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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 is of U.S. Patent No. 12,057, 828 in view of Othman et al. (US 2020/0343167 and Othman hereinafter) further in view of Padmanabhan et al. (US 2016/0322485 and Padmanabhan hereinafter).
Regarding claim 1, PAT’ 828 teaches as shown in the table below.
Instant application 18/790431 (APP’ 431)
U.S. Patent 12,057, 828 (PAT’ 828)
1. A molded package, comprising: a mold compound; a first semiconductor die embedded in the mold compound and including a normally-on bidirectional switch device having a first normally-on gate, a second normally-on gate, a first source, and a second source; a second semiconductor die embedded in the mold compound and including a first normally-off switch device having a normally-off gate, a source, and a drain; a third semiconductor die embedded in the mold compound and including a second normally-off switch device having a normally-off gate, a source, and a drain, wherein the drain of the first normally-off switch device is electrically connected to the first source of the normally-on bidirectional switch device and the drain of the second normally-off switch device is electrically connected to the second source of the normally-on bidirectional switch device in a cascode configuration to form a bidirectional power switch;
a first externally accessible source terminal electrically connected to the source of the first normally-off switch device; a second externally accessible source terminal electrically connected to the source of the second normally-off switch device; a third externally accessible source terminal electrically connected to the first source of the normally-on bidirectional switch device; and a fourth externally accessible source terminal electrically connected to the second source of the normally-on bidirectional switch device.
1. A bidirectional power switch, comprising: a normally-on bidirectional switch device having a first normally-on gate, a second normally-on gate, a first source, and a second source; a first normally-off switch device having a normally-off gate, a source, and a drain; a second normally-off switch device having a normally-off gate, a source, and a drain, wherein the drain of the first normally-off switch device is electrically connected to the first source of the normally-on bidirectional switch device and the drain of the second normally-off switch device is electrically connected to the second source of the normally-on bidirectional switch device in a cascode configuration;
a first source terminal electrically connected to the source of the first normally-off switch device; a second source terminal electrically connected to the source of the second normally-off switch device; a third source terminal electrically connected to the first source of the normally-on bidirectional switch device; a fourth source terminal electrically connected to the second source of the normally-on bidirectional switch device; a first gate driver connected between the first source terminal and the third source terminal; and a second gate driver connected between the second source terminal and the fourth source terminal, wherein the bidirectional power switch is configured as a normally-on bidirectional switch.
Regarding claim 1, as shown in the table above PAT’ 828 fails to disclose a molded package, comprising: a mold compound; a first, second and third semiconductor die embedded in the mold compound; a third and fourth externally accessible source terminals.
However, Othman discloses [fig. 1A-1C] a molded package [100], comprising: a mold compound [102]; a first, second and third semiconductor die [at least one semiconductor die (chip) 106, par. 0027] embedded in the mold compound. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to modify the invention of PAT’ 828 by incorporating molded package including a semiconductor die as taught in Othman in order to improve molded semiconductor package with a more efficient thermal conduction path [par. 0001]. PAT’ 828 in view of Othman does not explicitly discloses a third and fourth externally accessible source terminals.
However, Padmanabhan discloses [see fig. 1] a bidirectional switch [10] with a third [13] and fourth [15] externally accessible source terminals. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to modify the invention of PAT’ 828 in view of Othman by incorporating externally accessible source terminals as taught in Padmanabhan in order to use in a packaged electronic device for external electronic connections.
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.
Claims 1 and 3 are rejected under 35 U.S.C. 103 as being unpatentable over Fornage et al. (US 2012/0287688 and Fornage hereinafter) in view of Othman et al. (US 2020/0343167 and Othman hereinafter) further in view of Padmanabhan et al (US 2016/0322485 and Padmanabhan hereinafter).
Regarding claim 1, Fornage discloses a package, comprising: a normally-on bidirectional switch device [106, fig. 1, par. 0017-0020] having a first normally-on gate [106-G1], a second normally-on gate [106-G2], a first source [106S1], and a second source [106-S2]; a first normally-off switch device [102] having a normally-off gate [control gate 1, par. 0017], a source [102-S], and a drain [102-D]; a second normally-off switch device [104] having a normally-off gate [control gate 2, par. 0017], a source [104-S], and a drain [104-D], wherein the drain of the first normally-off switch device is electrically connected to the first source of the normally-on bidirectional switch device and the drain of the second normally-off switch device is electrically connected to the second source of the normally-on bidirectional switch device in a cascode configuration [par. 0017] to form a bidirectional power switch [100]; a first externally accessible source terminal [102-S terminal] electrically connected to the source of the first normally-off switch device; a second externally accessible source terminal [104-S terminal] electrically connected to the source of the second normally-off switch device; a third source terminal [106-S1] electrically connected to the first source of the normally-on bidirectional switch device; and a fourth externally accessible source terminal [106-S2 terminal] electrically connected to the second source of the normally-on bidirectional switch device. Fornage does not explicitly discloses a molded package, comprising: a mold compound; a first, second and third semiconductor die embedded in the mold compound; a third and fourth externally accessible source terminals.
However, Othman discloses [fig. 1A-1C] a molded package [100], comprising: a mold compound [102]; a first, second and third semiconductor die [at least one semiconductor die (chip) 106, par. 0027] embedded in the mold compound. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to modify the invention of Fornage by incorporating molded package including a semiconductor die as taught in Othman in order to improve molded semiconductor package with a more efficient thermal conduction path [par. 0001]. Fornage in view of Othman does not explicitly discloses a third and fourth externally accessible source terminals.
However, Padmanabhan discloses [see fig. 1] a bidirectional switch [10] with a third [13] and fourth [15] externally accessible source terminals. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to modify the invention of Fornage in view of Othman by incorporating externally accessible source terminals as taught in Padmanabhan in order to use in a packaged electronic device for external electronic connections.
Regarding claim 3, Fornage in view of Othman further in view of Padmanabhan discloses wherein the bidirectional power switch is configurable as a normally-on bidirectional switch [par. 0017-0020].
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Fornage et al. in view of Othman et al. further in view of Padmanabhan et al. further in view of Machida et al. (US 2009/0167411 and Machida hereinafter).
Regarding claim 2, Fornage in view of Othman further in view of Padmanabhan discloses all the features with respect to claim 1 as indicated above. Fornage in view of Othman further in view of Padmanabhan does not explicitly discloses wherein the bidirectional power switch is configurable as a normally-off bidirectional switch.
However, Machida discloses [fig. 3] bidirectional power switch is configurable as a normally-off bidirectional switch [abstract]. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to modify the invention of Fornage in view of Othman further in view of Padmanabhan as taught in Machida for the purpose of provide a switching device that operates normally off solely by use of semiconductor materials that have already been developed and are reliable as such [par. 0008].
Claims 1, 5 and 10-14 are rejected under 35 U.S.C. 103 as being unpatentable over Padmanabhan et al. in view of Othman et al.
Regarding claim 1, Padmanabhan discloses a package [figs. 3-7], a first semiconductor die [430, fig. 4], a normally-on bidirectional switch device [330, par. 91] having a first normally-on gate [gate 330 connect to 312], a second semiconductor die [420, fig. 4], a second normally-on gate [gate 330 connect to 314], a first source [Source 330 connect to drain 320], and a second source [source 330 connect to drain 340]; a first normally-off switch device [320, para. 40 and 92] having a normally-off gate [gate 320], a source [source 320], and a drain [drain 320]; a third semiconductor die [440, fig. 4], a second normally-off switch device [340] having a normally-off gate [gate 340, para. 40 and 92], a source [source 340], and a drain [drain 340], wherein the drain of the first normally-off switch device is electrically connected to the first source of the normally-on bidirectional switch device and the drain of the second normally-off switch device is electrically connected to the second source of the normally-on bidirectional switch device in a cascode configuration [fig. 3] to form a bidirectional power switch [300]; a first source terminal [312] electrically connected to the source of the first normally-off switch device [320]; a second source terminal [314] electrically connected to the source of the second normally-off switch device [340]; a third source terminal [330 source terminal connected to 320] electrically connected to the first source of the normally-on bidirectional switch device; and a fourth externally accessible source terminal [330 source terminal connected to 340] electrically connected to the second source of the normally-on bidirectional switch device. Padmanabhan the embodiments figs. 3-7 does not explicitly discloses a molded package, comprising: a mold compound; a first, second and third semiconductor die embedded in the mold compound; a third and fourth externally accessible source terminals.
However, Othman discloses [fig. 1A-1C] a molded package [100], comprising: a mold compound [102]; a first, second and third semiconductor die [at least one semiconductor die (chip) 106, par. 0027] embedded in the mold compound. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to modify the invention of Fornage by incorporating molded package including a semiconductor die as taught in Othman in order to improve molded semiconductor package with a more efficient thermal conduction path [par. 0001]. Padmanabhan in the embodiments of figs. 3-7 in view of Othman does not explicitly discloses a first, second and third externally accessible source terminals.
However, Padmanabhan in the embodiment of fig. 1 discloses a bidirectional switch [10] with a third [13] and fourth [15] externally accessible source terminals. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to modify the invention of Padmanabhan in the embodiments of figs. 3-7 in view of Othman by incorporating externally accessible source terminals as taught in Padmanabhan fig. 1 in order to use in a packaged electronic device for external electronic connections.
Regarding claim 5. Padmanabhan in view of Othman discloses wherein the first semiconductor die comprises GaN [430, fig. 4; par. 40], the second semiconductor die comprises GaN or Si [420, fig. 4], and the third semiconductor die comprises GaN or Si [440, fig. 4].
Regarding claim 10. Padmanabhan in view of Othman discloses, [par. 40] wherein the normally-on bidirectional switch device is a GaN HEMT (high-electron mobility transistor), wherein the first normally-off switch device is a Si power MOSFET (metal-oxide-semiconductor field-effect transistor), and wherein the second normally-off switch device is a Si power MOSFET [par. 91].
Regarding claim 11, Padmanabhan in view of Othman discloses further comprising: a first externally accessible gate terminal [gate 316] electrically connected to the normally-off gate of the first normally-off switch device; and a second externally accessible gate terminal [gate 317] electrically connected to the normally-off gate of the second normally-off switch device.
Regarding claim 12, Padmanabhan in view of Othman discloses further comprising: a third externally accessible gate terminal [gate 330] electrically connected to the first normally-on gate of the normally-on bidirectional switch device; and a fourth externally accessible gate terminal [gate 330] electrically connected to the second normally-on gate of the normally-on bidirectional switch device.
Regarding claim 13, Padmanabhan in view of Othman discloses [see fig. 1] wherein the molded package is devoid of externally accessible gate terminals for the first and second normally-on gates of the normally-on bidirectional switch device.
Regarding claim 14, Padmanabhan in view of Othman discloses further comprising: an externally accessible metal lead [104, fig. 1B] or pad electrically connected to a substrate of the first semiconductor die.
Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Padmanabhan et al. in view of Othman et al. further in view of Gupta et al. (US 2022/0157981 and Gupta hereinafter).
Regarding claim 4, Padmanabhan in view of Othman discloses all the features with respect to claim 1 as indicated above. Padmanabhan in view of Othman does not explicitly discloses wherein the bidirectional power switch is configurable as a hybrid bidirectional switch.
However, Gupta disclose [fig. 8A] a bidirectional power switch [800] is configurable as a hybrid bidirectional switch [par. 0096]. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to modify the invention of Padmanabhan in view of Othman by hybrid bidirectional switch as taught in Gupta in order to improve the size, efficiency and output characteristics of the devices in order to accelerate market adaptation [par. 0005]
Claims 6-9 are rejected under 35 U.S.C. 103 as being unpatentable over Padmanabhan et al. in view of Othman et al. further in view of Machida et al. further in view of Soldano et al. (US 7164589 and Soldano hereinafter).
Regarding claim 6, Padmanabhan in view of Othman discloses all the features with respect to claim 1 as indicated above. Padmanabhan in view of Othman does not explicitly discloses a first diode having an anode electrically connected to the first normally-on gate of the normally-on bidirectional switch device and a cathode electrically connected to the source of first normally-off switch device; and a second diode having an anode electrically connected to the second normally-on gate of the normally-on bidirectional switch device and a cathode electrically connected to the source of second normally-off switch device.
However, Machida discloses comprising: a first diode [18] having an anode electrically connected to the normally-on gate [22] of the normally-on bidirectional switch device [13] and a cathode electrically connected to the source of first normally-off switch device [11]; and a second diode [19] having an anode electrically connected to the normally-on gate [22] of the normally-on bidirectional switch device and a cathode electrically connected to the source of second normally-off switch device [12]. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to modify the invention of Padmanabhan in view of Othman by incorporating a first diode and a second diode as taught in Machida in order to determine the gate potential of the bidirectional semiconductor switch [par. 0047]. Padmanabhan in view of Othman further in view of Machida does not explicitly disclose the first diode connected to first normally-on gate and the second diode connected to the second normally-on gate of the normally-on bidirectional switch device.
However, Soldano discloses [see fig. 3] a bidirectional switches [10] with a first diode [D3] connected to first normally-on gate [G1] and a second diode [D2] connected to a second normally-on gate [G2] of the normally-on bidirectional switch device. It would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention was made to modify the invention of Padmanabhan in view of Othman further in view of Machida by incorporating the diodes as taught in Soldano in order to improve normally ON bi-directional switches.
Regarding claim 7, Padmanabhan in view of Othman further in view of Machida further in view of Soldano wherein the first diode and the second diode are integrated in the first semiconductor die [para. 102-103, 117, 120; ref. Machida].
Regarding claim 8, Padmanabhan in view of Othman further in view of Machida further in view of Soldano wherein the first semiconductor die is a GaN die [420, fig. 4, para. 40], the second semiconductor die is a first Si semiconductor die [440, fig. 4], and the second semiconductor die is a second Si semiconductor die, and wherein the GaN semiconductor die.
Regarding claim 9, Padmanabhan in view of Othman further in view of Machida further in view of Soldano, wherein the normally-on bidirectional switch device has a breakdown voltage of 600V or higher [par. 71], and wherein both the first diode and the second diode have a breakdown voltage of 20V or less [par. 75-79, ref. Machida].
Response to Arguments
Applicant's arguments filed om 12/02/2025, with respect to the rejection of claim 1 have been fully considered but they are not persuasive.
Regarding claim 1, applicant argues that both the Fornage reference and the Othman
reference fail to disclose the claimed third and fourth externally accessible source terminals. Applicant argues that Figure 1 of the Padmanabhan reference shows a single bidirectional HEMT 10, not a normally-on bidirectional switch device, a first normally-off switch device and a second normally-off switch device, where the drain of the first normally-off switch device is electrically connected to the first source of the normally-on bidirectional switch device and the drain of the second normally-off switch device is electrically connected to the second source of the normally- on bidirectional switch device in a cascode configuration to form a bidirectional power switch. It is unclear why one of ordinary skill in the art would have been motivated to modify Fornage's bidirectional power switch 100 that comprises three (3) switches 102, 104 and 106 with Padmanabhan's single bidirectional HEMT 10, particularly in the manner recited in pending claim 1. Examiner respectfully disagrees.
The rejection does not rely on Padmanabhan reference to teach “a normally-on bidirectional switch device, a first normally-off switch device and a second normally-off switch device, where the drain of the first normally-off switch device is electrically connected to the first source of the normally-on bidirectional switch device and the drain of the second normally-off switch device is electrically connected to the second source of the normally- on bidirectional switch device in a cascode configuration to form a bidirectional power switch”. Instead, as clearly stated in the office action Fornage reference that teaches. Fornage explicitly discloses the above limitation and therefore meets the structural limitation recited in the claim.
Examiner cited Padmanabhan reference only to show the external third and fourth source terminals connection (e.g., external terminals 13 and 15, see below annotated drawing) connected to bidirectional switch, as required by the claim. Padmanabhan reference used solely to show that such external connection structure are well known and would have been obvious to incorporate into the device of Fornage and the Othman.
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Applicant also argues all §103 rejections based on the combination of the Fornage, Othman and Padmanabhan references lack rational underpinning. Examiner respectfully disagrees.
The office action provides a clear reason why a person of ordinary skill in the art would have combined the teachings of the references. Fornage and Othman discloses the normally-on bidirectional switch together with first and second normally off switch. Padmanabhan reference cited to show a known external electrical connection structure suitable for providing accessible external electrical terminals to a bidirectional HEMT based device.
A person of ordinary skill in the art would have been motivated to incorporate the external terminal configuration of Padmanabhan into the multi switch structure of Fornage and Othman to utilize well known technique for providing accessible external electrical connection, which is a routine packaging consideration in semiconductor device, and applying the known external connection arrangement of Padmanabhan to the device of Fornage and Othman that predictable use of a known solution to a known need. The modification does not after the fundamental operation of the switch device taught by Padmanabhan; it merely provides a known external connection arrangement to implement the claimed configuration.
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 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 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 action.
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/METASEBIA T RETEBO/Primary Examiner, Art Unit 2842