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 .
Status of Claims
Applicant’s “Claims - 09/26/2023” has not been amended i.e. maintains the original claims. This office action considers claims 1-16 pending for further prosecution.
Response to Arguments
Applicant's arguments in “Remarks - 02/17/2026 - Applicant Arguments/Remarks Made in an Amendment”, have been fully considered, but they are not persuasive.
Firstly, it is noted that the features upon which applicant relies i.e. “The Merriam Webster Webster's Third New International Dictionary, where the noun "sense" is defined at 6b as "one of two opposite directions in which a line, surface, or region may be supposed to be described by the motion of a point, line, or surface," demonstrates the well- known nature of this use of "sense”. (remarks on page 2); these limitations are not recited in any one of the rejected claims 1-16, and cannot be considered as limitations unless those are recited in the claim(s). Although the claims are interpreted in light of the specification, limitations from the specification or dictionaries are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). It is noted with emphasis that instant claims are device claim, whereas applicant erroneously cited abstract concept of sense to discredit the features of the instant office action.
Secondly, the claim 1 is found indefinite because it is unclear what is first or second sense? Is it abstract perception in a device claim? And how relevant first/second sense are quantified, measured or compared? For example, examiner fails to ascertain how in the limitations, “the second lead being spaced apart from the first lead in a first sense of a first direction orthogonal to the thickness direction” or in “the second lead includes a second main part offset in the first sense of the first direction with respect to the first-direction middle plane” will be evaluated? Therefore, the resulting claim is indefinite and is failing to particularly point out and distinctly claim the subject matter.
Finally, as per MPEP § 2173. 06.II (second option) wherein In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
As claims 1-16, have not been amended, and Applicant's arguments are not persuasive, this Office Action maintains the rejection under 35 U.S.C. 112(b) (see infra) for reasons of record.
Claim Rejections - 35 USC § 112
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.
Claims 1-16 are rejected under 35 U.S.C. 112(b) as being indefinite and non-functional for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Regarding claim 1. The instant claim, recites the limitation, “facing in a first sense and a second sense of a thickness direction; a second lead including a second obverse surface and a second reverse surface respectively facing in the first sense and the second sense of the thickness direction, the second lead being spaced apart from the first lead in a first sense of a first direction orthogonal to the thickness direction; a first semiconductor element disposed on the first obverse surface, and a second semiconductor element disposed on the second obverse surface; and a sealing resin covering a part of the first lead, a part of the second lead, the first semiconductor element and the second semiconductor element, wherein the first semiconductor element includes a first element side surface facing in the first sense of the first direction, and the second semiconductor element includes a second element side surface facing in a second sense of the first direction, the first lead includes: a first main part offset in the second sense of the first direction with respect to a first-direction middle plane of the sealing resin, the first-direction middle plane being equidistant in the first direction from the first element side surface of the first semiconductor element and the second element side surface of the second semiconductor element; and a first extending part extending from the first main part in the first sense of the first direction, and the second lead includes a second main part offset in the first sense of the first direction with respect to the first-direction middle plane.
The claim is indefinite because it is unclear what is first or second sense? Is it abstract perception in a device claim? And how relevant first/second sense are quantified, measured or compared? For example, examiner fail to ascertain how in the limitations, “the second lead being spaced apart from the first lead in a first sense of a first direction orthogonal to the thickness direction” or in “the second lead includes a second main part offset in the first sense of the first direction with respect to the first-direction middle plane” will be evaluated? Therefore, the resulting claim is indefinite and is failing to particularly point out and distinctly claim the subject matter.
The specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, whereby the claims are rendered indefinite. Therefore, the resulting claim is indefinite and is failing to particularly point out and distinctly claim the subject matter. Examiner could not ascertain the meaning of terms employed in claim 1 or assumptions that must be made as to the scope of the claims without considerable speculation.
Appropriate clarification and/or correction are/is required within metes and bounds of the claimed invention.
Regarding Claim 10-12 and 15-16, these are rejected under 35 U.S.C. 112 (b), because of their dependency status from claim 1 and/or of intervening claims.
Regarding Claims 2-9 and 13-14, these are rejected under 35 U.S.C. 112 (b), because of its dependency status from claim 1 and/or intervening claims, and further because the metes and bounds of the claimed invention, in these claims, are vague and ill-defined, as a result of limitation “ first and second sense”. Examiner could not ascertain the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims without considerable speculation. Appropriate clarification and/or correction are/is required within metes and bounds of the claimed invention.
As there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of claims 1-16, it would not be proper for the examiner to reject such a claim on the basis of prior art. See MPEP § 2173. 06.II (second option) wherein In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Moazzam Hossain whose telephone number is (571)270-7960. The examiner can normally be reached on Mon to Friday 8.30 A.M -5.00 P.M.
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, Julio J. Maldonado can be reached on 571-272-1864. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOAZZAM HOSSAIN/Primary Examiner, Art Unit 2898
April 8, 2026
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