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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 thermal conductive grease is contained entirely within a periphery of the base plate when viewed in plan from above” of amended claim 1 and “wherein, in a state before the heat sink is connected to the second main surface of the base plate, the remaining portion of the second main surface of the base plate other than the chamfered portion protrudes outward from the base plate in a semi-spherical shape” of amended claim 3 must be shown or the features canceled from the claims. 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.
Claim Objections
Claim 9 is objected to because of the following informality: one lines 2-3 “the chamfered portion is provided on at least on an edge” should be “the chamfered portion is provided on at least one edge”. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventors, at the time the application was filed, had possession of the claimed invention.
Regarding amended claim 1, the Examiner can find no support for the recited limitation of “the thermal conductive grease is contained entirely within a periphery of the base plate when viewed in plan from above” added by Applicant to claim 1 in its “Response To Non-Final Office Action Of March 6, 2026” filed on June 5, 2026 (hereinafter the “Response”). For example, thermal conductive grease (21) is discussed in paragraphs [0016], [0017], and [0024]-[0028] of Applicant’s specification with respect to FIGs. 1A and 1B, neither of which is a “plan from above”. As another example, thermal conductive grease (21) is discussed in paragraphs [0041]-[0045] of Applicant’s specification with respect to FIGs. 6A and 6B, neither of which is a “plan from above”. As an additional example, FIGs. 2-5 of Applicant’s application appear to be views that are “plan from above”, however, none of these drawings appear to show thermal conductive grease (21). To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventors had possession of the claimed invention. The Examiner respectfully requests that Applicant please indicate in specific detail where there is support for the added recited language “the thermal conductive grease is contained entirely within a periphery of the base plate when viewed in plan from above” in the originally filed specification in its next response or, alternatively, if there is no such support, then please remove this added language from claim 1. Claims 2-11 are also rejected under 35 U.S.C. 112(a) because they depend from amended claim 1.
Regarding amended claim 3, the Examiner can find no support for the recited limitation of “wherein, in a state before the heat sink is connected to the second main surface of the base plate, the remaining portion of the second main surface of the base plate other than the chamfered portion protrudes outward from the base plate in a semi-spherical shape” added by Applicant to claim 3 in its Response. For example, pages six (6)-seven (7) of the Response appear to indicate that surface (15d) shown in FIGs. 6A and 6B and described in paragraphs [0041]-[0042] of Applicant’s specification provide support for this amended language. However, FIG.s 6A and 6B appear to disclose that surface (15d) has the following shape ([0041]—“in a state before base plate 15 is fixed to the heat sink 22 by screwing or the like”):
PNG
media_image1.png
186
285
media_image1.png
Greyscale
which is not a semi-spherical shape. The Examiner respectfully submits that a semi-spherical shape has the following appearance:
PNG
media_image2.png
980
1470
media_image2.png
Greyscale
Moreover, paragraphs [0041]-[0042] of Applicant’s specification only appear to discuss “a substantially spherical shape”, not a “semi-spherical shape”, as recited in amended claim 3. To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventors had possession of the claimed invention. The Examiner respectfully requests that Applicant please indicate in specific detail where there is support for the added recited language “in a state before the heat sink is connected to the second main surface of the base plate, the remaining portion of the second main surface of the base plate other than the chamfered portion protrudes outward from the base plate in a semi-spherical shape” in the originally filed specification in its next response or, alternatively, if there is no such support, then please remove this added language from claim 3.
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 3 and 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 amended claim 3, lines 3-6 recite: “wherein, in a state before the heat sink is connected to the second main surface of the base plate, the remaining portion of the second main surface of the base plate other than the chamfered portion protrudes outward from the base plate in a semi-spherical shape.” This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, it is unclear from amended claim 3 viewed in light of Applicant’s originally filed specification, originally filed drawings, and pages six (6)-seven (7) of Applicant’s Response what constitutes “a substantially semi-spherical shape.” Pages six (6)-seven (7) of the Response appear to indicate that surface (15d) shown in FIGs. 6A and 6B and described in paragraphs [0041]-[0042] of Applicant’s specification provide support for this amended language. However, FIG.s 6A and 6B appear to disclose that surface (15d) has the following shape ([0041]—“in a state before base plate 15 is fixed to the heat sink 22 by screwing or the like”):
PNG
media_image1.png
186
285
media_image1.png
Greyscale
which is not a semi-spherical shape. The Examiner respectfully submits that a semi-spherical shape has the following appearance:
PNG
media_image2.png
980
1470
media_image2.png
Greyscale
Moreover, paragraphs [0041]-[0042] of Applicant’s specification only appear to discuss “a substantially spherical shape”, not a “semi-spherical shape”, as recited in amended claim 3. For purpose of examination, the Examiner is interpreting lines 3-6 of claim 3 as reciting, “wherein, in a state before the heat sink is connected to the second main surface of the base plate, the remaining portion of the second main surface of the base plate other than the chamfered portion protrudes outward from the base plate” because of this ambiguity.
Regarding amended claim 9, lines3-6 recite: “wherein the base plate has a plurality of edges and the chamfered portion is provided on at least on an edge that will be disposed in a downward direction when the power semiconductor module is installed for operation.” This recited language used to define the invention is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention can be ascertained. No new matter may be added. For example, the phrase “downward direction” is a relative phrase which renders the claim indefinite. The term “downward direction” is not defined by the claim such that one of ordinary skill in the art would be reasonably apprised of the scope of the invention. As another example, the recitation of “an edge that will be disposed in a downward direction when the power semiconductor module is installed for operation” is ambiguous because it is unclear whether an additional unrecited structure is required on which to “dispose” the “edge” and the use of the future tense “will be” makes it unclear whether such structure is actually required to infringe claim 9. As an additional example the recitation of “when the power semiconductor module is installed for operation” makes it unclear whether the power semiconductor module must be operating in order to infringe apparatus claim 9. For purpose of examination, the Examiner is interpreting lines 3-6 of claim 9 as reciting, “wherein the base plate has a plurality of edges and the chamfered portion is provided on at least one edge” because of these ambiguities.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the Examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1, 2, 4, 9, and 10 are rejected under 35 U.S.C. 103 unpatentable over US 2015/0289356 A1 (Izuo) in view of US 2020/0028047 A1 (Su).
Regarding claim 1, Izuo discloses, A power semiconductor module (power semiconductor module (100); FIG. 1A; [0014]) comprising:
a base plate (base plate (1); FIG. 1A; [0015]);
a semiconductor chip (semiconductor chip (4); FIG. 1A; [0015]) mounted on a first main surface (annotated FIG. 1A, below) of the base plate (1); and
a heat sink (heat sink (10); FIG. 1A; [[0014]) connected to a second main surface (annotated FIG. 1A, below) of the base plate (1);
PNG
media_image3.png
542
780
media_image3.png
Greyscale
wherein:
the second main surface includes a chamfered portion (annotated FIG. 1A, above) that is provided at at least one end of the second main surface (annotated FIG. 1A, above), the second main surface further including a remaining portion of the second main surface (annotated FIG. 1A, above) other than the chamfered portion (annotated FIG. 1A, above), and
the chamfered portion (annotated FIG. 1A, above) of the second main surface (annotated FIG. 1A, above, and first annotated FIG. 1B, below) includes a bottom surface portion (first annotated FIG. 1B, below) which, in a state where the base plate (1) is fixed to the heat sink (10) (FIG. 1A), is inclined at an angle with respect to a surface of the heat sink (10) on a side of the heat sink (10) where the base plate (1) is fixed (annotated FIG. 1A, above, and first annotated FIG. 1B, below), the bottom surface portion (first annotated FIG. 1B, below) terminating at a boundary (first annotated FIG. 1B, below) between the chamfered portion (first annotated FIG. 1B, below) and the remaining portion of the second main surface (first annotated FIG. 1B, below) of the base plate (1) other than the chamfered portion (first annotated FIG. 1B, below), and the angle formed between the bottom surface portion of the chamfered portion (first annotated FIG. 1B, below) of the base plate (1) and the surface of the heat sink (10) on the side where the base plate (1) is fixed (annotated FIG. 1A, above, and first annotated FIG. 1B, below) is in a range of 5° or more and 30° or less ([0021]—angle of tilted part of chamfered portion which appears in FIG. 1B to be symmetrically shaped may range from 20 to 60 degrees which overlaps with the claimed range of 5° or more and 30° or less). Please see, MPEP 2131.03(II)—Prior Art Which Teaches A Range Overlapping Or Touching The Claimed Range Anticipates If The Prior Art Range Discloses The Claimed Range With “Sufficient Specificity”.
PNG
media_image4.png
395
740
media_image4.png
Greyscale
But, Izuo does not appear to explicitly disclose, a thermal conductive grease disposed between the second main surface of the base plate and the heat sink,
wherein:
the thermal conductive grease is contained entirely within a periphery of the base plate when viewed in plan from above.
However, in analogous art, Su discloses, that it was well-known to one of ordinary skill in the art before the effective filing date of the claimed invention that a thermal conductive grease (thermal conductive grease (250); FIG. 2; [0021]) can be predicably disposed between a second main surface (annotated FIG. 2, below) of a base plate (base plate (210); FIG. 2; [0019]) and a heat sink (heat sink (300); FIG. 2; [0003]) in order to increase the heat conduction efficiency between base plate (210) and heat sink (300), thereby quickly transferring heat out from base plate (210) ([0021]). Su also discloses that it was well-known to one of ordinary skill in the art before the effective filing date of the claimed invention to contain thermal conductive grease (250) entirely within a periphery (annotated FIG. 2, below) of base plate (210) by, for example, a thermal conductive frame (thermal conductive frame (270); FIG. 2; [0022]).
PNG
media_image5.png
442
762
media_image5.png
Greyscale
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention having the teachings of Izuo and Su before him/her to dispose a thermal conductive grease between the second main surface (annotated FIG. 1A, above) of the base plate (1) and the heat sink (10) of Izuo, as taught by Su, in order to increase the heat conduction efficiency between base plate (1) and heat sink (10), as also taught by Su, thereby quickly transferring heat out from base plate (1) ([0021]), as additionally taught by Su.
It also would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention having the teachings of Izuo and Su before him/her to contain the thermal conductive grease entirely within a periphery of the base plate (1) of Izuo, as further taught by Su, when viewed in plan from above, to prevent loss of the thermal conductive grease between base plate (1) and heat sink (10) caused, for example, by seepage due to compressive force on the thermal conductive grease by the pressure of base plate (1) of Izuo which would reduce the heat conduction efficiency between base plate (1) and heat sink (10) due to such loss of thermal conductive grease by such seepage. Please see, MPEP 2143(G)—The courts have made clear that the teaching, suggestion, or motivation test is flexible and an explicit suggestion to combine the prior art is not necessary. The motivation to combine may be implicit and may be found in the knowledge of one of ordinary skill in the art, or, in some cases, from the nature of the problem to be solved.
Regarding claim 2, Izuo in view of Su discloses, The power semiconductor module (100) according to claim 1, wherein in a state before the heat sink (10) is connected to the second main surface (annotated FIG. 1A, above) of the base plate (1), the remaining portion (annotated FIG. 1A, above) of the second main surface (annotated FIG. 1A, above) of the base plate (1) other than the chamfered portion (annotated FIG. 1A, above) is flat (Izuo, [0028]).
Regarding claim 4, Izuo in view of Su discloses, The power semiconductor module (100) according to claim 1, wherein the semiconductor chip (4) is disposed not to overlap with the chamfered portion (annotated FIG. 1A, above) of the base plate (1).
Regarding claim 9, Izuo in view of Su discloses, The power semiconductor module (100) according to claim 1, wherein the base plate (1) has a plurality of edges (annotated FIG. 1A, above) and the chamfered portion (annotated FIG. 1A, above) is provided on at least on an edge (annotated FIG. 1A, above) that will be disposed in a downward direction when the power semiconductor module (100) is installed for operation.1
Regarding claim 10, Izuo in view of Su discloses, The power semiconductor module (100) according to claim 1, wherein a maximum value of a distance (distance (d); second annotated FIG. 1B, below) between a bottom surface of the chamfered portion (second annotated FIG. 1B, below) and an upper surface (annotated FIG. 1A, above) of the heat sink (10) is in a range of 0.5 mm or more and 2.5 mm or less ([0021]—distance (a) is 1.5mm which means distance (d) in second annotated FIG. 1b, below is less than 1.5mm which overlaps with the claimed range of 0.5mm or more and 2.5mm or less). Please see, MPEP 2131.03(II), above.
PNG
media_image6.png
315
663
media_image6.png
Greyscale
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Izuo in view of Su and further in view of US 2014/0374896 A1 (Nishida).
Regarding claim 3, Applicant may argue that Izuo of Su does not appear to disclose, wherein, in a state before the heat sink is connected to the second main surface of the base plate, the remaining portion of the second main surface of the base plate other than the chamfered portion protrudes outward from the base plate in a semi-spherical shape.2
However, in analogous art, Nishida discloses that it was well-known to one of ordinary skill in the art before the effective filing date of the claimed invention that a base plate (base plate (400); FIG. 3A; [0032]) having a semiconductor chip (semiconductor chip (200); FIG. 3A; [0032]) mounted on a first main surface thereof (annotated FIG. 3A, below) may be predicable fabricated to include a protruding portion on a second main surface thereof (annotated FIG. 3A, below) that faces a heat sink (heat sink (800); FIG. 3A; [0035]) which is connected to the second main surface (annotated FIG. 3A, below) of base plate (400). Nishida also discloses that base plate (400) may be predicably fabricated to include protruding portion on second main surface thereof (annotated FIG. 3A, below) before being connected to heat sink (800) ([0034]).
PNG
media_image7.png
622
637
media_image7.png
Greyscale
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention having the teachings of Izuo, Su, and Nishida before him/her that wherein, in a state before the heat sink is connected to the second main surface (annotated FIG. 1A, above) of base plate (1) of Izuo in view of Su the remaining portion of the second main surface (annotated FIG. 1A, above) of the base plate (1) other than the chamfered portion (annotated FIG. 1A, above) protrudes outward from the base plate (1), as taught by Nishida, in a semi-spherical shape because this constitutes a simple substitution of the protruding portion (annotated FIG. 3A, above) of the second main surface (annotated FIG. 3A, above) of base plate (400) of Nishida for the remaining portion of the second main surface (annotated FIG. 1a, above) of base plate (1) of Izuo in view of Su with the predicable result of still forming a base plate having a second main surface that can be connected to heat sink (10) of Izuo in view of Su, as also taught by Nishida. See, MPEP 2143(B)—Simple Substitution of One Known Element For Another To Obtain Predicable Results.
Claims 5-7 are rejected under 35 U.S.C. 103 as being unpatentable over Izuo in view of Su and further in view of US 2008/0101032 A1 (Tschirbs).
Regarding claim 5, Izuo in view of Su does not appear to explicitly disclose, wherein
the base plate includes four screw holes arranged in a rectangular pattern for screw fastening the base plate to the heat sink, and
the boundary between the chamfered portion and the remaining portion of the second main surface of the base plate other than the chamfered portion is provided outside a rectangular region defined by centers of the four screw holes.
However, in analogous art, Tschirbs discloses that it was well known to one of ordinary skill in the art before the effective filing date of the claimed invention that a base plate (base plate (2); FIG. 1a; [0026]) may be predicably fabricated to include four screw holes (four screw holes (6); FIG. 1a; [0032]) arranged in a rectangular pattern (Tschirbs, first annotated FIG. 1a, below) for screw fastening base plate (2) to a heat sink (heat sink (9); FIG. 2; [0027]). Tschirbs also discloses that a semiconductor chip (semiconductor chip (4); FIG. 1a, [0026]) may be mounted on a first main surface (Tschirbs, first annotated FIG. 1a, below) of base plate (2). Tschirbs additionally discloses that base plate (2) may be predicably fabricated to define a rectangular region defined by the centers of the four screw holes (6) (Tschirbs, first annotated FIG. 1a, below) and to include a boundary (Tschirbs, first annotated FIG. 1a, below) between second main surface of base plate (2) (Tschirbs, first annotated FIG. 1a, below) that is outside of the rectangular region (Tschirbs, first annotated FIG. 1a, below).
PNG
media_image8.png
476
733
media_image8.png
Greyscale
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention having the teachings of Izuo, Su, and Tschirbs before him/her that base plate (1) of Izuo in view of Su have four screw holes arranged in a rectangular pattern for screw fastening base plate (1) to the heat sink (10) of Izuo in view of Su, as taught by Tschirbs, and the boundary (first annotated FIG. 1B, above) between the chamfered portion (Izuo, annotated FIG. 1A, above) and the remaining portion of the second main surface (Izuo, annotated FIG. 1A, above) of the base plate (1) other than the chamfered portion (Izuo, annotated FIG. 1A, above) is provided outside a rectangular region defined by centers of the four screw holes, as also taught by Tschirbs, thereby eliminating the need for the use of additional structure such as resin case (resin case (6); FIG. 1A; [0014], all of Izuo) and, in some embodiments, pressure member (pressure member (13); FIG. 1A; [0014], all of Izuo) to connect base plate (1) of Izuo in view of Su to heat sink (10) while preserving the chamfered portion (Izuo, annotated FIG. 1A, above) of Izuo in view of Su which saves cost and manufacturing time, as well as reducing manufacturing complexity. Please see, MPEP 2143(G)—Some Teaching, Suggestion, Or Motivation In The Prior Art That Would Have Led One Of Ordinary Skill To Modify the Prior Art Reference Or To Combine Prior Art Reference Teachings To Arrive At The Claimed Invention. See also, MPEP 2144(IV)—Rational Different From Applicant’s Is Permissible.
Regarding claim 6, Izuo in view of Su does not appear to explicitly disclose, wherein
the base plate includes four screw holes arranged in a rectangular pattern for screw fastening the base plate to the heat sink, and
the chamfered portion is not formed around the screw holes.
However, in analogous art, Tschirbs discloses that it was well known to one of ordinary skill in the art before the effective filing date of the claimed invention that a base plate (base plate (2); FIG. 1a; [0026]) may be predicably fabricated to include four screw holes (four screw holes (6); FIG. 1a; [0032]) arranged in a rectangular pattern (Tschirbs, first annotated FIG. 1a, above) for screw fastening to a heat sink (heat sink (9); FIG. 2; [0027]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention having the teachings of Izuo, Su, and Tschirbs before him/her that the base plate (1) of Izuo in view of Su have four screw holes arranged in a rectangular pattern for screw fastening base plate (1) to the heat sink (10) of Izuo in view of Su, as taught by Tschirbs, and the chamfered portion is not formed around the screw holes, thereby eliminating the need for the use of additional structure such as resin case (resin case (6); FIG. 1A; [0014], all of Izuo) and, in some embodiments, pressure member (pressure member (13); FIG. 1A; [0014], all of Izuo) to connect base plate (1) of Izuo in view of Su to heat sink (10) while preserving the chamfered portion (annotated FIG. 1A of Izuo, above) of Izuo in view of Su which saves cost and manufacturing time, as well as reducing manufacturing complexity. Please see, MPEP 2143(G) and MPEP 2144(IV), both above.
Regarding claim 7, Izuo in view of Su does not appear to explicitly disclose, wherein
the base plate includes four screw holes arranged to form a rectangular pattern for screw fastening the base plate to the heat sink,
the chamfered portion is formed in a region other than at peripheries of the screw holes, and
the boundary between the chamfered portion and the remaining portion of the second main surface of the base plate other than the chamfered portion is provided inside a rectangular region defined by centers of the four screw holes.
However, in analogous art, Tschirbs discloses that it was well known to one of ordinary skill in the art before the effective filing date of the claimed invention that a base plate (base plate (2); FIG. 1a; [0026]) may be predicably fabricated to include four screw holes (four screw holes (6); FIG. 1a; [0032]) arranged to form a rectangular pattern (Tschirbs, second annotated FIG. 1a, below) each having periphery (Tschirbs, second annotated FIG. 1a, below) for screw fastening base plate (2) to a heat sink (heat sink (9); FIG. 2; [0027]). Tschirbs also discloses that a semiconductor chip (semiconductor chip (4); FIG. 1a, [0026]) may be mounted on a first main surface (Tschirbs, second annotated FIG. 1a, below) of base plate (2). Tschirbs additionally discloses that base plate (2) may be predicably fabricated to include a boundary (Tschirbs, second annotated FIG. 1a, below) inside a rectangular region defined by centers of the four screw holes (6) (second annotated FIG. 1a of Tschirbs, below).
PNG
media_image9.png
442
713
media_image9.png
Greyscale
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention having the teachings of Izuo, Su, and Tschirbs before him/her that the base plate (1) of Izuo in view of Su have four screw holes arranged to form a rectangular pattern for screw fastening base plate (1) to the heat sink (10) of Izuo in view of Su, as taught by Tschirbs, the chamfered portion (Izuo, annotated FIG. 1A, above) is formed in a region other than at peripheries of the screw holes, and the boundary (first annotated FIG. 1B, above) between the chamfered portion (Izuo, annotated FIG. 1A, above) and the remaining portion of the second main surface of the base plate (1) other than the chamfered portion (Izuo, annotated FIG. 1A, above) is provided inside a rectangular region defined by centers of the four screw holes, as also taught by Tschirbs, thereby eliminating the need for the use of additional structure such as resin case (resin case (6); FIG. 1A; [0014], all of Izuo) and, in some embodiments, pressure member (pressure member (13); FIG. 1A; [0014], all of Izuo) to connect base plate (1) of Izuo in view of Su to heat sink (10) while preserving the chamfered portion (Izuo, annotated FIG. 1A, above) of Izuo in view of Su which saves cost and manufacturing time, as well as reducing manufacturing complexity. Please see, MPEP 2143(G) and MPEP 2144(IV), both above.
Claim 8 is rejected under 35 U.S.C. 103 as being unpatentable over Izuo in view of Su and further in view of US 2020/0161145 A1 (Mafune).
Regarding claim 8, Izuo in view of Su discloses, The power semiconductor module (100) according to claim 1, wherein the base plate (1) has a plurality of edges (Izuo, annotated FIG. 1A, above) and the chamfered portion (Izuo, annotated FIG. 1A, above) of the base plate (1) is provided on at least one of the edges (Izuo, annotated FIG. 1A, above) of the base plate (1).
But Izuo in view of Su does not appear to explicitly disclose a distance between the semiconductor chip (4) and the at least one edge of the base plate (1) is smaller than a distance between the semiconductor chip and at least one other edge of the base plate (1).
However, in analogous art, Mafune discloses that it was well-known to one of ordinary skill in the art before the effective filing date of the claimed invention that a base plate (base plate (1R); FIG. 27; [0108]) having chamfered portions (annotated FIG. 27, below) on a plurality of edges thereof (annotated FIG. 27, below) may be predicably fabricated include a semiconductor chip (semiconductor chip (5); annotated FIG. 27, below; [0066]) mounted on a first surface (annotated FIG. 27, below) of base plate (1R). Mafune also discloses that it was well-known to one of ordinary skill in the art before the effective filing date of the claimed invention that a distance between semiconductor chip (5) and at least one edge (annotated FIG. 27, below) of the base plate (1R) can be predicably fabricated to be smaller (annotated FIG. 27, below) than a distance between the semiconductor chip (5) and at least one other edge (annotated FIG. 27, below) of the base plate (1R) (annotated FIG. 27, below).
PNG
media_image10.png
557
793
media_image10.png
Greyscale
Therefore, one of ordinary skill in the art would have recognized before the effective filing date of the claimed invention having the teachings of Izuo, Su, and Mafune before him/her that there are a finite number of predicable solutions regarding a distance between semiconductor chip (4) and at least one edge (Izuo, annotated FIG. 1A, above) of the base plate (1) of Izuo in view of Su and a distance between the semiconductor chip (4) and at least one other edge (Izuo, annotated FIG. 1A, above) of the base plate (1) of Izuo in view of Su—i.e., the distance can be predicably fabricated to be: (i) larger, (ii) the same, or (iii) smaller, as disclosed by Mafune—and, absent unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention having the teachings of Izuo, Su, and Mafune before him/her to try each of these predicable solutions, one of which is a distance between the semiconductor chip (4) and the at least one edge (Izuo, annotated FIG. 1A, above) of the base plate (1) is smaller than a distance between the semiconductor chip (4) and at least one other edge (Izuo, annotated FIG. 1A, above) of the base plate (1), as recited in claim 8. Please see, MPEP 2143(E).
Claim 11 is rejected under 35 U.S.C. 103 as being unpatentable over Izuo in view of Su and further in view of DE 19609929 B4 (Spann).
Regarding claim 11, Izuo in view of Su does not appear to explicitly disclose, wherein a material of the base plate is AlSiC or MgSiC.
However, in analogous art, Spann discloses that a base plate (base plate (1); FIG. 2; [0017] of translated Description) of a power semiconductor module (FIG. 2; [0001] of translated Description) may be predicably fabricated of a material comprising silicon carbide and aluminum ([0017] of translated Description). Spann also discloses that a material comprising silicon carbide and aluminum is solderable ([0017] of translated Description).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention having the teachings of Izuo, Su, and Spann before him/her that a material of base plate (1) of Izuo in view of Su is AlSiC, as taught by Spann, so that one or more components of power semiconductor module (100) of Izuo in view of Su can be soldered thereto, as also taught by Spann.
Response to Amendments and Arguments
Pages six (6)-seven (7) of the Response state:
FIGS. 1A-6B of the drawings are objected to as allegedly not showing some subject matter of claim 3. Applicant respectfully disagrees and refers the Examiner to at least FIGS. 6A and 6B in which reference character 15d indicates the semi-spherical-shaped portion of the second main surface that protrudes outward from the base plate 15. See also par. 0041-0042 of Applicant's specification. In view of the amendment to claim 3 and the foregoing explanation of support in the specification and drawings, Applicant respectfully requests withdrawal of the objection to the drawings.
The Examiner respectfully disagrees that the drawings show “the remaining portion of the second main surface of the base plate other than the chamfered portion protrudes outward from the base plate in a semi-spherical shape”, as recited by amended claim 3, for at least the following reasons. For example, surface (15d) shown in FIGs. 6A and 6B and described in paragraphs [0041]-[0042] of Applicant’s specification disclose that surface (15d) has the following shape ([0041]—“in a state before base plate 15 is fixed to the heat sink 22 by screwing or the like”):
PNG
media_image1.png
186
285
media_image1.png
Greyscale
The Examiner respectfully submits that surface (15d) does not have a semi-spherical shape. The Examiner also respectfully submits that a semi-spherical shape has the following appearance:
PNG
media_image2.png
980
1470
media_image2.png
Greyscale
As another example, paragraphs [0041]-[0042] of Applicant’s specification only appear to disclose a substantially spherical shape, not a “semi-spherical shape”, as recited in amended claim 3.
Applicant’s amendment of claim 7 and remarks on page seven (7) of the Response have overcome the objection to claim 7 in the Office Action dated March 6, 2024 (hereinafter the “Office Action”). However, Applicant’s attention is draw to the objection of claim 9 in this Final Office Action which was necessitated by Applicant’s amendment thereof.
Regarding the rejection of claims 1-11 as being indefinite under 35 U.S.C. 112(b), as detailed in the Office Action, page seven (7) of the Response states: “Claims 1-11 stand rejected under 35 U.S.C. §112(b) as allegedly being indefinite. Without conceding propriety of the rejection, Applicant has amended the claims herein as shown above, rendering the objection moot. In view of the amendments, Applicant respectfully requests withdrawal of the §112(b) rejection of claims 1-11.”
The Examiner agrees that the amendment of claims 1, 2, 5, 7, and 8 have overcome the rejection thereof and claims 4, 6, 10, and 11 as being indefinite under 35 U.S.C. 112(b) in the Office Action. However, as detailed above in the Final Office Action, the Examiner respectfully disagrees that claims 3 and 9 should not remain rejected under 35 U.S.C. 112(b) as being indefinite.
Applicant’s arguments on pages eight (8)-sixteen (16) of the Response regarding the rejection of claims 1, 2, 4, and 8-10 under 35 U.S.C. 102(a) as being anticipated by Izuo and the added recited limitations to claim 1 of “a thermal conductive grease disposed between the second main surface of the base plate and the heat sink, wherein: the thermal conductive grease is contained entirely within a periphery of the base plate when viewed in plan from above” to overcome this rejection have been fully considered. However, they are not deemed persuasive for at least the following reasons.
For example, Applicant’s amendment of claim 1 necessitated a new ground of rejection thereof based on the combination of Izuo in view of Su that does not rely on Nishida, Tschirbs, or Spann. The Examiner respectfully submits, as detailed above in this Final Office Action, the combination of Izuo in view of Su does disclose that the added limitations of “a thermal conductive grease disposed between the second main surface of the base plate and the heat sink, wherein: the thermal conductive grease is contained entirely within a periphery of the base plate when viewed in plan from above, were well-known to one of ordinary skill in the art before the effective filing date of the claimed invention, as were as the other recited limitations of amended claim 1.
As another example, The Examiner respectfully submits that the added recited limitation to claim 1 of “when viewed in plan from above” does not negate the teachings of Su or the reason for the motivation to combine Izuo and Su, as detailed above in this Final Office Action. There is also an issue under 35 U.S.C. 112(a) regarding whether Applicant’s originally filed applicant provides support for the added limitation of “the thermal conductive grease is contained entirely within a periphery of the base plate when viewed in plan from above”, as detailed above in this Final Office Action.
As an additional example, portions of Applicant’s argument on pages eight (8)-sixteen (16) of the Response and some of the added language to amended claim 1 appear to be relying on what the recited limitations of the apparatus of claim 1 do and how these recited limitations of the apparatus of claim 1 operate. For example, page 12 states:
However, as also discussed in Applicant's specification, repeated heating and cooling of the semiconductor module can cause the thermal conductive grease to "pump out" from between the heat sink and the base plate. Applicant's claimed chamfered portion, having an angle of 5-30 degrees, is able to retain the pumped-out thermal conductive grease at the boundary of the chamfered portion. Additionally, as the semiconductor module heats up, causing base the plate to try to expand away from the heat sink, the thermal conductive grease stored at the chamfered portion can be drawn back between the based plate and the heat sink, rather than air, thereby maintaining superior heat conduction. See, e.g., Applicant's specification at 0005 and 0024-0028.
The Examiner respectfully submits that such arguments regarding what the recited limitations of the power semiconductor module of claim 1 do or how those recited limitations cause the power semiconductor module of claim 1 to operate do not differentiate claim 1 from the prior art combination of Izuo in view of Su, as detailed above in this Final Office Action. Please see, MPEP 2114(II)—[A]pparatus claims cover what a device is, not what a device does.
The Examiner also respectfully submits that the recited limitation of “the thermal conductive grease is contained entirely within a periphery of the base plate when viewed in plan from above” added to claim 1 in Applicant’s Response is another example of what is done (e.g., “contained entirely within a periphery of the base plate when viewed in plan from above”), rather than a structural limitation that differentiates the power semiconductor module of amended claim 1 from the prior art combination of Izuo in view of Su. For example, no structure is recited in this added operational limitation to contain the thermal conductive grease entirely within a periphery of the base plate when viewed in plan from above. Please again see, MPEP 2114(II), above.
As a further example, pages 12-13 of the Response state:
For example, the Office Action equates Izuo's tilted part with Applicant's claimed chamfered portion. However, with respect to the tilted part, Izuo describes "[t]he tilted part is formed at a corner (outer periphery) of each of opposite cross-sectional ends of the heat dissipation substrate 20 shown in FIG. 1." See Izuo at 0020. Izuo further describes "[t]he tilted part is tilted to an angle in a range from 20 to 60 degrees suitably, desirably from 30 to 45 degrees relative to a flat surface on which the power semiconductor element 4 is mounted." Id. at 0021 (emphasis added). Thus, Izuo appears to be describing the upper surface tilted part here, rather than the lower surface tilted part. In addition, Izuo describes "[a] tilted part may be omitted from an end portion of the metal base 1 on a side opposite a surface of the metal base 1 on which the power semiconductor element 4 is mounted.” Id. at 0020 (emphasis added).
The Examiner respectfully disagrees. For example, as detailed above in this Final Office Action, chamfered portion (Izuo, annotated FIG. 1A and first annotated FIG. 1B, both above) appears to be symmetrically-shaped in FIG. 1B thereof such that the angles described in paragraph [0021] of Izuo would be applicably equal on the lower surface of the chamfered portion (Izuo, annotated FIG. 1A, above) of Izuo, assuming arguendo that Applicant may be correct. As another example, FIG. 1B of Izuo (reproduced below) shows that chamfered portion thereof includes two right triangles (third annotated FIG. 1B, below) meaning that the angle disclosed by Izuo as being formed between the bottom surface portion of the chamfered portion (first annotated FIG. 1B, above) of base plate (1) and the surface of the heat sink (10) on the side where base plate (1) is fixed (third annotated FIG. 1B, below) must range between greater than zero degrees and less than ninety degrees. This means that recited range of 50 or more and 300 or less of claim 1 is obvious in light of Izuo because it lies within the range of greater than zero degrees and less than ninety degrees disclosed by Izuo. Please see, MPEP 2144.05(I)—In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists.
PNG
media_image11.png
301
712
media_image11.png
Greyscale
As an additional example, the range of 100 to 150 of the angle of chamfered portion of the base plate of Sakamoto (please see Examiner cited reference, below) means that recited range of 50 or more and 300 or less of claim 1 is obvious in light of Izuo in view of Su and further in view of Sakamoto because it overlaps with the range of 100 to 150 disclosed by Sakamoto. Please see, MPEP 2144.05(I), above.
As a further example, the Examiner respectfully submits that Applicant’s above-quoted argument on page 13 of the Response that: “In addition, Izuo describes ‘[a] tilted part may be omitted from an end portion of the metal base 1 on a side opposite a surface of the metal base 1 on which the power semiconductor element 4 is mounted’” is unpersuasive because nonpreferred and alternative embodiments constitute prior art. Please see, MPEP 2123. Also, regarding the Applicant’s statement on page 12 of the Response that : “the Office Action equates Izuo's tilted part with Applicant's claimed chamfered portion”, please see, MPEP 2131--"The elements must be arranged as required by the claim, but this is not an ipsissimis verbis test, i.e., identity of terminology is not required."
Notwithstanding the above, to advance prosecution, the Examiner respectfully requests that Applicant please consider a telephone interview with the Examiner to discuss proposed claim amendments to overcome the claim objection and rejections, detailed above, and proposed drawing changes to overcome the drawing objections, also detailed above, before filing a written response to this Final Office Action. The Examiner would welcome such a discussion and is available at the number provided below.
Conclusion
THIS ACTION IS MADE FINAL. 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 Office 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 Office 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this Final Office Action.
The following prior art made of record is considered pertinent to Applicant's disclosure. US 2016/0079143 A1 (Sakamoto)—discloses that it was well known to one of ordinary skill in the art before the effective filing date of the claimed invention that an angle of a chamfered portion of a base plate (base plate (20); FIG. 4(a); []0072) may be predicably fabricated to be in a range between 100 to 150 ([0089]).
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Erik A. Anderson whose telephone number is (703) 756-1217. The Examiner can normally be reached Monday-Friday 8:30 a.m.-4:30 p.m. (Pacific Time Zone).
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, William B. Partridge, can be reached at (571) 270-1402. 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.
/ERIK A. ANDERSON/Examiner, Art Unit 2812
/William B Partridge/Supervisory Patent Examiner, Art Unit 2812
1 Please see the rejection of claim 9 under 35 U.S.C. 112(b), above, for how this recited language of claim 9 is being interpreted for purpose of examination.
2 Please see the rejection of claim 3 under 35 U.S.C. 112(b), above, for how this recited language of claim 3 is being interpreted for purpose of examination.
Prosecution Insights