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 .
Information Disclosure Statement
The references listed in the Information Disclosure Statement (IDS) submitted on August 27, 2024 have been considered by the Examiner.
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “the groove has a cross-sectional shape a width of which decreases toward a bottom of the groove” of claim 2 and “wherein, in the molding, the pad is held down by the projection as a result of the projection reaching the first surface” must be shown or the features canceled from the claims. No new matter should be entered. The Examiner respectfully notes that he does see width (Wa) of groove (41a) shown in FIG. 4, but he does not see width (Wa) of groove (41a) decreasing toward a bottom of the groove, as recited in claim 2. The Examiner also respectfully notes that he does not see first surface (F1) illustrated with projection (122a) in the drawings.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the Examiner, the Applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Claim Objections
Claim 7 is objected to because of the following informality: on line 2, “wherein the molding includes” should be “wherein the molding step includes”. Appropriate correction is required.
Claim 8 is objected to because of the following informality: on line 2, “wherein, in the molding” should be “wherein, in the molding step,”. Appropriate correction is required.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 8, lines 2-3 recite: “wherein, in the molding, the pad is held down by the projection as a result of the projection reaching the first surface.” This recited language is ambiguous and clarification and/or correction are/is required to make its meaning clear and precise whereby the metes and bounds of the claimed invention may be ascertained. No new matter may be added. For example, it is unclear how the projection reaches the first surface of the housing because the drawings do not appear to show the first surface of the housing with the recited projection, as noted above in the objection to the drawings. As another example, the drawings (e.g., FIG. 4) appear to show the pads (e.g., 51a and 52b) on the first surface and held down by a recess (e.g., 112; FIG. 7) in which they are disposed during the molding. For purpose of examination, the Examiner is interpreting lines 2-3 of claim 8 as reciting: “wherein, in the molding, the pad is held down” because of these ambiguities.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-4 are rejected under 35 U.S.C. 103 as being unpatentable over US 2015/0279752 A1 (Yokoyama) in view of US 2023/0223504 A1 (Moon).
Regarding claim 1, Yokoyama discloses, A semiconductor module (semiconductor module (10); FIG. 1A; [0031]) comprising:
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a substrate (substrate (16); FIG. 1A; [0031]) for mounting a semiconductor element (semiconductor element (15); FIG. 1A; [0031]);
a frame-shaped housing (frame-shaped housing (11 and 14); FIGs. 1A and 1B; [0031] and [0032]) that surrounds (FIG. 1B) the substrate (16);
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a lead terminal (lead terminal (21A-21D); FIG. 1A; [0031]) that passes through (FIGs. 1A and 1B) the frame-shaped housing (11 and 14) from an inside to an outside (annotated FIG. 1A, above) of the frame-shaped housing (11 and 14); and
a bonding wire (bonding wire (22); FIGs. 1A and 1B; [0031]) configured to electrically connect ([0031]) the semiconductor element (15) to the lead terminal (21A-21D) within the frame-shaped housing (11 and 14), wherein
the lead terminal (21A-21D) has a pad (pad (21a); FIG. 1A; [0035]) disposed in the frame-shaped housing (11 and 14), the frame-shaped housing (11 and 14) having:
a first surface (annotated FIG. 1B, above) that is joined to the pad (21a); and
a second surface (annotated FIG. 1B, above) that is joined to the substrate (16) with an adhesive agent ([0033]), the second surface (annotated FIG. 1B, above) facing in a direction opposite to the first surface (annotated FIG. 1B, above), and
an inner peripheral surface (annotated FIG. 1B, above) of the frame-shaped housing (11 and 14) having a groove (groove (12a); FIG. 1B; [0033]), the groove (12a) extending from the substrate (16) toward the pad (21a).
But, Applicant may argue that Yokoyama does not appear to explicitly disclose the solution to the technical problem of fabricating a groove that extends over an entire range from the first surface to the second surface.
However, in analogous art, Moon discloses that it was well-known to one of ordinary skill in the art before the effective filing date of the claimed invention that a housing (housing (200); FIG 1; [0048]) having a first surface (annotated FIG. 1, below) and a second surface (annotated FIG. 1, below) may be predicably fabricated to include a groove (groove (220); FIG. 1; [0052]) that extends over an entire range from the first surface (annotated FIG. 1, below) to the second surface (annotated FIG. 1, below), thereby solving this technical problem.
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Therefore, one of ordinary skill in the art would have recognized, having the prior art teachings of Yokoyama and Moon before him/her, that there are a finite number of predicable solutions regarding the extension of a groove over a range from a first surface to a second surface of a housing—i.e., (i) the groove can extend over an entire range from the first surface to the second surface of the housing, as disclosed by Moon, or (ii) the groove does not extend over an entire range from the first surface to the second surface of the housing, as Applicant may argue that Yokoyama discloses—and, absent unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try each of these predicable solutions with a reasonable expectation of success one of which is that the groove (12a) extends over an entire range from the first surface (annotated FIG. 1B, above) to the second surface (annotated FIG. 1B, above) of housing (11 and 14) of Yokoyama, as recited in claim 1. Please see, MPEP 2143(E)—“Obvious To Try”—Choosing From A Finite Number Of Identified, Predicable Solutions, With A Reasonable Expectation Of Success.
Regarding, claim 2, Yokoyama in view of Moon discloses, The semiconductor module (10) according to claim 1, wherein the groove (12a) has a cross-sectional shape a width of which decreases toward a bottom (annotated FIG. 1B, above) of the groove (12a) so that the width fits substrate (16) (Moon, [0052]). Please see, MPEP 2143(G)— Some Teaching, Suggestion, Or Motivation In The Prior Art that Would Have Led One Of Ordinary Skill To Modify The Prior Art Reference Or To Combine Prior Art Reference Teachings To Arrive At The Claimed Invention. Please also see, MPEP 2144(IV)—Rational Different From Applicant’s Is Permissible.
Regarding, claim 3, Yokoyama in view of Moon discloses, The semiconductor module (10) according to claim 1, wherein a width of the groove (12a) is smaller than a width of the pad (21a) thereby preventing pad (21a) from being disposed in groove (12a) during manufacture of semiconductor module (10). Please see, MPEP 2143(G) and 2144(IV), both above.
Regarding claim 4, Yokoyama in view of Moon discloses, The semiconductor module (10) according to claim 1, wherein the lead terminal (21A-21D) is joined to the frame-shaped housing (11 and 14) by insert molding (Yokoyama, [0031]).
Claim 5 is rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama in view of Moon and further in view of US2020/0279983 A1 (Takojima).
Regarding claim 5, Yokoyama in view of Moon discloses, The semiconductor module (10) according to claim 4, wherein the frame-shaped housing (11 and 14) is made from a resin composition (Yokoyama, [0031]).
But, Applicant may argue that Yokoyama in view of Moon does not appear to explicitly disclose a resin composition including a thermoplastic resin.
However, in analogous art, Takojima discloses that it was well-known to one of ordinary skill in the art before the effective filing date of the claimed invention that use of thermoplastic resins has several advantages including that they are resistant to mechanical shock, show little discoloration under high temperature and high humidity or when irradiated with ultraviolet rays, and are relatively inexpensive ([0070]).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention having the teachings of Yokoyama, Moon, and Takojima before him/her that the resin composition of Yokoyama in view of Moon made include a thermoplastic resin, as taught by Takojima, so that the resin composition of Yokoyama in view of Moon has the advantages of being resistant to mechanical shock, showing little discoloration under high temperature and high humidity or when irradiated with ultraviolet rays, and being relatively inexpensive, as also taught by Takojima. Please see, MPEP 2143(G) and 2144(IV), both above.
Claims 6 and 9 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama in view of Moon.
Regarding claim 6, Yokoyama discloses, A manufacturing method for a semiconductor module ([0003]) (semiconductor module (10); FIG. 8; [0031]), wherein the semiconductor module (10) includes:
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a substrate (substrate (16); FIG. 8; [0031]) for mounting a semiconductor element (semiconductor element (15); FIG. 1A; [0031]);
a frame-shaped housing (frame-shaped housing 11, 41 and 42); FIGs. 6 and 8; [0031] and [0043]) made from a resin composition ([0031]), the frame-shaped housing (11, 41 and 42) surrounding (FIG. 8) the substrate (16);
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a lead terminal (lead terminal (21A-21D); FIG. 1A; [0054]) that passes through (FIGs. 6 and 8) the frame-shaped housing (11, 41, and 42) from an inside to an outside (annotated FIG. 8, above) of the frame-shaped housing (11, 41, and 42); and
a bonding wire (bonding wire (22); FIG. 8; [0055]) configured to electrically connect ([0031] and [0055]) the semiconductor element (15) to the lead terminal (21A-21D) within the frame-shaped housing (11, 41, and 42),
the method comprising:
molding the frame-shaped housing (11, 41, and 42) by insert molding (0057]) integrally with a lead frame (lead frame (31); FIG. 5; [0054]) that includes the lead terminal (21A-21D);
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and
joining the substrate (16) and the frame-shaped housing (11, 41, and 42) to each other with an adhesive agent ([0067]),
wherein
the lead terminal (21A-21D) has a pad (pad (21a); FIG. 1A; [0055]) disposed in the frame-shaped housing (11, 41, and 42),
the frame-shaped housing (11, 41, and 42) has:
a first surface (annotated FIG. 6, above) that is joined to the pad (21a); and
a second surface (annotated FIG. 6, above) that is joined to the substrate (16) with the adhesive agent ([0067]), the second surface (annotated FIG. 6, above) facing in a direction opposite to the first surface (annotated FIG. 6, above), and
an inner peripheral surface (annotated FIG. 6, above) of the frame-shaped housing (11, 41, and 42) has a groove (groove (43); FIG. 6; [0057]), the groove (43) extending toward the pad (21a) (annotated FIG. 6, above).
But, Applicant may argue that Yokoyama does not appear to explicitly disclose the solution to the technical problem of fabricating a groove that extends over an entire range from the first surface to the second surface, the groove extending from the substrate.
However, in analogous art, Moon discloses that it was well-known to one of ordinary skill in the art before the effective filing date of the claimed invention that a housing (housing (200); FIG 1; [0048]) having a first surface (annotated FIG. 1, above) and a second surface (annotated FIG. 1, above) may be predicably fabricated to include a groove (groove (220); FIG. 1; [0052]) that extends over an entire range from the first surface (annotated FIG. 1, above) to the second surface (annotated FIG. 1, above), thereby solving this technical problem.
Therefore, one of ordinary skill in the art would have recognized, having the prior art teachings of Yokoyama and Moon before him/her, that there are a finite number of predicable solutions regarding the extension of a groove over a range from a first surface to a second surface of a housing—i.e., (i) the groove can extend over an entire range from the first surface to the second surface of the housing, as disclosed by Moon, or (ii) the groove does not extend over an entire range from the first surface to the second surface of the housing, as Applicant may argue that Yokoyama discloses—and, absent unexpected results, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to try each of these predicable solutions with a reasonable expectation of success one of which is that the groove (43) extends over an entire range from the first surface (annotated FIG. 1B, above) to the second surface (annotated FIG. 1B, above) of housing (11, 41, and 42) of Yokoyama, the groove extending from the substrate (16) of Yokoyama, as recited in claim 1, because second surface (annotated FIG. 6, above) is joined to substrate (16) with the adhesive agent ([0067]), as also recited in claim 1. Please see, MPEP 2143(E), above.
Regarding claim 9, Yokoyama in view of Moon discloses, The manufacturing method for the semiconductor module (10) according to claim 6, further comprising bonding the bonding wire (22) to the pad (21a) or to an electronic component on the pad after the joining (Yokoyama, [0068]).
Claims 7 and 8 are rejected under 35 U.S.C. 103 as being unpatentable over Yokoyama in view of Moon and further in view of US 2007/0132112 A1 (Ozaki).
Regarding claim 7, Yokoyama in view of Moon does not appear to explicitly disclose, wherein the molding includes forming the groove using a mold having a projection corresponding to the groove.
However, in analogous art, Ozaki discloses that it was well-known to one of ordinary skill in the art before the effective filing date of the claimed invention that a groove (groove (2); FIG. 1; [0029]) may be predictably formed in a housing (housing (2); FIG. 1; [0026])
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by a mold (mold (20); FIG. 4D; [0025]) having a projection (projection (23); FIG. 4D; [0037]) corresponding to groove (10).
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Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention having the teachings of Yokoyama, Moon and Ozaki before him/her that the molding includes forming the groove (43) of Yokoyama in view of Moon by predicably using a mold having a projection corresponding to the groove (43), as taught by Ozaki, with no change in the function of groove (43) of Yokoyama in view of Moon by virtue of being formed by a mold having a projection corresponding thereto. Please see, MPEP 2143(A)—Combining Prior Art Elements According To Known Methods To Yield Predicable Results.
Regarding claim 8, Yokoyama in view of Moon and further in view of Ozaki discloses, The manufacturing method ([0003]) for the semiconductor module (10) according to claim 7, wherein, in the molding, the pad (21a) is held down (annotated FIG. 6, above—pad (21a) is held down) by the projection (23) as a result of the projection (23) reaching the first surface (annotated FIG. 6, above).1
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure..
US 2022/0415764 A1 (Tanioka)—Discloses a semiconductor module (FIG. 6) including a substrate (111), a frame-shaped resin housing (50) having a groove (20), a semiconductor element (30), a lead terminal (12) passing through housing (50) and having a bonding pad (49), and a boding wire (41) electrically connecting semiconductor element (30) to lead terminal (12).
US 2016/0155687 A1 (Takizawa)—Discloses it was well-known to one of ordinary skill in the art before the effective filing date of the claimed invention that a frame-shaped housing (24 and 25) of a semiconductor module may be predicably formed to have a groove (26) that has a cross-sectional width (FIG. 2) that decreases toward a bottom of groove (26).
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Erik A. Anderson whose telephone number is (703) 756-1217. The Examiner can normally be reached Monday-Friday 8:30 a.m.-4:30 p.m. (Pacific Time Zone).
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, William B. Partridge, can be reached at (571) 270-1402. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/ERIK A. ANDERSON/Examiner, Art Unit 2812
/William B Partridge/Supervisory Patent Examiner, Art Unit 2812
1 Please see the rejection of claim 8, above, under 35 U.S.C. 112(b) for how the recited language of claim 8 is being interpreted for purpose of examination.
Prosecution Insights