Prosecution Insights
Last updated: August 16, 2026
Application No. 18/568,570

PASSIVE ELEMENT AND ELECTRONIC DEVICE

Non-Final OA §102§103
Filed
Dec 08, 2023
Priority
Jun 11, 2021 — JP 2021-098158 +1 more
Examiner
MOJADDEDI, OMAR F
Art Unit
2898
Tech Center
2800 — Semiconductors & Electrical Systems
Assignee
Sumitomo Electric Industries Ltd.
OA Round
1 (Non-Final)
89%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
99%
With Interview

Examiner Intelligence

Grants 89% — above average
89%
Career Allowance Rate
472 granted / 528 resolved
+21.4% vs TC avg
Moderate +11% lift
Without
With
+10.7%
Interview Lift
resolved cases with interview
Typical timeline
2y 4m
Avg Prosecution
51 currently pending
Career history
567
Total Applications
across all art units

Statute-Specific Performance

§101
2.1%
-37.9% vs TC avg
§103
53.5%
+13.5% vs TC avg
§102
25.9%
-14.1% vs TC avg
§112
18.0%
-22.0% vs TC avg
Black line = Tech Center average estimate • Based on career data from 528 resolved cases

Office Action

§102 §103
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 Election/Restrictions 1. Applicant's election, without traverse, of claims 1-6 and 9-11 in the “Response to Restriction Requirement” filed on 05/11/2026 is acknowledged and entered by the Examiner. This office action consider claims 1-15 pending for prosecution, wherein claims 7-8 and 12-15 are withdrawn from further consideration, and claims 1-6 and 9-11 are presented for examination. 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. Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (100; Fig 3A; [0063]) = (element 100; Figure No. 3A; Paragraph No. [0063]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document. 2. Claims 1 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baliga (US 6653691 B2; hereinafter Baliga). Regarding claim 1, Baliga teaches a passive element (see the entire document, specifically Fig. 1A+; [Abstract+], and as cited below), comprising (see alternative rejection for claim 1 in section 5 below): a semiconductor substrate (402; Fig. 14O; C17 20-67) having a p-type or n-type conductivity and having a main surface and a back surface; a back surface metal film (436; Fig. 14O; C19 14-55) provided on the back surface of the semiconductor substrate (402; Fig. 14O; C17 20-67); a first insulating film (428; Fig. 14O; C18 47-67) provided on the main surface of the semiconductor substrate (402; Fig. 14O; C17 20-67); a first metal pad (430; Fig. 14O; C18 47-67, C19 L1-13) provided on the first insulating film (428; Fig. 14O; C18 47-67); a first conductor (434; Fig. 14O; C19 14-55) extending from the first metal pad (430; Fig. 14O; C18 47-67, C19 L1-13) in a first direction; and a first conductive film (414; Fig. 14O; C17 L20-67, C18 L1-C19 14-55) provided adjacent to the first metal pad (430; Fig. 14O; C18 47-67, C19 L1-13) in the first direction on the main surface of the semiconductor substrate (402; Fig. 14O; C17 20-67), the first conductive film being in electrical contact with the semiconductor substrate (402; Fig. 14O; C17 20-67). Applicant should also note that the recitation of “a passive element” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951). Regarding claim 10, Baliga teaches all of the features of claim 1 (see alternative rejection for claim 10 in section 5 below). Baliga further teaches wherein the first metal pad (430; Fig. 14O; C18 47-67, C19 L1-13) extends along a second direction intersecting the first direction, and wherein a length of the first metal pad (430; Fig. 14O; C18 47-67, C19 L1-13) in the second direction are greater than a width of the first metal pad (430; Fig. 14O; C18 47-67, C19 L1-13) in the first direction. Allowable Subject Matter 3. Claim 2 (and claims dependent upon claim 2, namely claims 3-6 and 9-11) is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form, and to include all of the limitations of the base claim and any intervening claims. 4. The following is a statement of reasons for the indication of allowable subject matter: A search of the prior art failed to disclose or reasonably suggest the limitations “wherein the first insulating film is provided on a first region in the main surface of the semiconductor substrate, wherein the first conductive film is provided on a second region adjacent to the first region in the first direction, the first conductive film is in ohmic contact with the main surface of the semiconductor substrate, and the first conductive film has an electric resistivity lower than an electric resistivity of the semiconductor substrate, the passive element further comprising: a second insulating film provided on a third region adjacent to the second region in the first direction in the main surface of the semiconductor substrate; and a second metal pad provided on the second insulating film, wherein the second region is located between the first region and the third region” of claim 2 (the individual limitations may be found just not in combination). 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. Notes: when present, semicolon separated fields within the parenthesis (; ;) represent, for example, as (30A; Fig 2B; [0128]) = (element 30A; Figure No. 2B; Paragraph No. [0128]). For brevity, the texts “Element”, “Figure No.” and “Paragraph No.” shall be excluded, though; additional clarification notes may be added within each field. The number of fields may be fewer or more than three indicated above. These conventions are used throughout this document. 5. Claims 1 and 10 are rejected under 35 U.S.C.103 as being unpatentable over Titizian et al (US 6331931 B1; hereinafter Titizian), in view of Baliga (US 6653691 B2; hereinafter Baliga). Regarding claim 1, Titizian teaches a passive element (see the entire document, specifically Fig. 5; [0163+], and as cited below), comprising (see alternative rejection for claim 1 in section 2 above): a semiconductor substrate (1638; Fig. 16; C16 34-40) having (see below for “a p-type or n-type conductivity”) and having a main surface and a back surface; As noted above, Titizian does not expressly disclose “semiconductor substrate having a p-type or n-type conductivity and having a main surface and a back surface”. However, in the analogous art, Baliga teaches semiconductor switching devices ([Abstract]), wherein (Fig. 1A; [Abstract +]) an electrically conductive substate (304; Fig. 9; C16 1-15) comprising of a N+ silicon substrate, where a dielectric layer (306; Fig. 9; C16 1-15) is over the electrically conductive substate (304; Fig. 9; C16 1-15) comprising of a N+ silicon substrate, and an electrode (300a-c; Fig. 9; C16 1-15) is over the dielectric layer (306; Fig. 9; C16 1-15). It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to modify the semiconductor substrate of Titizian with the electrically conductive substate comprising of a N+ silicon substrate of Baliga’s, and thereby, modified Titizian’s (by Baliga) device will have a semiconductor substrate (Titizian 1638; Fig. 16; C16 34-40 in view of Baliga 304; Fig. 9; C16 1-15; N+ silicon substrate) having a p-type or n-type conductivity and having a main surface and a back surface. The ordinary artisan would have been motivated to modify Titizian in the manner set forth above, at least, because this inclusion provides an electrically conductive substate comprising of a N+ silicon substrate (Baliga C16 1-15), which allows for a highly conductive electrically conductive substate with low resistivity. Modified Titizian (by Baliga) further teaches a back surface metal film (Titizian 1632; Fig. 16; C16 5-67) provided on the back surface of the semiconductor substrate (Titizian 1638; Fig. 16; C16 34-40 in view of Baliga 304; Fig. 9; C16 1-15; N+ silicon substrate); a first insulating film (Titizian 1636; Fig. 16; C16 5-67) provided on the main surface of the semiconductor substrate (Titizian 1638; Fig. 16; C16 34-40 in view of Baliga 304; Fig. 9; C16 1-15; N+ silicon substrate); a first metal pad (Titizian 1634; Fig. 16; C16 5-67) provided on the first insulating film (Titizian 1636; Fig. 16; C16 5-67); a first conductor (Titizian 1650; Fig. 16; C16 5-67) extending from the first metal pad (Titizian 1634; Fig. 16; C16 5-67) in a first direction; and a first conductive film (Titizian 1648; Fig. 16; C16 5-67) provided adjacent to the first metal pad (Titizian 1634; Fig. 16; C16 5-67) in the first direction on the main surface of the semiconductor substrate (Titizian 1638; Fig. 16; C16 34-40 in view of Baliga 304; Fig. 9; C16 1-15; N+ silicon substrate), the first conductive film being in electrical contact with the semiconductor substrate (Titizian 1638; Fig. 16; C16 34-40 in view of Baliga 304; Fig. 9; C16 1-15; N+ silicon substrate). Applicant should also note that the recitation of “a passive element” has not been given patentable weight because it has been held that a preamble is denied the effect of a limitation where the claim is drawn to a structure and the portion of the claim following the preamble is a self-contained description of the structure not depending for completeness upon the introductory clause. Kropa v. Robie, 88 USPQ 478 (CCPA 1951). Regarding claim 10, modified Titizian (by Baliga) teaches all of the features of claim 1 (see alternative rejection for claim 10 in section 2 above). Modified Titizian (by Baliga) further teaches wherein the first metal pad (Titizian 1634; Fig. 16; C16 5-67) extends along a second direction intersecting the first direction, and wherein a length of the first metal pad (Titizian 1634; Fig. 16; C16 5-67) in the second direction are greater than a width of the first metal pad (Titizian 1634; Fig. 16; C16 5-67) in the first direction. Allowable Subject Matter 6. Claim 2 (and claims dependent upon claim 2, namely claims 3-6 and 9-11) is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form, and to include all of the limitations of the base claim and any intervening claims. 7. The following is a statement of reasons for the indication of allowable subject matter: A search of the prior art failed to disclose or reasonably suggest the limitations “wherein the first insulating film is provided on a first region in the main surface of the semiconductor substrate, wherein the first conductive film is provided on a second region adjacent to the first region in the first direction, the first conductive film is in ohmic contact with the main surface of the semiconductor substrate, and the first conductive film has an electric resistivity lower than an electric resistivity of the semiconductor substrate, the passive element further comprising: a second insulating film provided on a third region adjacent to the second region in the first direction in the main surface of the semiconductor substrate; and a second metal pad provided on the second insulating film, wherein the second region is located between the first region and the third region” of claim 2 (the individual limitations may be found just not in combination). Conclusion Any inquiry concerning this communication or earlier communications from the examiner should be directed to Omar Mojaddedi whose telephone number is 313-446-6582. The examiner can normally be reached on Monday – Friday, 8:00 a.m. to 4:00 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, Julio J. Maldonado, can be reached on 571-272-1864. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. 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. /OMAR F MOJADDEDI/Examiner, Art Unit 2898
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Prosecution Timeline

Dec 08, 2023
Application Filed
Jul 31, 2026
Non-Final Rejection mailed — §102, §103 (current)

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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 (+10.7%)
2y 4m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 528 resolved cases by this examiner. Grant probability derived from career allowance rate.

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