Prosecution Insights
Last updated: April 18, 2026
Application No. 18/556,641

SEMICONDUCTOR POWER MODULE AND METHOD FOR MANUFACTURING A SEMICONDUCTOR POWER MODULE

Non-Final OA §102§103§112
Filed
Oct 20, 2023
Examiner
LINDSEY, COLE LEON
Art Unit
2812
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Hitachi Energy Ltd.
OA Round
1 (Non-Final)
89%
Grant Probability
Favorable
1-2
OA Rounds
2y 11m
To Grant
99%
With Interview

Examiner Intelligence

Grants 89% — above average
89%
Career Allow Rate
103 granted / 116 resolved
+20.8% vs TC avg
Moderate +13% lift
Without
With
+12.8%
Interview Lift
resolved cases with interview
Typical timeline
2y 11m
Avg Prosecution
34 currently pending
Career history
150
Total Applications
across all art units

Statute-Specific Performance

§103
55.8%
+15.8% vs TC avg
§102
27.2%
-12.8% vs TC avg
§112
15.1%
-24.9% vs TC avg
Black line = Tech Center average estimate • Based on career data from 116 resolved cases

Office Action

§102 §103 §112
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 . Claim Objections Claim 12 objected to because of the following informalities: Examiner notes that the reference numbers in claim 12 were not removed as they were in all the other claims amended claims. Examiner suggests removing reference numerals in claim 12 for consistency. Claims 12-14 objected to because of the following informalities: the descriptions for the manner of formation of the recess, “mechanical/thermal/chemical” would more naturally read as “mechanically/thermally/chemically.” Appropriate correction is 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. The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph: The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Claims 5-6 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 5 recites the limitation "the penetrating groove" and “the groove” in lines 2-3. There is insufficient antecedent basis for this limitation in the claim and so the claim is unable to be examined on the merits. Claim 6 recites the limitation "the groove" in line 3. There is insufficient antecedent basis for this limitation in the claim. In the interest of compact prosecution, examiner will assume “the groove” should not be present and interpret the claim to read as “The semiconductor power module according to claim 4, comprising at least one of a filling or a coating inside the penetrating groove.” 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. Claims 1-2, 4, and 6-10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Saito et al. (US20130010440A1, hereinafter Saito). Regarding claim 1, Saito discloses a semiconductor power module, comprising: a leadframe or substrate (Fig. 1 substrate 2), and a resin body coupled to the leadframe or substrate including at least a first resin element and a second resin element (Fig. 1 leftmost portion of second resin 8 and central portion of first resin 7 are both coupled to substrate 2), wherein the first and second resin elements are arranged laterally adjacent to each other with respect to a lateral direction of the semiconductor power module (Fig. 1 leftmost portion of second resin 8 and central portion of first resin 7 are arranged laterally adjacent to each other) and wherein a resin material of the first resin element is different from a resin material of the second resin element (Par. 32 “the electronic part mount area 14 is filled with an epoxy resin as a first resin 7, and the bonding area 15 is filled with a silicone gel as a second resin 8“) and wherein the first resin element and the second resin element are separated in part at least with respect to surface areas facing each other by means of a recess in form of a groove providing at least a partial free space between the first and second resin elements (Fig. 1 leftmost portion of second resin 8 and central portion of first resin 7 are separated in part by means of a space between them in which the partition 9 is disposed). Regarding claim 2, Saito discloses the semiconductor power module according to claim 1 wherein at least one of the resin material of the first resin element or the resin material of the second resin element comprises a thermosetting resin (Par. 51 “The two types of resins mentioned above are selected so that both of them can be cured at a same curing temperature” and so the at least one of the leftmost portion of second resin 8 and central portion of first resin 7 are thermosetting resins). Regarding claim 4, Saito discloses the semiconductor power module according to claim 1, wherein the recess is formed as a penetrating groove such that the entire surface areas facing each other are separated from each other (Fig. 1 leftmost portion of second resin 8 and central portion of first resin 7 are separated by a penetrating groove that is filled with partition plate 9 and the surface areas of leftmost portion of second resin 8 and central portion of first resin 7 that face each other area separated by partition plate 9). Regarding claim 6, Saito discloses the semiconductor power module according to claim 4, comprising at least one of a filling or a coating inside the penetrating groove (Fig. 2 the recess between leftmost portion of second resin 8 and central portion of first resin 7 is filled with partition plate 9). Regarding claim 7, Saito discloses The semiconductor power module according to claim 1, wherein the resin body further comprises a third resin element with a resin material that is different from the resin material of at least one of the first resin element or the second resin element (Fig. 1 rightmost portion of second resin 8 par. 32 “the electronic part mount area 14 is filled with an epoxy resin as a first resin 7, and the bonding area 15 is filled with a silicone gel as a second resin 8“ so rightmost portion of second resin 8 has a different resin material than central portion of first resin 7) and wherein the first resin element, the second resin element and the third resin element all are separated in part at least with respect to surface areas facing each other by means of a recess respectively (Fig. 1 leftmost portion of second resin 8 is separated from central portion of first resin 7 by a recess filled by left partition plate 9 and rightmost portion of second resin 8 is separated from central portion of first resin 7 by a recess filled by right partition plate 9). Regarding claim 8, Saito discloses the semiconductor power module according to claim 1, further including terminal connections coupled to the leadframe or substrate (Fig. 7 terminals 181-183 coupled to power module 1), and electronics which is coupled with at least one of the terminal connections (Fig. 1 power semiconductor element 41 coupled to terminals 181-183). Regarding claim 9, Saito discloses a method for manufacturing a semiconductor power module providing a leadframe or substrate (Fig. 1 substrate 2), and forming a resin body coupled to the leadframe or substrate, wherein the resin body includes at least a first resin element and a second resin element (Fig. 1 leftmost portion of second resin 8 and central portion of first resin 7 are both coupled to substrate 2), wherein the first and second resin elements are arranged laterally adjacent to each other with respect to a lateral direction of the semiconductor power module (Fig. 1 leftmost portion of second resin 8 and central portion of first resin 7 are arranged laterally adjacent to each other)and wherein a resin material of the first resin element is different from a resin material of the second resin element (Par. 32 “the electronic part mount area 14 is filled with an epoxy resin as a first resin 7, and the bonding area 15 is filled with a silicone gel as a second resin 8“), and wherein the first resin element and the second resin element are separated in part at least with respect to surface areas facing each other by means of a recess in form of a groove providing at least a partial free space between the first and second resin elements (Fig. 1 leftmost portion of second resin 8 and central portion of first resin 7 are separated in part by means of a space between them in which the partition 9 is disposed). Regarding claim 10, Saito discloses the method according to claim 9, wherein the step of forming the resin body comprises: providing a substance in the form of a mold compound resin (Par. 50 “[t]he silicone gel used as the second resin 8”), and applying the provided substance on the leadframe or substrate and thereby forming the first resin element and/or the second resin element by means of transfer molding, injections molding and/or compression molding (Par. 48 “the bonding area is filled with a silicone gel as a second resin 8 in a fourth process P103”). 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. Claims 3 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Saito (US20130010440A1) in view of Sannai et al. (US20210225740A1, hereinafter Sannai). Regarding claim 3, Saito teaches the semiconductor power module according to claim 1. Saito does not appear to teach wherein at least one of the resin material of the first resin element or the resin material of the second resin element comprises a potting resin. Sannai teaches wherein at least one of the resin material of the first resin element or the resin material of the second resin element comprises a potting resin (Par. 71 “The sealing material provided in the groove 51 is an epoxy resin or silicone gel for example… [and t]he sealing material is provided by potting”). Being in analogous arts, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Saito with the teachings of Sannai because as both Saito and Sannai teach a suitable method for forming a sealing resin, it would have been obvious to substitute Saito’s thermosetting resin with Sannai’s potting resin achieve the predictable result of forming a sealing resin through potting. Regarding claim 11, Saito teaches the method according to claim 9. Saito does not appear to teach wherein the forming the resin body comprises: providing a substance in the form of a potting resin, and applying the provided substance on the leadframe or substrate and thereby forming at least one of the first resin element or the second resin element by means of potting. Sannai teaches providing a substance in the form of a potting resin, and applying the provided substance on the leadframe or substrate and thereby forming at least one of the first resin element or the second resin element by means of potting (Par. 71 “The sealing material provided in the groove 51 is an epoxy resin or silicone gel for example… [and t]he sealing material is provided by potting”). Being in analogous arts, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Saito with the teachings of Sannai because as both Saito and Sannai teach a suitable method for forming a sealing resin, it would have been obvious to substitute Saito’s thermosetting resin with Sannai’s potting resin achieve the predictable result of forming at least one of the first resin element or the second resin element by means of potting. Allowable Subject Matter Claims 12-14 objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. The following is a statement of reasons for the indication of allowable subject matter: Regarding claim 12. The closest prior art (US20130010440A1, US20210225740A1, US20190157190A1) teaches the method according to claim 9. However, the closest prior art does not teach in combination with the other claimed elements wherein the forming the resin body comprises: mechanical forming the recess in the form of a penetrating groove (5) or a groove (6) by means of at least one of cutting, sawing or milling subsequent to the forming of the first resin element (1) and the second resin element (2). Examiner notes that while there are embodiments within the prior art, see Saito fig. 1, that teach resins formed separated from each other by a recess by having partition plates 9 in place before molding, examiner's search of the prior art did not find an embodiment nor any motivation to combine embodiments such that the recess is formed by means of at least one of cutting, sawing or milling subsequent to the forming of the first resin element and the second resin element in addition with the other limitations of the independent claim. Regarding claim 13, the closest prior art (US20130010440A1, US20210225740A1, US20190157190A1) teaches the method according to claim 9. However, the closest prior art does not teach in combination with the other claimed elements wherein the forming the resin body comprises: thermal forming the recess in the form of a penetrating groove or a groove by means of laser cutting subsequent to the forming of the first resin element and the second resin element. Examiner notes that while there are embodiments within the prior art, see Saito fig. 1, that teach resins formed separated from each other by a recess by having partition plates 9 in place before molding, examiner's search of the prior art did not find an embodiment nor any motivation to combine embodiments such that the recess is formed by means of laser cutting subsequent to the forming of the first resin element and the second resin element in addition with the other limitations of the independent claim. Regarding claim 14, the closest prior art (US20130010440A1, US20210225740A1, US20190157190A1) teaches the method according to claim 9. However, the closest prior art does not teach in combination with the other claimed elements wherein the forming the resin body comprises: chemical forming the recess in the form of a penetrating groove or a groove by means of etching subsequent to the forming of the first resin element and the second resin element. Examiner notes that while there are embodiments within the prior art, see Saito fig. 1, that teach resins formed separated from each other by a recess by having partition plates 9 in place before molding, examiner's search of the prior art did not find an embodiment nor any motivation to combine embodiments such that the recess is formed by means of etching subsequent to the forming of the first resin element and the second resin element in addition with the other limitations of the independent claim. Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to COLE LEON LINDSEY whose telephone number is (571)272-4028. The examiner can normally be reached Monday - Friday, 8:00 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, Christine Kim can be reached at (571)272-8458. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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 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. /COLE LEON LINDSEY/Examiner, Art Unit 2812 /CHRISTINE S. KIM/Supervisory Patent Examiner, Art Unit 2812
Read full office action

Prosecution Timeline

Oct 20, 2023
Application Filed
Dec 20, 2025
Non-Final Rejection — §102, §103, §112
Apr 03, 2026
Response Filed

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

1-2
Expected OA Rounds
89%
Grant Probability
99%
With Interview (+12.8%)
2y 11m
Median Time to Grant
Low
PTA Risk
Based on 116 resolved cases by this examiner. Grant probability derived from career allow rate.

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