Prosecution Insights
Last updated: October 02, 2026
Application No. 18/654,417

SEMICONDUCTOR DEVICE

Non-Final OA §102§103
Filed
May 03, 2024
Priority
Nov 05, 2021 — JP 2021-181313 +1 more
Examiner
DIAZ, JOSE R
Art Unit
Tech Center
Assignee
Rohm Co., Ltd.
OA Round
1 (Non-Final)
87%
Grant Probability
Favorable
1-2
OA Rounds
0m
Est. Remaining
95%
With Interview

Examiner Intelligence

Grants 87% — above average
87%
Career Allowance Rate
841 granted / 967 resolved
+27.0% vs TC avg
Moderate +8% lift
Without
With
+7.9%
Interview Lift
resolved cases with interview
Typical timeline
2y 5m
Avg Prosecution
21 currently pending
Career history
977
Total Applications
across all art units

Statute-Specific Performance

§101
0.4%
-39.6% vs TC avg
§103
42.2%
+2.2% vs TC avg
§102
33.8%
-6.2% vs TC avg
§112
8.3%
-31.7% vs TC avg
Black line = Tech Center average estimate • Based on career data from 967 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 . Claim Rejections - 35 USC § 102 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. Claims 1-2, 5-12, 15-17, and 19-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nagata (WO 2020/213603 A1). Regarding claim 1, Nagata discloses a semiconductor device comprising: a chip (2) having a main surface (top surface 3) [Fig. 2]; a main surface electrode (15 or 14) arranged on the main surface [Fig. 2]; a terminal electrode (16 and/or 23, respectively) that has a terminal surface (interface between 16 and 25 or surface 24, respectively) and a terminal side wall (interface between 16 and 17 or interface between 17 and 23, respectively), and that has a recessed portion (portion located within opening 13 or portion located within opening 18, respectively) recessed toward the main surface electrode side in the terminal surface [Fig. 2]; and a sealing insulator (12, 19 and/or 20) that covers a periphery of the terminal electrode (16 and/or 23) on the main surface such as to expose the terminal surface (interface between 16 and 23 or surface 24, respectively) and cover the terminal side wall [Fig. 2]. Regarding claim 2, Nagata discloses wherein the sealing insulator (12 and 17) has a portion (17) that covers the recessed portion (portion 16 located within opening 13) [Fig. 2]. Regarding claim 5, Nagata discloses wherein the recessed portion (16) is formed at a corner portion of the terminal surface (interface between 16 and 25) such as to define a step portion (Step) in the terminal side wall [Fig. 2, annotated below]. [AltContent: textbox (Top Planar Area)][AltContent: ][AltContent: textbox (Step)][AltContent: arrow] PNG media_image1.png 562 796 media_image1.png Greyscale Regarding claim 6, Nagata discloses wherein the recessed portion (16) is formed in an annular shape (13) extending along a peripheral edge of the terminal surface (interface between 16 and 25) such as to surround an inner portion of the terminal surface (interface between 16 and 25) in plan view [Fig. 1]. Regarding claim 7, Nagata discloses wherein the terminal electrode (16 and 23) includes a first layer portion (16) that is positioned on the main surface electrode side (15) and a second layer portion (23) that protrudes toward the opposite side with respect to the chip (2) from the first layer portion (16) such as to define the recessed portion with the first layer portion (16) and has the terminal surface (24) that is formed by the second layer portion (23) [Fig. 2], and the sealing insulator (12 and 17) covers the second layer portion (23) and the first layer portion (16) such as to expose the terminal surface (24) [Fig. 2]. Regarding claim 8, Nagata discloses wherein the first layer portion (16) has a first planar area (Top Planar Area including interfaces 16/19 and 16/25), and the second layer portion (23) has a second planar area (24) that is less than the first planar area (Top Planar Area) [Fig. 2, annotated above]. Regarding claim 9, Nagata discloses wherein the first layer portion (16) has a first thickness, and the second layer portion (23) has a second thickness exceeding the first thickness [Fig. 2]. Regarding claim 10, Nagata discloses wherein the first layer portion (16) has a first thickness, and the second layer portion (27) has a second thickness less than the first thickness [Fig. 2]. Regarding claim 11, Nagata discloses wherein the sealing insulator (12 and 17) has a laminated structure including a first sealing insulator (19) that covers a periphery of the first layer portion (16) on the main surface and a second sealing insulator (20) that covers a periphery of the second layer portion (23) on the first sealing insulator [Fig. 2]. Regarding claim 12, Nagata discloses wherein the first layer portion (16) has a first layer main surface (Top Planar Area) and a first layer side wall (edges after the Top Planar Area), the second layer portion (23) has a second layer main surface (24) and a second layer side wall (along edges 21/22) [Fig. 2, annotated above], the first sealing insulator (19) covers a periphery of the first layer portion on the main surface such as to expose the first layer main surface and cover the first layer side wall [Fig. 2], and the second sealing insulator (20) covers a periphery of the second layer portion (23) on the first sealing insulator such as to expose the second layer main surface (24) as the terminal surface and cover the second layer side wall [Fig. 2]. Regarding claim 15, Nagata discloses an insulating film (12) that covers the main surface electrode (portion 15 located within opening13); wherein the terminal electrode (16) has a portion that covers the insulating film (12) [Fig. 2]. Regarding claim 16, Nagata discloses wherein the sealing insulator (17) has a portion that covers the insulating film (12) [Fig. 2]. Regarding claim 17, Nagata discloses wherein the chip (2) has a laminated structure including a substrate (6) and an epitaxial layer (7), and includes the main surface (3) that is formed by the epitaxial layer [Fig. 2] Regarding claim 19, Nagata discloses wherein the chip (7) has a single layered structure consisting of an epitaxial layer [Fig. 2]. Regarding claim 20, Nagata discloses wherein the chip (2) includes a monocrystal of a wide bandgap semiconductor (SiC) [See the SiC chip 2 description in the DESCRIPTION-OF-EMBODIMENTS section of the Machine English Translation]. Claim Rejections - 35 USC § 103 The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. Claims 3-4 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Nagata (WO 2020/213603 A1). Regarding claim 3, Nagata discloses wherein the terminal electrode (layer 16 has a thickness of 10 μm; layer 25 has a thickness of 10 μm; layer 26 has a thickness of 10 μm; and layer 27 has a thickness of 3 μm ) is thicker than the chip (consider the epitaxial layer 7 as the chip layer having a thickness of 1 μm) [See DESCRIPTION-OF-EMBODIMENTS section of the Machine English Translation]. The court has held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541F.2d 257,191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Regarding claim 4, Nagata discloses wherein the sealing insulator (layer 19 has a thickness of 20 μm, and layer 20 has a thickness of 50 μm) is thicker than the chip (layer 6 has a thickness of 40 μm and layer 7 has a thickness of 1 μm) [See DESCRIPTION-OF-EMBODIMENTS section of the Machine English Translation]. The court has held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541F.2d 257,191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Regarding claim 18, Nagata discloses wherein the epitaxial layer (7) is thicker than the substrate (6) [See DESCRIPTION-OF-EMBODIMENTS section of the Machine English Translation, wherein Nagata, for example, discloses an epitaxial layer (7) having a thickness of 50 μm and a substrate (6) having a thickness of 40 μm]. The court has held that in the case where the claimed ranges “overlap or lie inside ranges disclosed by the prior art” a prima facie case of obviousness exists. In re Wertheim, 541F.2d 257,191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990). Allowable Subject Matter Claims 13-14 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Conclusion The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Nagata (US 2022/0181447) is the English equivalent to WO 2020/213603 A1; and Nakano et al. (US 2023/0103655) is related to the current application. Also, Uchida (2018/0174938) teaches first and second electrodes (159/112) in Figures 2A-2B]. Correspondence Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOSE R DIAZ whose telephone number is (571)272-1727. The examiner can normally be reached Monday-Friday. 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, Joshua Benitez can be reached at 571-270-1435. 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. /Jose R Diaz/Primary Examiner, Art Unit 2815
Read full office action

Prosecution Timeline

May 03, 2024
Application Filed
Sep 24, 2026
Non-Final Rejection mailed — §102, §103 (current)

Precedent Cases

Applications granted by this same examiner with similar technology

Patent 12740490
MOLDED DIRECT BONDED AND INTERCONNECTED STACK
1y 6m to grant Granted Sep 15, 2026
Patent 12727485
METHOD FOR FORMING ALIGNMENT KEYS OF SEMICONDUCTOR STRUCTURE AND SEMICONDUCTOR STRUCTURE HAVING ALIGNMENT KEYS
3y 11m to grant Granted Sep 01, 2026
Patent 12720813
SEMICONDUCTOR POWER DEVICE WITH IMPROVED RUGGEDNESS
2y 11m to grant Granted Aug 25, 2026
Patent 12721232
SEMICONDUCTOR PACKAGE HAVING MEMORY DEVICES STACKED IN STAIRCASE
2y 9m to grant Granted Aug 25, 2026
Patent 12721138
SEMICONDUCTOR STRUCTURES WITH THROUGH VIA
2y 9m to grant Granted Aug 25, 2026
Study what changed to get past this examiner. Based on 5 most recent grants.

Strategy Recommendation AI-generated — please review before filing

Get a prosecution strategy drawn from examiner precedents, rejection analysis, and claim mapping.
Typically takes 5-10 seconds — AI-generated, attorney review required before filing

Prosecution Projections

1-2
Expected OA Rounds
87%
Grant Probability
95%
With Interview (+7.9%)
2y 5m (~0m remaining)
Median Time to Grant
Low
PTA Risk
Based on 967 resolved cases by this examiner. Grant probability derived from career allowance rate.

Sign in with your work email

Enter your email to receive a magic link. No password needed.

Personal email addresses (Gmail, Yahoo, etc.) are not accepted.

Free tier: 3 strategy analyses per month