Prosecution Insights
Last updated: May 29, 2026
Application No. 18/563,051

POWER CONVERSION DEVICE

Non-Final OA §102§103§112
Filed
Nov 21, 2023
Priority
Jul 15, 2021 — nonprovisional of PCTJP2021026704
Examiner
SMITH, COURTNEY L
Art Unit
2835
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Hitachi Astemo, Ltd.
OA Round
1 (Non-Final)
85%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
97%
With Interview

Examiner Intelligence

Grants 85% — above average
85%
Career Allowance Rate
1070 granted / 1253 resolved
+17.4% vs TC avg
Moderate +12% lift
Without
With
+11.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 4m
Avg Prosecution
27 currently pending
Career history
1280
Total Applications
across all art units

Statute-Specific Performance

§103
67.6%
+27.6% vs TC avg
§102
24.3%
-15.7% vs TC avg
§112
6.8%
-33.2% vs TC avg
Black line = Tech Center average estimate • Based on career data from 1253 resolved cases

Office Action

§102 §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 . 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 1-9, are 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. Regarding Claim 1; “a relay member” in line 9 is unclear; whereas “a first cooling member” is asserted in line 6 and dependent claim 2 which is further limiting to assert: “the relay member is the first cooling member”, and thus it cannot be readily ascertained if the features are actually the same structure OR otherwise if the relay member is deemed as only a part of the first cooling member. Note: para. 0037 discloses a relay member fixed to a partition wall; para. 0043 discloses the relay terminal may be fixed to a relay member…for example the first cooling member-100 or another member of the housing-600. Further Note: claim 1 is deemed as constructively elected to include each claim structure without any omitted structure. Regarding Claim 2; “the relay member is the first cooling member”, as above-mentioned is unclear; whereas each of the aforementioned is separately asserted as two separate features in claim 1, and thus it cannot be readily ascertained if the features denote the same structure or two different structures which are interconnected etc. Regarding Claim 3; “a partition wall between the first cooling member and the circuit board, wherein the relay member is the partition wall” is unclear; similar to that which is above-mentioned; whereas the first cooling member and the relay member appears to be disclosed and asserted as the same structure, and thus it cannot be readily ascertained of a partition wall is the same or different structure and/or if deemed as a particular portion thereof. Regarding Claim 5; “a control terminal of the semiconductor element” is unclear; whereas the same feature is already asserted in claim 1, and thus proper antecedence shall be presented. Regarding Claim 8; “wherein a plurality of the semiconductor modules are arranged” is unclear; whereas the term does not properly refer back to a semiconductor module previously asserted by claim 1, and thus it cannot be readily ascertained if the same semiconductor module is intended to include a plurality of semiconductor elements or if additional semiconductor modules are intended each with one semiconductor element etc. 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) 1, and 3-5, is/are rejected under 35 U.S.C. 102(a1) as being anticipated by (Taya 2016/0157351). Regarding Claim 1; Taya, as best understood discloses an power conversion device (as depicted by Fig. 7--as constituted by a power module-400 having an IGBT module defined by a package including an IGBT-5a and a freewheel diode-5b—as set forth para. 0003) comprising: a semiconductor module (as depicted by Fig. 7—whereas 2-5a-5b constitutes a semiconductor module—as set forth by para. 0049) in which a semiconductor element is sealed (as depicted by Fig. 7--whereas semiconductor-5a is disposed in a sealing resin-11 within the semiconductor module—as set forth by para. 0049); a circuit board (10) on which a drive circuit that drives the semiconductor element via a control terminal of the semiconductor element led out from the semiconductor module is mounted (as constituted by an IGBT driving circuit on the circuit board that drives the IGBT-5a via- aluminum wire-6 extending led away from the module and defining a control terminal exchanging an electric signal by external terminal 18 controlling and monitoring operation states of the semiconductor—as set forth by para.’s 0048, and wherein para. 0002 further discloses the IGBT defines a power semiconductor element that performs on/off control of high voltage and large current); a first member that is disposed between the semiconductor module and the circuit board (as depicted by Fig. 7-- constituted by an epoxy resin-11—as set forth by para. 0025—atleast in-part disposed between the circuit board-10 and the semiconductor module defined by 2-5a-5b) and cools the semiconductor module (as depicted by Fig. 7--whereas the epoxy resin constitutes a thermally conductive material in direct contact with the semiconductor module, the case and the partition wall so as to atleast in part cool the semiconductor module); and a relay terminal that connects the control terminal and the drive circuit, wherein the relay terminal is fixed to a relay member disposed between the semiconductor module and the circuit board (whereas a relay terminal-8 is atleast in-part between the circuit board having the driving circuit and the semiconductor module, wherein 8 comprises a horizontal portion fixed with a case-9 defining a relay member—as depicted by Fig.’s 7-8). Regarding Claim 3; Taya, as best understood discloses the power conversion device according to claim 1, comprising a partition wall between the first cooling member and the circuit board, wherein the relay member is the partition wall (a partition wall-17 is integral with the case-9 defining the relay member—as set forth by para. 0026, wherein the partition wall-17 in disposed between the first cooling member-11 and the circuit board-10). Regarding Claim 4; Taya discloses the power conversion device according to claim 3, comprising: a housing that includes the partition wall and a side wall formed around the partition wall (as already set forth—whereas the case-9 is integral to the partition wall-17); a first lid that forms a first space between the first lid and the housing (whereas a base plate-1 defines a bottom side of 400 and the semiconductor module defined by 2-5a-5b is defined in a first space thereof); and a second lid that forms a second space between the second lid and the housing (as depicted by Fig. 7—whereas a second lid 12 defines a second space with atleast a portion of 9 and the partition wall-17 thereof and comprises the circuit board-10 therewithin), wherein the semiconductor module is disposed in the first space (as already set forth), and the circuit board is disposed in the second space (as already set forth). Regarding Claim 5; Taya, as best understood discloses the power conversion device according to The power conversion device according to claim 1, wherein a control terminal of the semiconductor element led out from the semiconductor module includes a plurality of control terminals, the relay terminal includes a plurality of terminal conductors corresponding to a plurality of the control terminals (as depicted by Fig.’s 7 and 8—where control terminals(s) 6 extend away from the module to couple respective relay terminal conductors defining horizontal portions of 8 at 8a and 8b connected to different IBFGTs 5a—para. 0026), and a fixing portion that integrally fixes the plurality of terminal conductors, and the relay terminal has the fixing portion fixed to the relay member (as depicted by Fig.’s 7-8--whereas a horizontal portion of 8a and 8b are fixed to a protruding surface of the relay member/case-9). 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. Claim(s) 2, and 8, is/are rejected under 35 U.S.C. 103 as being unpatentable over (Taya 2016/0157351). Regarding Claim 2; Taya, as best understood discloses power conversion device according to claim 1, suggests wherein the relay member is the first cooling member (whereas the relay member 9 is filled with and in direct contact with the first cooling member-defined by the epoxy resin-11). Except, Taya does not explicitly disclose the relay member and the first cooling member is the same material and/or the same structure—if so intended and thus it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the case-9 also an epoxy resin; whereas para. 0025 discloses each of 9 is filled with 11 and each are electrically insulating, since 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. Going further, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify 9 and 11 as integrally connected since depicted in direct contact, and wherein epoxy resin constitutes a thermoset resin which does not plastically deform by heat and will reliably maintain structural integrity against thermal expansion, since it has been held that forming in one piece an article which has formerly been formed in two pieces and put together involves only routine skill in the art. Howard v. Detroit Stove Works, 150 U.S. 164 (1893). Regarding Claim 8; Taya, as best understood discloses the power conversion device according to the power conversion device according to claim 1, a semiconductor module are arranged, and the relay terminal includes a fixing portion that integrally fixes the control terminal of the semiconductor element led out from the semiconductor module (whereas para. 0004 discloses power modules having six IGBTs and six diodes; and para. 0026 further discloses each relay terminal 8a and 8b coupled to semiconductor elements 5a via 6—as depicted by Fig.’s 7-8). Except, Taya does not explicitly wherein a plurality of the semiconductor modules are arranged, and the relay terminal includes a fixing portion that integrally fixes each control terminal of the semiconductor element led out from each semiconductor module. However, it would have been obvious to one having ordinary skill in the art at the time the invention was made to modify the conversion device with more than one semiconductor module in accordance with the desired structure and footprint of a respective semiconductor module, and the number of semiconductor elements required for control, and/or desired redundancy thereof since it has been held that mere duplication of the essential working parts of a device involves only routine skill in the art. St. Regis Paper Co. v. Bemis Co., 193 USPQ 8. Going further, it has been held that a recitation with respect to the manner in which a claimed apparatus is intended to be employed does not differentiate the claimed apparatus from a prior art apparatus satisfying the claimed structural limitations. Ex parte Masham, 2 USPQ2d 1647 (1987). Allowable Subject Matter Claims 6-7, and 9, are 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. Note: claims are hereby deemed as allowable according to a proper presentation of each claim construction under 112(b). Regarding Claim 6; discloses the power conversion device according to claim 5, wherein the relay terminal includes a guide portion that guides insertion of the plurality of control terminals of the semiconductor element. Regarding Claim 9; the power conversion device according to the power conversion device according to claim 1, comprising a second cooling member disposed on a side opposite to the first cooling member across the semiconductor module. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 10660229 B2 Umeda; Hiroki et al. Fig.’s 5, 8, and 15 Any inquiry concerning this communication or earlier communications from the examiner should be directed to COURTNEY SMITH whose telephone number is (571)272-9094. The examiner can normally be reached M-F 9-5p. 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, Jayprakash Gandhi can be reached at 571-272-3740. 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. /COURTNEY L SMITH/Primary Examiner, Art Unit 2835
Read full office action

Prosecution Timeline

Nov 21, 2023
Application Filed
Nov 14, 2025
Non-Final Rejection mailed — §102, §103, §112
Jan 15, 2026
Response Filed
May 06, 2026
Response after Non-Final Action

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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
85%
Grant Probability
97%
With Interview (+11.7%)
2y 4m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 1253 resolved cases by this examiner. Grant probability derived from career allowance rate.

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