DETAILED ACTION
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1 and 12 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yoshihara et al. US 2008/0217760 A1.
Regarding claim 1, Yoshihara discloses:
A semiconductor module (Figs. 1-6) comprising:
a heat radiation plate (1 metal base);
a first insulating substrate (2 insulating circuit board) disposed on a first surface of the heat radiation plate and having a semiconductor chip provided thereon;
a frame-shaped case (5 outer resin case) surrounding the first insulating substrate;
a plurality of external terminals (6 mounting external terminals) provided across an inside and an outside of the case and electrically connected to the semiconductor chip via a bonding wire (7 wire); and
at least one second insulating substrate (10 terminal clamping frame) disposed between the heat radiation plate and the plurality of external terminals and having heat conductivity greater than that of the case,
wherein the at least one second insulating substrate and the first surface of the heat radiation plate are bonded to each other by a heat conductive bonding material (11 adhesive).
The examiner does not give patentable weight in regards to the claim limitation stating that “wherein each of the plurality of external terminals and the at least one second insulating substrate are joined to each other by press-fitting” since such a limitation is taken to be a product-by-process limitation and is considered nonlimiting. A product by process claim is directed to the product per se, no matter how actually made. See In re Fessman, 180 USPQ 324, 326 (CCPA 1974); In re Marosi et al, 218 USPQ 289, 292 (Fed. Cir. 1983); and particularly In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985), all of which make it clear that it is the patentability of the final structure of the product “gleaned" from the process steps, which must be determined in a “product by process” claim, and not the patentability of the process. See also MPEP 2113. Moreover, an old or obvious product produced by a new method is not a patentable product, whether claimed in “product by process” claims or not.
Regarding claim 12, Yoshihara discloses:
The examiner does not give patentable weight in regards to the claim limitation stating that “wherein the case is formed by insert molding using each of the plurality of external terminals that is an insert part” since such a limitation is taken to be a product-by-process limitation and is considered nonlimiting. A product by process claim is directed to the product per se, no matter how actually made. See In re Fessman, 180 USPQ 324, 326 (CCPA 1974); In re Marosi et al, 218 USPQ 289, 292 (Fed. Cir. 1983); and particularly In re Thorpe, 227 USPQ 964, 966 (Fed. Cir. 1985), all of which make it clear that it is the patentability of the final structure of the product “gleaned" from the process steps, which must be determined in a “product by process” claim, and not the patentability of the process. See also MPEP 2113. Moreover, an old or obvious product produced by a new method is not a patentable product, whether claimed in “product by process” claims or not.
Allowable Subject Matter
Claims 2-11 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.
The following is a statement of reasons for the indication of allowable subject matter:
The prior art fails to teach or clearly suggest the limitations of claim 2 stating “each of the plurality of second insulating substrates includes: an insulating plate; a first conductor disposed on a first surface of the insulating plate and bonded to the first surface of the heat radiation plate by the bonding material; and at least one second conductor disposed on a second surface of the insulating plate and separated for each of the plurality of external terminals”; of claim 4 stating “the second insulating substrate includes: an insulating plate, a first conductor disposed on a first surface of the insulating plate and bonded to the first surface of the heat radiation plate by the bonding material, and a plurality of second conductors arranged on a second surface of the insulating plate and separated for each of the plurality of external terminals”; and of claim 11 stating “wherein the bonding material is solder”. In light of these limitations, the prior art fails to anticipate or make obvious the claimed invention.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERROL V FERNANDES whose telephone number is (571)270-7433. The examiner can normally be reached on 9-5:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Britt Hanley can be reached on 571-270-3042. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ERROL V FERNANDES/Primary Examiner, AU 2893
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