Prosecution Insights
Last updated: April 19, 2026
Application No. 18/480,273

SEMICONDUCTOR DEVICE

Non-Final OA §103§112
Filed
Oct 03, 2023
Examiner
YUSHINA, GALINA G
Art Unit
2811
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Rohm Co. Ltd.
OA Round
1 (Non-Final)
79%
Grant Probability
Favorable
1-2
OA Rounds
2y 5m
To Grant
96%
With Interview

Examiner Intelligence

Grants 79% — above average
79%
Career Allow Rate
838 granted / 1059 resolved
+11.1% vs TC avg
Strong +17% interview lift
Without
With
+17.2%
Interview Lift
resolved cases with interview
Typical timeline
2y 5m
Avg Prosecution
38 currently pending
Career history
1097
Total Applications
across all art units

Statute-Specific Performance

§101
0.1%
-39.9% vs TC avg
§103
47.7%
+7.7% vs TC avg
§102
13.9%
-26.1% vs TC avg
§112
35.4%
-4.6% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1059 resolved cases

Office Action

§103 §112
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 Claims 1-17 are examined on merits herein. Drawings The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the following must be shown or the feature(s) canceled from the claim(s). “the first wire includes a first portion that extends from an inside of the first electrode”, as Claim 1 recites (e.g., a disposition of a first portion inside the first electrode must be shown, since, currently, the first portion 514 of the first wire 51 is clearly shown as being disposed on a surface of the first electrode. “an inner portion located inside the outer peripheral portion”, as Claim 17 recites. No new matter should be entered. 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 disclosure is objected to because of the following informalities: Paragraph 0045 of the published application, US 2024/0030298, referring to Fig. 8, state that an inner portion 4052 of a groove 405 (in an electrode 401) is located inside an outer portion 4051. The recitation contradicts to figures of the application, teaching that an inner portion 4052 is not disposed inside outer portion 4051, but is separated from outer portion 4051 and is disposed further from an edge of the first electrode than the outer portion 4051. The examiner suggests that the applicant meant to say that an inner portion of a groove is located further from an edge of an electrode than an outer portion of the groove However, a limitation of the originally filed Claim 17 is based on paragraph 0045. Paragraphs 0073 and 0103 state that a first portion 514 of a first wire 51 extends from an inside of the first electrode 401. The recitations are not supported by figures of the application and by other paragraphs, teaching that the first portion 514 is separated from the first electrode 401 by a bonding portion 511. – see annotated Fig. 7 of the application with a first electrode 401 and a first wire 51 below PNG media_image1.png 213 689 media_image1.png Greyscale Please, be reminded that the recitations of paragraphs 0073 and 0103 are repeated in the originally filed Claim 1. Appropriate corrections are required. 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 1-17 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. In re Claims 1 and 6: Claim 1 has a limitation (lines 10-12): “the first wire includes a first portion that extends from an inside of the first electrode towards an outside of the first electrode”, while Claim 6, dependent on Claim 1, recites: “the first wire includes a bonding portion joining to the first electrode, and the first portion is joined to the bonding portion”. A combination of recitations of Claims 1 and 6 is unclear, since Claim 6 is clearly directed to a bonding portion 511 of the first wire joining the first electrode 401 and located on the first electrode 401, not inside it, while the first portion 514 of the first wire 51 is disposed further from the first electrode 401 than the bonding portion 511, and, accordingly, it cannot extend from an inside of the first electrode. Appropriate correction is required to clarify the claim language. For this Office Action, the cited limitation of Claim 1 was interpreted as: “the first wire includes a first portion disposed over a central part of the first electrode and extended to over an edge of the first electrode”, while Claim 6 was interpreted as originally filed. In re Claim 2: Claim 2 recites (lines 2-4): “a distance from the first electrode to a portion of the covering portion that is the farthest from the covering portion is larger”. The recitation is unclear, since the current application teaches no portion of the covering portion that is separated from the covering portion. Appropriate correction is required. For this Office Action, based on the specification of the application, the cited recitation was interpreted as: “a farthest distance from the first electrode to a portion of the covering portion is larger”. In re Claim 17: Claim 17 recites: “the groove portion includes an inner portion located inside the outer peripheral portion”. The recitation is unclear, as is shown in objection to paragraph 0045 of the specification (see above). Appropriate correction is required to clarify the claim language. For this Office Action, the cited limitation was interpreted as: “the groove portion includes an inner portion located further from a side edge of the first electrode than the outer peripheral portion”. In re Claims 3-14 and 15-16: Claims 3-14 and 15-16 are rejected under 35 U.S.C. 112(b) due to dependency on Claim 1. 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. As far as the claims are understood, Claims 1-8 and 11-14 are rejected under 35 U.S.C. 103 as being unpatentable over Ito (US 2019/0043827). In re Claim 1, Ito teaches a semiconductor device comprising (Fig. 9): a semiconductor element 2 (paragraph 0029) that includes an element body (between electrodes 21 and 22) containing a semiconductor (paragraph 0033), and a first electrode 22 (paragraph 0036) disposed on the element body; a first wire 3 (paragraph 0029) joined to the first electrode 22; a sealing resin 5 (paragraph 0029) that covers the semiconductor element 2 and the first wire 3, and a covering portion 4 (paragraph 0029) interposed between the first electrode 22 and the sealing resin 5, wherein the first wire 3 includes a first portion that extends from an inside of the first electrode toward an outside of the first electrode as viewed in a thickness direction of the semiconductor element (e.g., in accordance with the claim interpretation), the covering portion 4 contains a material (such as a resin with a metal filler or a metallic material such as tin alloy, paragraph 0045) having a higher elastic modulus than the sealing resin 5 (which is made from silicone gel, paragraph 0048), and the covering portion 4 is in contact with the first portion of the first wire 3. Ito does not state that the covering portion 4 has a thermal conductivity higher than that of the sealing resin 5, Ito teaches only ratios of elastic modulus of these materials. However, there are arts (see, for example, Rabst, NPL, paragraph 2.3) teaching that a thermal conductivity of a material is proportional to elastic modulus of this material. Accordingly, it would have been inherent (and/or obvious) for the Ito device that the covering portion has a higher thermal conductivity than that of the sealing reason. Please, be advised that it is also known in the art that when a stack of two materials covers a heat generating element, a material with a higher thermal conductivity shall be disposed closer to the heat generating element than another material of the stack, in order to increase heat dissipation from this element: see Fig. 1 and paragraph 0072 of Ishimaru, US 2005/0045369, on this common knowledge in the art. In re Claim 2, Ito teaches the semiconductor device of Claim 1 as cited above. Ito further teaches (Fig. 9) that, in the thickness direction, a distance from the first electrode 22 to a portion of the covering portion 4 that is the farthest from the covering portion is larger than a distance from the first electrode 22 to a portion of the first portion of wire 3 that is the farthest from the first electrode 22 (e.g., the portion of the first wire was identified as is shown in the claim interpretation). In re Claim 3, Ito teaches the semiconductor device of Claim 2 as cited above, wherein (Fig. 9) the covering portion 4 covers at least a part of the first portion (of wire 3) from a side opposite to the semiconductor element 2 in the thickness direction. In re Claim 4, Ito teaches the semiconductor device of Claim 1 as cited above, wherein (Fig. 9) the first wire 3 includes a second portion – as a portion from a point of exiting material 4 to a highest point of wire 3 - that is linked to the first portion on a side opposite to the first electrode 22 and stands substantially upright in the thickness direction on a side away from the semiconductor element 2. Although the Ito’ second portion of the first wire is not shown as being disposed “explicitly” upright, such as under angle of about 90 degrees to a top surface of the semiconductor element, a disposition of the second portion of wire “explicitly” upright or “substantially” upright - is a designer choice and, as such, it is not patentable. In addition, a disposition of a portion of a wire “upright” is known in the art and is shown, for example in a portion of wire 110 directly above a bonding bump 112 in Fig. 1 of Sahasrabudhe (US 2011/0068446). In re Claim 5, Ito teaches the semiconductor device according to Claim 1 (see Annotated Fig. 9), Annotated Fig. 9 PNG media_image2.png 229 547 media_image2.png Greyscale wherein (Fig. 9 and Annotated Fig. 9) the first wire 3 includes a bonding portion 31 joined to the first electrode 22 (paragraph 0037), and the first portion – First portion – as in Annotated Fig. 9, which is a portion within covering portion 4 between two dash lines - is integrally linked to the bonding portion 31 In re Claim 6, Ito teaches the semiconductor device according to Claim 1, wherein (Fig. 9 and Annotated Fig. 9) the first wire 3 includes a bonding portion 31 joined to the first electrode 11, and the first portion – First portion – as in Annotated Fig. 9, which is a portion within covering portion 4 between two dash lines - is joined to the bonding portion 31. In re Claim 7, Ito teaches the semiconductor device of Claim 1 as cited above, wherein (Fig. 9, paragraph 0037) the first portion (of wire 3) is joined to the first electrode 22. In re Claim 8, Ito teaches the semiconductor device according to Claim 1, wherein (Fig. 9) the covering portion 4 contains a metal – such as tin (paragraph 0045) In re Claim 11, Ito teaches the semiconductor device according to Claim 8, wherein (Fig. 9) the first electrode 22 contains Al (paragraph 0036). In re Claim 12, Ito teaches the semiconductor device according to Claim 11, wherein (Fig. 9) the first wire 3 contains Cu (paragraph 0037). In re Claim 13, Ito teaches the semiconductor device according to Claim 1, wherein (Fig. 9) the first electrode 22 includes a groove portion 23 (paragraph 0068) that is in contact with the covering portion 4. In re Claim 14, Ito teaches the semiconductor device according to Claim 13, wherein (Fig. 9) the first electrode 22 includes a first layer – as layer 22, and the groove portion 23 is formed by recessing a portion of the first layer 22. As far as the claims are understood, Claims 9-10 are rejected under 35 U.S.C. 103 as being unpatentable over Ito in view of Kajiwara et al. (US 2014/0264383). In re Claim 9, Ito teaches the semiconductor device according to Claim 8 as cited above, including the covering portion that may contain metal (per paragraph 0045), but does not explicitly teach that the covering portion contains Ag or Cu. Kajiwara teaches (Fig. 2) an electrode 1b separated from a sealing resin 14 (paragraph 0071) by a covering portion 16 comprised sintered Ag (paragraph 0057). Ito and Kajiwara teach analogous arts directed to a semiconductor device comprised a semiconductor element covered by a sealing resin, and one of ordinary skill in the art before filing the application would have had a reasonable expectation of success in modifying the Ito device in view of Kajiwara device since they are from the same field of endeavor, and Kajiwara created a successfully functioning device. It would have been obvious for one of ordinary skill in the art before filing the application to modify the Ito device by substituting its metallic material used for the covering portion with the sintered Ag (per Kajiwara), inherently having a higher thermal conductivity than the Ito sealing resin (as required by Claim 1), wherein such material is preferred for the manufacturer. See MPEP 2144.05 and MPEP 2143 on a Conclusion of Obviousness: KSR Rational (B): Simple Substitution of One Known Element for Another to Obtain Predictable Results. In addition, “It has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice”, In re Leshin, 125 USPQ 416. In re Claim 10, Ito/Kajiwara teaches the semiconductor device according to Claim 9 as cited above and wherein the covering portion contains sintered Ag. As far as the claims are understood, Claim 15 are rejected under 35 U.S.C. 103 as being unpatentable over Ito in view of Yu et al. (US 2008/0305306) and Yu et al. (US 2005/0077601) – Yu-1, hereafter. In re Claim 15, Ito teaches the semiconductor device according to Claim 13 as cited above including the groove in the first electrode. Ito further teaches (Fig. 9) that the first electrode 22 includes a second layer (as aluminum alloy, paragraph 0036), and a first layer – such as coating, the second layer interposed between the element body and the first layer and is in contact with the first layer. Ito does not teach that the groove portion is constituted by a slit formed in the first layer and the second layer is exposed from the slit. Yu teaches (Figs. 4-5) a groove 70 formed layer 60 (paragraph 0031), where the groove is constituted by a slit (Abstract) extending along an edge of the layer. Yu-1 teaches (paragraph 0158) that a patterned surface reduces a thermal resistance (and, accordingly, increases a heat flow between interfacing layers, e.g., increases a heat transfer; see also paragraphs 0055-0063). Ito, Yu, and Yu-1 teach analogous arts directed to a groove in a layer or to a patterned surface, and one of ordinary skill in the art before filing the application would have had a reasonable expectation of success in modifying the Ito device in view of the Yu and Yu-1 teachings, since they are from the same field of endeavor and Yu and Yu-1 created successfully operated devices. It would have been obvious for one of ordinary skill in the art before filing the application to modify the Ito device by creating each groove as a slit (per Yu) extending along a side of the electrode, wherein it is desirable to increase a heat transfer from the electrode (per Yu-1). It would have been further obvious for one of ordinary skill in the art before filing the application (in view of Yu-1) that deeper slits allow a better heat transfer. In view of this, it would have been obvious for one of ordinary skill in the art before filing the first layer and to expose the second layer in the slit, if such slit is desirable for a better heat transfer from the first electrode. As far as the claims are understood, Claims 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over Ito in view of Yu. In re Claim 16, Ito teaches the semiconductor device according to Claim 13, wherein (Fig. 9) the groove portion 23 includes an outer peripheral portion – which is closest to a sidewall of electrode 22. Ito does not teach that the groove extending along an outer edge of the first electrode. Yu teaches (Figs. 4-5) a groove 70 formed layer 60 (paragraph 0031), where the groove extending along an edge of the layer 60. It would have been obvious for one of ordinary skill in the art before filing the application to modify the groove of Ito per Yu allowing it to extend along the outer edge of the first electrode, if such shape of the groove is desired by the manufacturer. However, in accordance with MPEP 2144.04. I.B, referencing In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966), the court held that changes in shape is not patentable since this is a matter of choice of a person of ordinary skill in the art in absent persuasive evidence that the particular configuration is significant. In re Claim 17, Ito/Yu teaches the semiconductor device according to Claim 16 as cited above. Ito further teaches (Fig. 9) that the groove portion includes an inner portion 23 located inside the outer peripheral portion (e.g., in accordance with the claim interpretation). Conclusion Any inquiry concerning this communication should be directed to GALINA G YUSHINA whose telephone number is 571-270-7440. The Examiner can normally be reached between 8 AM - 7 PM Pacific Time (Flexible). Examiner interviews are available. 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, Lynne Gurley can be reached on 571-272-1670. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300; a fax phone number of Galina Yushina is 571-270-8440. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center - for more information about Patent Center and visit https://www.uspto.gov/patents/docx - for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /GALINA G YUSHINA/Primary Patent Examiner, Art Unit 2811, TC 2800, United States Patent and Trademark Office E-mail: galina.yushina@USPTO.gov Phone: 571-270-7440 Date: 12/05/25
Read full office action

Prosecution Timeline

Oct 03, 2023
Application Filed
Dec 14, 2025
Non-Final Rejection — §103, §112 (current)

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Prosecution Projections

1-2
Expected OA Rounds
79%
Grant Probability
96%
With Interview (+17.2%)
2y 5m
Median Time to Grant
Low
PTA Risk
Based on 1059 resolved cases by this examiner. Grant probability derived from career allow rate.

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