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 .
DETAILED ACTION
All the references cited in the International Search Report have been considered. None is anticipatory or meet the amended claims. The most pertinent of these references have been applied below.
Election/Restrictions
The applicant has elected the species of claims 1, 4-6, 9-18, 31-33, and 111 without explicit traverse, and no argument appears to be submitted to point out any error in the last action. Applicant’s election in the reply is acknowledged. Because applicant did not distinctly and specifically point out the supposed errors in the restriction requirement, the election has been treated as an election without traverse (MPEP § 818.03(a)).
New claim 11 is supported by the original claims.
This restriction is made FINAL. See previous action for the reasons of applying restriction.
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.
Claim(s) 1-6 and 8-18 (is)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, or for pre-AIA the applicant regards as the invention.
Regarding claims 4-5, the phrase "such as” and “for example” render the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Claim 18 appears to be an inappropriate Markush claim based on the claim language; moreover, the claimed second structure appears to comprise one or more of components of “semiconductor structure, copper, copper(II) oxide, copper(II) hydroxide, nickel, nickel(II) oxide, etc.” according to instant pgpub [0146-0158], not all the components as claimed.
Claim Rejections - 35 USC § 102
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.
Claim(s) 111 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Shoji et al. (US 20180203353).
Shoji (claims, abs., 116, Tables 1-2, examples) discloses a polyimide film (or coating) for semiconductor device comprising 2,2-bis(3-amino-4-hydroxyphenyl)hexafluoropropane (a diamine comprising hydroxyl functionality) ,RT-1000 (a polyether containing diamine), 1,3-bis(3-aminopropyl)tetramethyldisiloxane a diamine comprising siloxane functionality), and 4,4′-oxydiphthalic anhydride.
Shoji is silent on the intended use of "adhesion promoting layer” and “package” of claim 111. Case law holds that a recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim. See MPEP 2111.02, In re Casey, 152 USPQ 235 (CCPA 1967) and In re Otto, 136 USPQ 458,459 (CCPA 1963). In this particular case, no compositional difference between the claimed and disclosed polyimide coating, and the disclosed polyimide coating would inherently be capable of performed the claimed intended use.
Claim(s) 1, 4-5, 15-18, and 111 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Kobayashi et al. (JP 2022107393, listed on IDS and ISR).
As to claims 1, 4-5, 15, and 111, Kobayashi (claims, abs., Ex.1 and 4, Tables 1-2, 7, 44-47) discloses a polyimide adhesion layer (13 microns) between epoxy and copper for semiconductor device package comprising DA-1 DA-7 (a diamine comprising amide functionality), and CA-3:
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. The claimed intended use of " promoting ” are met by the same rationale of ¶1.
Claim(s) 1, 4-6, 9-11, 16, 18, and 111 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Hsiao et al. (US20220340722, listed on IDS and ISR).
As to claims 1, 4-6, 9-11, 16, 18, and 111, Hsiao (claims, abs., 6, 83, 90-99, 140, Tables 1-2, examples) discloses a polyimide for improving adhesion between copper and glass and for semiconductor device package having a thickness of 10-80 microns. The polyimides comprising BPDAs and a mixture of benzoxazole and benzimidazole diamines:
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In light of this, one of ordinary skill would at once envisage selecting 5-amino-2-(4-aminophenyl)benzoxazole out of 4 candidates to anticipate claim 10; 5-amino-2-(4-aminophenyl)benzimidazole out of 4 candidates to anticipate claim 11, because a genus may be so small that, when considered in light of the totality of the circumstances, it would anticipate the claimed species or subgenus. For example, it has been held that a prior art genus containing only 20 compounds and a limited number of variations in the generic chemical formula inherently anticipated a claimed species within the genus because “one skilled in [the] art would... envisage each member ” of the genus. In re Petering, 301 F.2d 676, 681, 133 USPQ 275, 280 (CCPA 1962).
The intended use of rationale of ¶1 may apply to meet the claims.
Claim(s) 111 is(are) rejected under 35 U.S.C. 102(a)(1) as being anticipated by Maeda et al. (JP2008085130 listed on IDS and ISR).
Maeda (claims, abs., Tables 1-2, examples A-C) discloses a polyimide film (or coating) for semiconductor device comprising 5-amino-2-(p-aminophenyl)benzooxazole and PMDA.
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The claimed intended use of "adhesion promoting layer” and “package” are met by the same rationale of ¶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 of this title, 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.
Claim(s) 12-15 is (are) rejected under 35 U.S.C. 103 as being unpatentable over Hsiao et al. (US20220340722, listed on IDS and ISR).
Disclosure of Hsiao is adequately set forth in ¶3 and is incorporated herein by reference.
As to claims 12-14, one of ordinary skill in the art would obviously recognize to apply a mixture of 5-amino-2-(4-aminophenyl)benzoxazole and 5-amino-2-(4-aminophenyl)benzimidazole at a molar ratio of 40:60, 30:70, and 50:50 as a routine laboratory or manufacturing process to optimize the strength of both said diamine comonomers.
As to claim 15, the disclosed thickness overlapping with the claimed range. It has been found that where claimed ranges overlap ranges disclosed by the prior art, a prima facie case of obviousness exists - see MPEP 2144.05 I. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Therefore, it would have been obvious to one skilled in the art to have created/selected the claimed compositional elements from the composition disclosed in the Hsiao since it discloses all applicants' components, values and methods of making.
Claim(s) 31-33 (are) rejected under 35 U.S.C. 103(a) as being unpatentable over Hsiao et al. (US20220340722, listed on IDS and ISR) in view Saito et al. (WO 2022014387, US 2023026831 as English equivalent).
Disclosure of Hsiao is adequately set forth in ¶3 and 5 and is incorporated herein by reference.
Hsiao is/are silent on the claimed wide bandgap semiconductor devices. Hsiao (98) further discloses the metal-clad laminate having a polyimide film is particularly useful for die pad bonding of flexible print connection boards or semiconductor devices or packaging materials for chips.
Saito (1-3, 50-60, abs, figures) discloses if the position of the silicon carbide based MOSFET is displaced with respect to the die pad, the bonding area of the metal clip with respect to the gate electrode may be reduced.
Therefore, as to claims 31-32, it would have been obvious to one of ordinary skill in the art to have modified the die pad bonding process disclosed by Hsiao and applied the process to bonding silicon carbide based MOSFET in view of Saito, because the resultant process would yield reduced bonding area of the metal clip with respect to the gate electrode.
As to claim 33, the components of submount; a die-attach material, die attached to the submount, and encapsulating (sealing material are well known components in wide bandgap semiconductor device, as evidenced by Saito (abs, figures, examples, claims).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHANE FANG whose telephone number is (571)270-7378. The examiner can normally be reached on Mon-Thurs. 8am-6pm. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Randy Gulakowski can be reached on 571.572.1302. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SHANE FANG/Primary Examiner, Art Unit 1766
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