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 .
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 1-15 in the “Response to Restriction Requirement” filed on 04/23/2026 is acknowledged and entered by the Examiner.
This office action consider claims 1-20 pending for prosecution, wherein claims 16-20 are withdrawn from further consideration, and claims 1-15 are presented for examination.
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.
2. Claim 2 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to
particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding Claim 2, the instant claim recites limitations in view of the parent device claim 7, wherein the metes and bounds of the claimed method are vague and ill-defined as a result of uncertainty in the different boundaries and new limitations “comprising one of the following features: wherein the encapsulant comprises electrically conductive particles, for example carbon black, in a range from 0.025 weight percent to 0.05 weight percent in relation to the entire weight of the encapsulant; wherein the encapsulant is free of electrically conductive particles” (Claim 2; emphasis added). The claim is indefinite because of the following:
i) The claim is indefinite because “comprising one of the following features: wherein the encapsulant comprises electrically conductive particles, for example carbon black, in a range from 0.025 weight percent to 0.05 weight percent in relation to the entire weight of the encapsulant; wherein the encapsulant is free of electrically conductive particles” (Claim 2) is ambiguous and unclear. Claim 2, Line 2 states “the encapsulant comprises electrically conductive particles” and then Claim 2, Line 5 states “wherein the encapsulant is free of electrically conductive particles”, where these two limitations contradict one another. It is not clear how “the encapsulant comprises electrically conductive particles” and “the encapsulant is free of electrically conductive particles”. Therefore, the limitation of “comprising one of the following features: wherein the encapsulant comprises electrically conductive particles, for example carbon black, in a range from 0.025 weight percent to 0.05 weight percent in relation to the entire weight of the encapsulant; wherein the encapsulant is free of electrically conductive particles” (Claim 2) is indefinite and unclear.
The specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention, whereby the claims are rendered indefinite. Therefore, the resulting claim is indefinite and is failing to particularly point out and distinctly claim the subject matter. Appropriate clarification and/or correction are/is required within metes and bounds of the claimed invention.
As there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of the claim, it would not be proper for the examiner to reject such a claim on the basis of prior art. See MPEP § 706 and MPEP § 2173.II (second) wherein In re Steele, 305 F.2d 859, 134 USPQ 292 (CCPA 1962), a rejection under 35 U.S.C. 103 should not be based on considerable speculation about the meaning of terms employed in a claim or assumptions that must be made as to the scope of the claims.
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.
3. Claims 1-2, 4-5, and 9-15 is rejected under 35 U.S.C.103 as being unpatentable over Ohkoshi et al. (US 20240079345 A1; hereinafter Ohkoshi).
Regarding claim 1, Ohkoshi teaches a package (see the entire document, specifically Fig. 1+; [0001+], and as cited below), comprising:
a carrier ({101, 110}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0079]);
an electronic component (103; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]) mounted on the carrier ({101, 110}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]);
an encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]) comprising not more than 0.1 weight percent (see [0050]; in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05, I)), in relation to an entire weight of the encapsulant, of electrically conductive particles ({12}; see [0042, 0050]), wherein the encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]) at least partially encapsulates the electronic component (103; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0079]) and the carrier ({101, 110}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0079]); and
a further encapsulant ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]) covering an exterior surface of at least part of the encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]) and having a larger amount of electrically conductive material ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]; see [0074]; 200 μm) than the encapsulant ({10: 12, 14}; see [0046]; 100 μm or less).
Regarding claim 2, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further comprising one of the following features: wherein the encapsulant comprises electrically conductive particles, for example carbon black, in a range from 0.025 weight percent to 0.05 weight percent in relation to the entire weight of the encapsulant; wherein the encapsulant is free of electrically conductive particles (see section 2, above; 112(b) rejection).
Regarding claim 4, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further teaches wherein the electrically conductive material (20; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0007, 0039, 0074, 0081]) of the further encapsulant ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]) comprises electrically conductive particles, for example carbon black, or comprises at least one metal layer (20; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0007, 0039, 0074, 0081]).
Regarding claim 5, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further teaches wherein the encapsulant comprises ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]) a mold compound ({14}; [0052]).
Regarding claim 9, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further teaches wherein the encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]) forms an inner core and the further encapsulant ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]) forms an outer shell on at least part of the inner core ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]).
Regarding claim 10, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further teaches wherein the further encapsulant ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]) (see below for “is configured to provide better protection against electrostatic discharge than”) the encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]).
It is the Examiner’s position that the limitation of "wherein the further encapsulant is configured to provide better protection against electrostatic discharge than the encapsulant” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. Furthermore, because the device of Ohkoshi has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing 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” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Ohkoshi teaches the structure of claims 1 and 10 as detailed above. Thus, Ohkoshi teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 11, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further teaches wherein the further encapsulant ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]) (see below for “is configured to enable better laser marking thereon and/or therein than”) the encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]).
It is the Examiner’s position that the limitation of " wherein the further encapsulant is configured to enable better laser marking thereon and/or therein than the encapsulant” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. Furthermore, because the device of Ohkoshi has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing 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” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Ohkoshi teaches the structure of claims 1 and 11 as detailed above. Thus, Ohkoshi teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 12, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further teaches wherein the encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]) is in direct physical contact and the further encapsulant ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]) is not in direct physical contact with the electronic component and/or the carrier ({101, 110}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0079]).
Regarding claim 13, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further teaches wherein the further encapsulant ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]) defines part of an exterior outline of the package.
Regarding claim 14, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further teaches wherein the encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]) (see below for “is configured for providing a higher time-dependent dielectric breakdown safety than”) the further encapsulant ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]).
It is the Examiner’s position that the limitation of "wherein the encapsulant is configured for providing a higher time-dependent dielectric breakdown safety than the further encapsulant” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. Furthermore, because the device of Ohkoshi has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing 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” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Ohkoshi teaches the structure of claims 1 and 14 as detailed above. Thus, Ohkoshi teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Regarding claim 15, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further comprising at least one of the following features:
wherein the encapsulant is configured for providing a higher high-voltage safety than the further encapsulant;
wherein the electrically conductive particles comprise at least one of carbon black, titanium oxide, and crystalline petroleum coke;
wherein the electrically conductive particles have an electric conductivity of at least 0.01 S/cm, in particular at least 0.1 S/cm, more particularly in a range from 0.05 S/cm to 500 S/cm;
wherein the encapsulant is free of a low stress additive;
wherein the encapsulant comprises uncoated filler particles;
wherein part of the carrier (underside of {101, 110}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0079]) is exposed beyond the encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]) and beyond the further encapsulant ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]);
wherein the encapsulant comprises an electrostatic dissipative material, wherein for example the electrostatic dissipative material comprises at least one of electrically conductive particles bound to segments of an epoxy backbone of material of the encapsulant, and short electrically conductive moieties reacted with epoxy material of the encapsulant;
wherein the electronic component comprises a semiconductor chip, for example a power semiconductor chip
4. Claim 3 is rejected under 35 U.S.C.103 as being unpatentable over Ohkoshi et al. (US 20240079345 A1; hereinafter Ohkoshi), in view of Uchida et al. (US 20170267859 A1; hereinafter Uchida).
Regarding claim 3, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further teaches wherein the encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]) comprises (see below for “not more than 0.05 weight percent”), in relation to the entire weight of the encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]), of carbon (see below for “black”) as the electrically conductive particles ({12}; see [0042, 0050]).
As noted above, Ohkoshi does not expressly disclose “wherein the encapsulant comprises not more than 0.05 weight percent, in relation to the entire weight of the encapsulant, of carbon black as the electrically conductive particles”.
However, in the analogous art, Uchida teaches a resin composition for semiconductor encapsulation and to a semiconductor device using the composition ([0001]), wherein ([0001+]) resin composition for semiconductor encapsulation according to the above [1] or [2], wherein the content of the component (C) is from 60 to 95% by mass, and the content of the component (D) is from 0.01 to 5.0% by mass relative to the total amount of the resin composition for semiconductor encapsulation (see [0015]), where the content of the component (D) relative to the total amount of the resin composition is preferably from 0.01 to 5.0% by mass, more preferably from 0.1 to 3.0% by mass and when the amount is 0.01% by mass or more, laser marking visibility betters, where amorphous carbon of the component (D) is incorporated as a black colorant and comprises of carbon black ([0049-0051, 0055, 0070]).
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to modify Ohkoshi’s encapsulant with of material of Uchida’s encapsulant, and thereby, modified Ohkoshi’s (by Uchida) will have wherein the encapsulant (Ohkoshi {10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]) comprises not more than 0.05 weight percent (in view of Uchida [0049-0051, 0055, 0070]; in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. See MPEP 2144.05, I), in relation to the entire weight of the encapsulant (Ohkoshi {10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]), of carbon black as the electrically conductive particles (Ohkoshi {12}; see [0042, 0050] in view of Uchida [0049-0051, 0055, 0070]).
The ordinary artisan would have been motivated to modify Ohkoshi in the manner set forth above, at least, because this inclusion provides a resin composition where the content of the component (D) relative to the total amount of the resin composition is preferably from 0.01 to 5.0% by mass, more preferably from 0.1 to 3.0% by mass and when the amount is 0.01% by mass or more, laser marking visibility betters (Uchida [0049]).
5. Claim 6 is rejected under 35 U.S.C.103 as being unpatentable over Ohkoshi et al. (US 20240079345 A1; hereinafter Ohkoshi), in view of Min et al. (US 20170358540 A1; hereinafter Min).
Regarding claim 6, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further teaches wherein the further encapsulant ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]) comprises a mold compound ({16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097, 0040]; see [0007, 0039, 0074, 0081]), for example comprising (see below for “carbon black”) as the electrically conductive material.
As noted above, Ohkoshi does not expressly disclose “wherein the further encapsulant comprises a mold compound, for example comprising (see below for “carbon black”) as the electrically conductive material”.
However, in the analogous art, Min teaches a semiconductor package including shielding layers ([0002, 0074]), wherein ([0002+]) a substrate, a semiconductor chip, a molding layer, a first shielding layer, and a second shielding layer (400B; Fig. 5B; ([0074, 0039]), where the second shielding layer comprises of a second polymer (430B; Fig. 5B; ([0075]), second metal particles (410B; Fig. 5B; ([0075]), and a second conductive carbon material (420B; Fig. 5B; ([0075, 0039]), where the conductive carbon material may include graphite, carbon black, or carbon fiber (see [0039]).
It would have been obvious to one with ordinary skill in the art, before the effective filing date of the claimed invention, to modify Ohkoshi’s further encapsulant with of material of Min’s second shielding layer, and thereby, modified Ohkoshi’s (by Min) will have wherein the further encapsulant (Ohkoshi {20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097] in view of Min 400B; Fig. 5B; ([0074, 0039]) comprises a mold compound (Ohkoshi {16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097, 0040]; in view of Min 430B; Fig. 5B; ([0074, 0039]), for example comprising carbon black (in view of Min 420B; Fig. 5B; ([0075, 0039]) as the electrically conductive material.
The ordinary artisan would have been motivated to modify Ohkoshi in the manner set forth above, at least, because this inclusion provides a carbon black as the electrically conductive material in a shielding layer(Min [0075, 0039]), where carbon black provides electrical conductivity within a polymer layer with efficacy.
6. Claims 7-8 are rejected under 35 U.S.C.103 as being unpatentable over Ohkoshi et al. (US 20240079345 A1; hereinafter Ohkoshi), in view of the following statement.
Regarding claim 7, Ohkoshi teaches all of the features of claim 1.
Ohkoshi further teaches wherein the further encapsulant ({20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]) is a further carrier ({30, 20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0077, 0079, 0097]; see [0007, 0039, 0074, 0081]), (see below for “in particular comprising a ceramic sheet covered on both opposing main surfaces thereof with”) a metal layer ({20}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]; see [0007, 0039, 0074, 0081]) as the electrically conductive material.
As noted above, Ohkoshi does not expressly disclose “(wherein a sidewall of the bottom capacitor plate) is coplanar with (a sidewall of the one or more bottom plate contacts)”.
However, the Applicant has not presented persuasive evidence that the claimed “wherein the further encapsulant is a further carrier in particular comprising a ceramic sheet covered on both opposing main surfaces thereof with a metal layer as the electrically conductive material” is for a particular purpose that is critical to the overall claimed invention (i.e. the invention would not work without wherein the further encapsulant is a further carrier in particular comprising a ceramic sheet covered on both opposing main surfaces thereof with a metal layer as the electrically conductive material). Also, the Applicant has not shown that “wherein the further encapsulant is a further carrier in particular comprising a ceramic sheet covered on both opposing main surfaces thereof with a metal layer as the electrically conductive material” produces a result that was new or unexpected enough to patentably distinguish the claimed invention over the cited prior art. Instead, paragraph [0092] and Figure 1 of the instant disclosure discloses other possible options such as “a further encapsulant 112 is provided which covers an exterior surface of part of the encapsulant 110. For instance, further encapsulant 112 may be a further mold compound. For example, further encapsulant 112 may be formed by overmolding encapsulant 110. Referring to a further detail 160, further encapsulant 112 may have a larger amount of electrically conductive material 106 than the encapsulant 110”. Therefore, no rationale is given that the invention will not function without “wherein the further encapsulant is a further carrier in particular comprising a ceramic sheet covered on both opposing main surfaces thereof with a metal layer as the electrically conductive material”. Thus, the claimed “wherein the further encapsulant is a further carrier in particular comprising a ceramic sheet covered on both opposing main surfaces thereof with a metal layer as the electrically conductive material” is not critical to the invention.
Examiner would like to note that MPEP §2144.04.IV(B) guideline, where change of shape is a Legal Precedent as Source of Supporting Rationale. See In re Dailey, 357 F.2d 669, 149 USPQ 47 (CCPA 1966) (The court held that the configuration of the claimed disposable plastic nursing container was a matter of choice which a person of ordinary skill in the art would have found obvious absent persuasive evidence that the particular configuration of the claimed container was significant.).
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In view of the above, as there is no persuasive evidence that the particular configuration of “wherein the further encapsulant is a further carrier in particular comprising a ceramic sheet covered on both opposing main surfaces thereof with a metal layer as the electrically conductive material” is significant. Thus, the claimed limitation of “wherein the further encapsulant is a further carrier in particular comprising a ceramic sheet covered on both opposing main surfaces thereof with a metal layer as the electrically conductive material” is a matter of choice which a person of ordinary skill in the art would have found obvious as per MPEP §2144.04.IV(B) guideline. Therefore, the claimed limitation of “wherein the further encapsulant is a further carrier in particular comprising a ceramic sheet covered on both opposing main surfaces thereof with a metal layer as the electrically conductive material” is not patentable over Ohkoshi.
Regarding claim 8, Ohkoshi teaches all of the features of claim 7.
Ohkoshi further teaches wherein each of the carrier ({101, 110}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0079]) and the further carrier ({30, 20, 16}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0077, 0079, 0097]; see [0007, 0039, 0074, 0081]) is exposed beyond the encapsulant ({10: 12, 14}; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5; see [0039, 0040, 0042, 0046, 0050, 0052]) for removing heat, generated by the electronic component (103; see Figs. 3B in view of Figs. 1, 2A-2C, 3A-3B, 4, 5, 9A; see [0079, 0097]), by double-sided cooling.
It is the Examiner’s position that the limitation of " wherein each of the carrier and the further carrier is exposed beyond the encapsulant for removing heat, generated by the electronic component, by double-sided cooling” is a functional limitation of the apparatus claimed. While features of an apparatus may be recited either structurally or functionally, claims directed to apparatus must be distinguished from the prior art in terms of structure rather than function. In re Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429, 1431- 32 (Fed. Cir. 1997); see also In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120 USPQ 528, 531 (CCPA 1959); MPEP 2114. Furthermore, because the device of Ohkoshi has all of the structural limitations of the claimed invention the device is capable of operating in the manner claimed by the applicant. A claim containing 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” if the prior art apparatus teaches all the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987).
Moreover, as per MPEP 2112.01.I guideline, where the claimed and prior art products are identical or substantially identical in structure or composition, or are produced by identical or substantially identical processes, a prima facie case of either anticipation or obviousness has been established. In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977). In this case, Ohkoshi teaches the structure of claims 1 and 8 as detailed above. Thus, Ohkoshi teaches all of the structural elements of the claimed product, and when the structure recited in a reference is substantially identical to that of the claims, claimed properties or functions are presumed to be inherent.
Conclusion
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/OMAR F MOJADDEDI/Examiner, Art Unit 2898
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