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 .
Status of Prosecution
This office action considers claims 1-9, in Claims - 03/24/2023, pending for prosecution and are examined on their merits.
Objection to Specification
The specification is objected because, at least in paragraph [0034], the numeral 40 is assigned to semiconductor device 40 and semiconductor element 40 as well, which has direct effect on claim interpretation. Appropriate correction is required here or in any other part of disclosure such as specification, drawings and/or like.
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.
Claims 1-9 are 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.
Regarding claims, 1 the instant claims recites limitation “ a plating film disposed on the front surface metal body and the main terminal so as to cover the solid-state bonded portion, wherein the main terminal includes a wide terminal that has one solid-state bonded portion bonded to the front surface metal body and includes an overlapping region overlapping with the front surface metal body in the thickness direction, the overlapping region including a bonded region providing the solid-state bonded portion bonded to the front surface metal body and a non-bonded region, as a region other than the bonded region in the overlapping region, being adjacent to the bonded region at least in a width direction of the main terminal, so that a width of the overlapping region is greater than a width of the solid-state bonded portion in the width direction”(claim 1`, Ln 15-22), wherein there are multiple inconsistencies that make the claim indefinite. Specifically, the following are not clear:
From the limitation “the main terminal has a wide terminal” is the second recitation “a wide terminal” is a sub-terminal or a specific region in the main terminal?
From the limitation, “an overlapping region overlapping with the front surface metal body in the thickness direction” , overlapping region first characterized by “ overlapping with the front surface metal body and then by “in the thickness direction”. As best under strood from the disclosure, “surface is a X-Y plane (See Fig 9)” and thickness is in z -direction (see Fig 2, 6). In line 3-4, the previous recitation of “thickness direction” also represent z-direction in fig 2,6. Therefore, cited limitation is indefinite. The “in the thickness direction” makes impossible meeting the limitation “in a width direction of the main terminal, so that a width of the overlapping region is greater than a width of the solid-state bonded portion in the width direction”
Appropriate clarification and/or correction are/is required within metes and bounds of the claimed invention. For the purposes of evaluating the prior art, the Examiner could not ascertain the metes and bounds of the claimed invention. as claimed in the claim 1.
Moreover, it is suggested to avoid “so as to” that may be interpreted as intended use in limitation “a plating film disposed on the front surface metal body and the main terminal so as to cover the solid-state bonded portion”.
Claims 2-9 are rejected under 35 U.S.C. 112(b) because they inherit the above issues from their parent claim 1.
Prior art Rejections
As there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of claim 1 (and dependent claims 2-9), it would not be proper for the examiner to reject such a claim on the basis of prior art. See MPEP § 706. 03 and MPEP § 2173.06.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.
The prior art made of record form PTO-892 can be used to reject claims 1-0, once the issues in section II, above are resolved and section I is addressed..
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOAZZAM HOSSAIN whose telephone number is (571)270-7960. The examiner can normally be reached M-F: 8:30AM - 6:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Julio J. Maldonado can be reached on 571-272-1864. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOAZZAM HOSSAIN/Primary Examiner, Art Unit 2898
August 23, 2026
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