8 are integrated via bending).
Regarding Claim 3, Aoki (see, e.g., step S100) shows that the housing (e.g., 5) is an insert molded component in which the embedded portion of the terminal (e.g., 7a) is embedded (see, e.g., Par. [0026]-[0031]: the manufacture of the terminal insert case includes an injection molding step, wherein the resin material of case 5 is initially liquefied, then while keeping the terminal 6 fixed, is cooled until solidified, thus resulting is a molded terminal insert case).
Regarding Claim 4, Aoki (see, e.g., Figs. 1-5 and Annotated Fig. 2) shows that the recess-shaped or protrusion-shaped coupling region is continuous with the protrusion that forms an end of the terminal (see, e.g., Par. [0027]: the concave portion 8b is formed by press work and/or cutting work on internal terminal portion 8).
Regarding Claim 7, Aoki (see, e.g., Figs. 4A-B or 5A-B) shows that:
- wherein the recess-shaped or protrusion-shaped coupling region is connected to a surface of the terminal via a stepped surface (see, e.g., Figs. 4B or 5B: end region of 8 having recesses or protrusions 8b is connected to bottom surface of 8 by a slanted sidewall)
- wherein an angle between the stepped surface and the surface of the terminal is an acute angle (see, e.g., Par. [0041] or [0044]: 30°≤α<90° or 30°≤β<90°)
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.
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.
Claims 1-6 are rejected under 35 U.S.C. 103 as obvious over Inoue (US2020/0205292) in view of Abbott et al. (US2014/0367838).
Regarding Claim 1, Inoue (see, e.g., Figs. 1 and 3) shows most aspects of the instant invention, including a semiconductor device (e.g., power conversion device 1) comprising:
- a semiconductor element (e.g., semiconductor element 3)
- a terminal (e.g., lead terminal 15) having a coupling portion (e.g., terminal part 15a) and an embedded portion (e.g., lead part 15b)
- a housing (e.g., case 11) defining an internal space and surrounding the semiconductor element, the coupling portion of the terminal, and the embedded portion of the terminal
- an encapsulant (e.g., sealing resin 16) sealing the internal space surrounded by the housing
- wherein the coupling portion of terminal is a protrusion that protrudes within the internal space from the embedded portion (e.g., 15a protrudes within internal space from 15b) and includes a coupling region that is coupled to a wire (e.g., end portion of 15a coupled to wiring member W2)
However, Inoue is silent about the coupling region being a recess-shaped or protrusion-shaped coupling region that is coupled to a wire. Abbott, (see, e.g., Figs. 6-9 and Par. [0021]-[0022],[0026]) on the other hand and in the same field of endeavor, teaches that reducing the lead tip thickness helps overcome the problem of stitch bond failure due to the relative movement of the encapsulating layer with respect to a lead and bond wire, which can cause a break in the bond wire or a broken stitch bond.
Accordingly, it would have been obvious to one of ordinary skill in the art at the time the invention was filed to have the coupling region being a recess-shaped or protrusion-shaped coupling region that is coupled to a wire in the structure of Inoue, as taught by Abbott, to helps overcome the problem of stitch bond failure due to the relative movement of the encapsulating layer with respect to a lead and bond wire. Therefore, Inoue in view of Abbott teaches that the coupling region is a recess-shaped or protrusion-shaped coupling region that is coupled to a wire.
Regarding Claim 2, Inoue (see, e.g., Figs. 1 and 3) shows that:
- the embedded portion (e.g., 15b) is embedded in the housing (e.g., 11)
- the protrusion (e.g., 15a) is continuous with the embedded portion (see, e.g., Par. [0034]: 15b is continuous with 15a).
Regarding Claim 3, Inoue (see, e.g., Fig. 1 and Par. [0028]) shows that the housing (e.g., 11) is an insert molded component in which a portion of the terminal is embedded.
Regarding Claim 4, Inoue (see, e.g., Figs. 1 and 3) shows the coupling region is continuous with the protrusion that forms an end of the terminal. Furthermore, Abbott (see, e.g., Figs. 6-9 and Par. [0021]-[0022],[0026]) teaches reducing the lead tip thickness so as to define a recess-shaped coupling region.
Regarding Claim 5, Inoue (see, e.g., Figs. 1 and 3) shows that the housing is cylinder-shaped (see, e.g., Par. [0028]: The side wall 11a of the case 11 may include an annular bottom wall part 12 that surrounds the outer peripheral side of the insulated circuit board 2). Additionally, Abbott (see, e.g., Fig. 9) teaches that the recess-shaped coupling region (e.g., coined portion 130) has a rounded-rectangular shape in plan view. Accordingly, Inoue in view of Abbott teaches that the recess-shaped or protrusion-shaped coupling region has a rounded-rectangular shape in plan view in a direction of an axis of the housing.
Regarding Claim 6, Abbott, (see, e.g., Figs. 6-9 and Par. [0021]-[0022],[0026]) teaches forming a coined portion 130 at the end of the lead tip, such that a difference between a level of the recess-shaped coupling region and a level of a top surface of the lead is at least 50% of the lead thickness, to overcome the problem of stitch bond failure. Therefore, Abbott clearly recognizes the difference between a level of the recess-shaped coupling region and a level of a surface of the terminal as a result effective variable.
Accordingly, the particular difference between a level of the recess-shaped coupling region and a level of a surface of the terminal claimed by the applicant, i.e., corresponding to a diameter of the wire, is only considered to be the “optimum” level difference disclosed by Inoue in view of Abbott that a person having ordinary skill in the art would have been able to obtain using routine experimentation based, among other things, on bond wire current drive requirements, mechanical strain imparted by the encapsulating layer on the bond wire, etc. (see In re Boesch, 205 USPQ 215 (CCPA 1980)), and since neither non-obvious nor unexpected results, i.e., results which are different in kind and not in degree from the results of the prior art, will be obtained as long as lead tips have a recess-shaped coupling region to mitigate the issue of stitch bond failure, as already suggested by Abbott. Therefore, Inoue in view of Abbott also teaches that a difference between a level of the recess-shaped or protrusion-shaped coupling region and a level of a surface of the terminal corresponds to a diameter of the wire.
Response to Arguments
Applicant’s remarks with respect to the claims filed on 07/06/2026 have been considered but have not been found persuasive:
The applicant argues:
“[K]uraishi, and combination of Inoue and Abbott, which do not disclose the present claim 1's structure of the "housing" in relation to portions of the "terminal," namely the "coupling portion" and the "embedded portion" of the "terminal".”; and “Aoki does not disclose the present claim 1 as amended, because, according to Aoki, paragraph [0024], Fig. 2 and other figures, bonding region 8a of the internal terminal portion 8 has concave portions 8b on a surface opposite of a wire contact surface of the bonding region 8a, such that it is readily apparent that Aoki's configuration does not disclose the present claim 1.” (see, e.g., Remarks, Pages 4-5).
The examiner replies:
The examiner respectfully disagrees. Initially, and in response to applicant's arguments that the references fail to show or suggest the arrangement of features as recited in claim 1, it is noted that the examiner is entitled to the broadest reasonable interpretation of the claim language, and although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
As such, while the examiner acknowledges differences in arrangements of terminal coupling portions between the prior art of Aoki and the instant invention as disclosed in the Specification and Figures, applicant’s use of broad terminology such as “region” and “coupled” fails to sufficiently distinguish Aoki from the instant invention as recited in the body of claim 1. Therefore, amended claim 1 stand rejected as anticipated by Aoki, or in the alternative, as obvious over Inoue in view of Abbott, as detailed in the Office action supra.
Applicant is advised to use more accurate/descriptive language in the body of the claim, to attempt to differentiate the instant claimed invention from the prior art. For example, the examiner notes that Saito’s wire 22 is directly bonded to/interfacing with a recessed/protruding top surface of a coupling region of the terminal coupling portion (see, e.g., Drawings Fig. 1 and associated written description).
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 Younes Boulghassoul whose telephone number is (571) 270-5514. The examiner can normally be reached Monday-Friday 9am-6pm EST. 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. 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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/YOUNES BOULGHASSOUL/Primary Examiner, Art Unit 2814
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