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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 1/31/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
The examiner notes that translations of foreign patent literature are cited in this office action. All paragraph and figure numbers for foreign patent documents refer to the machine translations thereof attached to this action, or attached to previous actions.
Claim(s) 1-7, 9-10, and 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yuguchi (JP 2018190894 A) in view of Karasawa (US 20180076053 A1).
Regarding claim 1, Yuguchi teaches, in FIG. 1b, a semiconductor module with a “plate like metal substrate” (metal base plate) with an upper surface and a bottom surface opposite the top surface, with semiconductor element 24 being mounted on the upper surface. “Potting resin” 40 and “main body” 31 - both making up a case - is bonded to the upper surface of the metal base plate. FIG. 4 shows “protrusion” (first positioning portion) 32 protruding from the bottom of the case toward the metal base plate and a “through hole” (second positioning portion) 33 which overlaps the first positioning portion in a plan view, and the metal base plate has a “through hole” (first engagement portion) 25 with which the first positioning portion is engageable.
Yuguchi does not teach that an outer surface of the protrusion is tapered toward a tip end
Karasawa teaches, in FIG. 1, a “resin case” 20 (homologous to the base plate of Yuguchi) with a “terminal placement portion” 22, FIG. 2 (which shows line A-A’ of FIG. 1 in cross-section) shows “supporting portion” 60 (homologous to the protrusion portion taught by Yuguchi) which has an outer surface which is tapered toward a tip end thereof and a width of a first end portion of the protrusion on a bottom surface side of the metal base plate is narrower than a width of a second end portion of the protrusion on a bottom surface side of the case (due to the taper). The examiner notes that, in the orientation of FIG. 2, the top of FIG. 2 is the bottom portion of the protrusion portion, see annotated FIG. 2 below.
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It would have been obvious to one having ordinary skill in the art to modify the protrusion taught by Yuguchi such that an outer surface of the protrusion is tapered toward a tip end. One having ordinary skill in the art would be modified to do so because, for example, “If the supporting portion 60 is tapered, the supporting portion 60 becomes to be easily inserted into the through hole 26” (Karasawa, [0044]).
Regarding claim 2, Yuguchi teaches in FIG. 4, the second position portion is provided within the first position portion in the plan view.
Regarding claim 3, Yuguchi teaches in FIG. 4, the first and second position portion form a single positioning portion, and these are provided in the plurality (see Description of Exemplary Embodiment paragraph 5, wherein it is stated that there are eight of these structures).
Regarding claim 4, Yuguchi teaches in FIG. 2b, the plurality of single position portions includes two single positioning portions that are disposed in diagonal opposition to one another with the semiconductor unit disposed therebetween.
Regarding claim 5, Yuguchi teaches in FIG. 2b, a plan view in which it is seen that the protrusion 32 has an arc portion, and the second positioning portion 33, also has an arc portion, in the plan view, and that the second and first positioning portions overlap in the plan view.
Regarding claim 6, Yuguchi teaches in FIG. 2b that the second positioning portion is circular in the plan view.
Regarding claim 7, Yuguchi further teaches FIG. 2b that the first positioning portion has a circular shape in the plan view, and that a center of the first and second positioning portions overlap each other in the plan view.
Regarding claim 9, Yuguchi teaches in paragraph 6 of Description of Exemplary Embodiments, that the first positioning portion 32 may have a rectangular cross section (thus including a linear portion in the plan view).
Regarding claim 10, Yuguchi teaches, in FIG. 4, that a height of the protrusion is lower than a thickness of the metal base plate in a thickness direction.
Regarding claim 12, Yuguchi teaches in FIG. 2b, that “base member” (attaching target base) 50, with an upper attachment surface to which the lower surface of the semiconductor module is attached. The base includes a screw SC1 (which, when engaged with the lower base, is a second engagement portion of the attaching target base), which is engageable with the second positioning portion.
Yuguchi does not teach that an outer surface of the protrusion is tapered toward a tip end
It would have been obvious to one having ordinary skill in the art to modify the protrusion taught by Yuguchi such that an outer surface of the protrusion is tapered toward a tip end. One having ordinary skill in the art would be modified to do so in order to, for example, increase the ease of inserting the protrusion into the first engagement portion, as a tapered portion does not require perfect alignment to begin insertion.
Claim(s) 8, 13-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yuguchi (JP 2018190894 A) in view of Karasawa (US 20180076053 A1) in further view of Nakamura (JP 2002009184 A).
Regarding claim 8, as shown above, Yuguchi and Karasawa teach the limitations of claim 1. They do not teach that the second positioning portion has a linear portion in a plan view.
Nakamura teaches, in FIG. 2, pins 52 which have linear portions in a plan view. Paragraph 37 also states that there is a hole (second positioning portion cutout) 32 into which the pins 52 are inserted. Although it is not explicitly shown, one of ordinary skill in the art would appreciate that the cutouts in this case should be made with a linear portion as to properly accept the pins 52.
It would have been obvious to one having ordinary skill in the art to modify the second positioning portion of Yuguchi such that it is formed by a cutout and includes a linear portion in a plan view as taught by Nakamura. One having ordinary skill in the art is motivated to do so in order to, for example, to reduce the profile of the second positioning portion along a certain dimension in order to allow room for other components.
Regarding claim 13, Nakamura further teaches in FIGs. 1 and 6, a pin 52, which corresponds to a hole 32 (paragraph 50) vertically. Furthermore, the pin extends vertically toward the board 4 which has semiconductor elements (and is therefore a semiconductor module, see paragraph 37). The examiner notes that, while Nakamura does not explicitly teach the use of the pin-hole combination as a means of alignment, one of ordinary skill in the art recognizes this as a utility thereof.
It would have been obvious to one of ordinary skill in the art to modify the second engagement portion taught by Yuguchi such that the engagement portion includes a pin, as taught by Nakamura. One having ordinary skill in the art is motivated to do so in order to, for example, increase the durability of the semiconductor module, as an integrated pin is less likely to detach during use when compared to a screw.
Regarding claim 14, Yuguchi further teaches, in FIG. 4, that the second positioning portion which is designed to engage with the second engagement portion is circular.
It would have been obvious to further modify the pin taught by Yuguchi such that the pin is circular, so that it may engage with the second positioning portion. One having ordinary skill in the art is motivated to do so because circular pins are manufacturable at a lower cost than pins with linear portions. The examiner notes that engaging this pin with the second positioning portion would result in the centers of the second positioning portion and the center of the pin to overlap.
Regarding claim 15, Nakamura further teaches, in FIGs. 1 and 6, that an outer surface of the pin is tapered toward a tip end of the pin.
It would have been obvious to one having ordinary skill in the art to further modify the pin of the second engagement portion such that the outer portion of the pin is tapered toward its tip. One having ordinary skill in the art is motivated to do so in order to, for example, allow the pin to more easily engage with the second positioning portion (as the tapered tip allows for a more guided insertion, instead of having to perfectly align the pin with the second engagement portion to begin inserting the pin).
Claim(s) 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Yuguchi (JP 2018190894 A) in view of Nakamura (JP 2002009184 A).
Regarding claim 17, Regarding claim 1, Yuguchi teaches, in FIG. 1b, a semiconductor module with a “plate like metal substrate” (metal base plate) with an upper surface and a bottom surface opposite the top surface, with semiconductor element 24 being mounted on the upper surface. “Potting resin” 40 and “main body” 31 - both making up a case - is bonded to the upper surface of the metal base plate. FIG. 4 shows “protrusion” (first positioning portion) 32 protruding from the bottom of the case toward the metal base plate and a “through hole” (second positioning portion) 33 which overlaps the first positioning portion in a plan view, and the metal base plate has a “through hole” (first engagement portion) 25 with which the first positioning portion is engageable. Yuguchi further teaches in FIG. 2b, that “base member” (attaching target base) 50, with an upper attachment surface to which the lower surface of the semiconductor module is attached. The base includes a screw SC1 (which, when engaged with the lower base, is a second engagement portion of the attaching target base), which is engageable with the second positioning portion.
Yuguchi does not teach that an outer surface of the protrusion is tapered toward a tip end
Nakamura further teaches, in FIGs. 1 and 6, a pin 52, which corresponds to a hole 32 (paragraph 50) vertically. Furthermore, the pin extends vertically toward the board 4 which has semiconductor elements (and is therefore a semiconductor module, see paragraph 37). The examiner notes that, while Nakamura does not explicitly teach the use of the pin-hole combination as a means of alignment, one of ordinary skill in the art recognizes this as a utility thereof.
It would have been obvious to one having ordinary skill in the art to modify the protrusion taught by Yuguchi such that an outer surface of the protrusion is tapered toward a tip end and such that the engagement portion includes a pin, as taught by Nakamura. One having ordinary skill in the art would be modified to do so in order to, for example, increase the ease of inserting the protrusion into the first engagement portion, as a tapered portion does not require perfect alignment to begin insertion (for the tapering of an outer surface of the protrusion) and in order to, for example, increase the durability of the semiconductor module, as an integrated pin is less likely to detach during use when compared to a screw (for the utilization of pins).
Response to Arguments
Applicant’s arguments with respect to claim(s) 1 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. More specifically, the applicant shows FIG. 4 of Karasawa as not having the limitation “a width of the first end portion of the protrusion on a bottom surface side of the metal base plate is narrower than a width of a second end portion of the protrusion on a bottom surface side of the case,” while this limitation is not depicted in FIG. 4, as pointed out by the applicant, Karasawa teaches these limitations in FIGs. 1 and 2, and teaches the benefits of such a structure in [0044] (see the above rejection of amended claim 1 for more detail).
Applicant's arguments filed 7/27/2026 regarding newly presented claim 17 (pages 10-11 of Remarks) have been fully considered but they are not persuasive. The applicant alleges “Nakamura is directed to a high-frequency circuit component (specifically a piezoelectric oscillator . . .” While this is true, Nakamura paragraph 37 was previously cited as teaching the inclusion of semiconductor elements (the following is a quotation of Nakamura paragraph 37: “A conductive pattern of a predetermined shape is formed on the upper and lower surfaces of an insulating substrate such as a ceramic substrate by etching or the like, and a semiconductor integrated circuit, a capacitor, a resistor, and a quartz oscillator are formed on the conductive pattern. Are mounted to form an oscillation circuit.”) showing semiconductor elements and rendering Nakamura’s disclosure as that of a semiconductor device. Furthermore, the applicant alleges “Thus, the components of Nakamura that the examiner relies on in the action, i.e., the lead terminals 52 of lead frame 5 and holes 32 in substrate 3, form an electrical connection: ‘the lead terminal 52 is inserted into the hole 32 and both are soldered, so that lead frame 5 is electrically connected to the electronic components’. That is, the lead terminal 52 of Nakamura is a current-carrying lead of a lead frame, soldered into hole 32 to make an electrical connection. It is not described as a positioning pin, is not located ‘immediately below’ any positioning structure, and serves no alignment role in Nakamura. While the pin taught by Nakamura forms an electrical connection, the apparent intent of the pin to form an electrical connection does not preclude its use to make a physical alignment interconnection (and indeed in many common cases, such as a standard wall-plug, electrical alignment and electrical interconnection are achieved by the same apparatus, as is known by one having ordinary skill in the art), for the same reason, the hole which accepts the pin is equally an alignment structure, as the physical structure has this utility, irrespective of its primary function. See MPEP 2144.01: “’[I]n considering the disclosure of a reference, it is proper to take into account not only specific teachings of the reference but also the inferences which one skilled in the art would reasonably be expected to draw therefrom.’ In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968) . . .”
Further regarding claim 17, the applicant further alleges “The Examiner-suggested motivation, i.e., ‘to increase the durability of the semiconductor module, as an integrated pin is less likely to detach during use when compared to a screw,’ also fails on inspection: the lead terminal 52 of Nakamura is not offered as a substitute for a fastening, as the case 4 is held in place by the convex 43/concave 22 locking means and by solder, not by lead terminal 52.” As explained above, although Nakamura does not explicitly motivate the utilization of the pins as a substitute for a fastening, the relevant factor is that one of ordinary skill in the art recognizes this as an implicit utility of the pin. See MPEP 2143: “. . . In Ball Aerosol v. Ltd. Brands, 555 F.3d 984, 89 USPQ2d 1870 (Fed. Cir. 2009), the Federal Circuit offered additional instruction as to the need for an explicit analysis. The Federal Circuit explained that the Supreme Court’s requirement for an explicit analysis does not require record evidence of an explicit teaching of a motivation to combine in the prior art.” Additionally, the claims as written do not explicitly preclude the utilization of additionally fastening means (such as the locking means 43 and 22 of Nakamura); see MPEP 2111. Therefore, the previously presented motivation to combine (hinging on the advantage of an integrally formed pin over a screw in that an integral component is less likely to detach during operation) stands as a motivation one having ordinary skill in the art at the effective filing date would have to combine Yuguchi with Nakamura to arrive at the invention claimed by previously presented claim 13 and presently presented claim 17. These considerations render the invention of claim 17 as prima facie obvious over the cited prior art.
The examiner notes that new grounds of rejection have been presented for amended claims 1-16, and a previously presented grounds of rejection has been maintained for claim 17 (which was previously presented in dependent form). Therefore, no new grounds of rejection have been presented in this action except where necessitated by amendment, and this action is final. See MPEP 706.07(a): “Second or any subsequent actions on the merits shall be final, except where the examiner introduces a new ground of rejection that is neither necessitated by applicant’s amendment of the claims, nor based on information submitted in an information disclosure statement filed during the period set forth in 37 CFR 1.97(c) with the fee set forth in 37 CFR 1.17(p).”
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 GABRIEL S MINNEY whose telephone number is (571)272-9688. The examiner can normally be reached Monday Friday, 8:30 a.m. 5 p.m. ET.
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, Jacob Choi can be reached at (469) 295-9060. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/G.S.M./Examiner, Art Unit 2897
/JACOB Y CHOI/Supervisory Patent Examiner, Art Unit 2897
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