`
`UNITED STATES PATENT AND TRADEMARK OFFICE
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria1 Virginia 22313- 1450
`www.uspto.gov
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`APPLICATION NO.
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` F ING DATE
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`FIRST NAMED INVENTOR
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`ATTORNEY DOCKET NO.
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`
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`CONF {MATION NO.
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`13/457,585
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`04/27/2012
`
`Kei TOYOTA
`
`MTS—3668US
`
`6971
`
`52473
`7590
`“”400”
`W
`RATNERPRESTIA —
`PO. BOX 980
`WRIGHT, TUCKER I
`VALLEY FORGE, PA 19482-0980
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`PAPER NUMBER
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`ART UNIT
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`2891
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`
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`NOT *ICATION DATE
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`DELIVERY MODE
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`05/ 14/2014
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`ELECTRONIC
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`Please find below and/or attached an Office communication concerning this application or proceeding.
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`The time period for reply, if any, is set in the attached communication.
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`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
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`ptocorrespondence @ratnerprestia.c0m
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`PTOL—90A (Rev. 04/07)
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`

`

`
`
`Applicant(s)
`Application No.
` 13/457,585 TOYOTA, KEI
`
`Examiner
`Art Unit
`AIA (First Inventorto File)
`Office Action Summary
`
`2891Tucker Wright a?”
`
`-- The MAILING DA TE of this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLY IS SET TO EXPIRE g MONTHS FROM THE MAILING DATE OF
`THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`after SIX (6) MONTHS from the mailing date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHS from the mailing date of this communication.
`Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, even if timely filed, may reduce any
`earned patent term adjustment. See 37 CFR 1.704(b).
`
`In no event, however, may a reply be timely filed
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`-
`-
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`Status
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`1)IXI Responsive to communication(s) filed on 2/25/2014.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
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`2b)lX| This action is non-final.
`2a)I:| This action is FINAL.
`3)I:I An election was made by the applicant in response to a restriction requirement set forth during the interview on
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`; the restriction requirement and election have been incorporated into this action.
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`4)|:I Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under EX parte Quay/e, 1935 CD. 11, 453 O.G. 213.
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`3) D Interview Summary (PT0_413)
`1) E Notice of References Cited (PTO-892)
`Paper No(s)/Mai| Date.
`.
`.
`—
`4) I:I Other'
`2) D Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
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`Paper No(s)/Mai| Date .
`U.S. Patent and Trademark Office
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
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`Part of Paper No./Mai| Date 20140507-A
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`Disposition of Claims*
`5)|XI Claim(s) 1 and 3-13 is/are pending in the application.
`5a) Of the above claim(s) M is/are withdrawn from consideration.
`6 III Claim s) _ is/are allowed.
`s Lg is/are rejected.
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`is/are objected to.
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`) )
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`_
`
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`are subject to restriction and/or election requirement.
`9)|:l Claim(s
`)
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
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`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events"
`h/index.‘s
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`
`
`
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`or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
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`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|:I The drawing(s) filed on _ is/are: a)I:I accepted or b)I:I objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
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`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
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`Priority under 35 U.S.C. § 119
`12)I:I Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d) or (f).
`Certified copies:
`
`b)I:I Some” c)I:I None of the:
`a)I:I All
`1.I:I Certified copies of the priority documents have been received.
`2.I:I Certified copies of the priority documents have been received in Application No.
`3.I:I Copies of the certified copies of the priority documents have been received in this National Stage
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`application from the International Bureau (PCT Rule 17.2(a)).
`** See the attached detailed Office action for a list of the certified copies not received.
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`Attachment(s)
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`
`
`

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`Application/Control Number: 13/457,585
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`Page 2
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`Art Unit: 2891
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`DETAILED ACTION
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`1.
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`The present application is being examined under the pre-AIA first to invent
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`provisions.
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`Continued Examination Under 37 CFR 1. 114
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`2.
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`A request for continued examination under 37 CFR 1.114, including the fee set
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`forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this
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`application is eligible for continued examination under 37 CFR 1.114, and the fee set
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`forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action
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`has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on
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`2/25/2014 has been entered.
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`Claim Rejections - 35 USC § 1 12
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`The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
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`IN GENERAL—The specification shall contain a written description of the
`(a)
`invention, and of the manner and process of making and using it, in such full, clear, concise,
`and exact terms as to enable any person skilled in the art to which it pertains, or with which it
`is most nearly connected, to make and use the same, and shall set forth the best mode
`contemplated by the inventor orjoint inventor of carrying out the invention.
`
`The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
`
`The specification shall contain a written description of the invention, and of the
`manner and process of making and using it, in such full, clear, concise, and exact terms as to
`enable any person skilled in the art to which it pertains, or with which it is most nearly
`connected, to make and use the same, and shall set forth the best mode contemplated by the
`inventor of carrying out his invention.
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`4.
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`Claims 1 and 3-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-
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`AIA), first paragraph, as failing to comply with the written description requirement. The
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`claim(s) contains subject matter which was not described in the specification in such a
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`

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`Application/Control Number: 13/457,585
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`Page 3
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`Art Unit: 2891
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`way as to reasonably convey to one skilled in the relevant art that the inventor or a joint
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`inventor, or for pre-AIA the inventor(s), at the time the application was filed, had
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`possession of the claimed invention. Specifically, claim 1 recites “the protecting film is a
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`silicone material which does not contain a microcapsule” which does not have basis in
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`the original disclosure. A search of the original specification for “microcapsule” yields no
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`result. In addition, with respect to the protecting film, the original specification does not
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`exclude any material. In accordance with M.P.E.P. §2173.05(i), “[ajny claim containing a
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`negative limitation which does not have basis in the original disclosure should be
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`rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to
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`comply with the written description requirement.”
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`Claim Rejections - 35 USC § 103
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`5.
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`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
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`for all obviousness rejections set forth in this Office action:
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`(a) A patent may not be obtained though the invention is not identically disclosed or described
`as set forth in section 102 of this title, if the differences between the subject matter sought to
`be patented and the prior art are such that the subject matter as a whole would have been
`obvious at the time the invention was made to a person having ordinary skill in the art to which
`said subject matter pertains. Patentability shall not be negatived by the manner in which the
`invention was made.
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`6.
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`Claims 1 and 6-7 are rejected under pre-AIA 35 U.S.C. 103(a) as being
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`unpatentable over Mine (US Patent No. 5,008,733) in view of Yamanaka (US Patent
`
`NO. 5,998,862).
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`Regarding claim 1,
`
`in FIG. 5, Mine discloses a substrate (4/9); a
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`semiconductor element (1) which is mounted on the substrate; a protecting film
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`

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`Application/Control Number: 13/457,585
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`Page 4
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`Art Unit: 2891
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`which (silicone resin 5, col. 6, line 43) covers at least a part of the semiconductor
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`element; an encapsulation plastic (plastic case 10, col. 6, lines 46-47) which
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`encapsulates the semiconductor element and the protecting film; and a gap
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`(space between elements 5 and 10) in which the protecting film and the
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`encapsulation plastic do not contact one another, the gap existing between the
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`protecting film and the encapsulation plastic, wherein the protecting film material
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`is a material which is inferior in wettability ("inferior in wettability" has a scope
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`including a different wettability as no independent reference point is claimed to
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`define the term "inferior") to the encapsulation plastic (the protecting film is made
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`of a different material than the encapsulation plastic and as such each has a
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`different wettability), and the protecting film is a silicone material which does not
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`contain a microcapsule (no microcapsule is disclosed), and the protecting film
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`has a water repellency (silicone resin does not absorb water and as such has a
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`water repellency).
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`Mine appears not to explicitly disclose that the encapsulation plastic (or
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`plastic lid) is made of a resin.
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`The art however well recognized thermoplastic resin to be suitable for use
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`as a plastic lid. See, for example, Yamanaka, column 20, lines 5-10.
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`According to well-established patent law precedents (see, for example,
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`M.P.E.P. § 2144.07), therefore, it would have been obvious to a person of
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`ordinary skill in the art at the time of invention to have used thermoplastic resin
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`for the Mine disclosed plastic lid for its recognized suitability as a plastic lid.
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`Application/Control Number: 13/457,585
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`Page 5
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`Art Unit: 2891
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`Regarding claim 6, the combination of Mine and Yamanaka appears not to
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`explicitly disclose that a thickness of the gap is not less than 0.1 pm and not
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`more than 100 pm.
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`There is no evidence showing the criticality of the claimed gap thickness.
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`In Mine the thickness of the gap is directly related to the thickness of the
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`protecting film (the greater the gap the thinner the protecting film). The art well
`
`recognized that the thickness of protecting film controls parameters critical for
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`device performance, including mechanical viability (which includes strength as
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`imparted by thickness). Protecting film thickness is therefore an art recognized
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`result affecting parameter.
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`According to well established patent law precedent (see, for example,
`
`M.P.E.P. § 2144.05), therefore, it would have been obvious to determine (for
`
`example by routine experimentation) the optimum protecting film thickness. In
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`doing so, the optimum gap thickness is also determined.
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`Regarding claim 7, the combination of Mine and Yamanaka discloses (see
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`Mine, FIG. 5) that the substrate is a lead frame, the semiconductor element and
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`an external terminal of the lead frame (4) are connected with a bonding metal
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`wire (11), and the protecting film covers a connecting portion of the bonding
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`metal wire, at which the bonding metal wire is connected to the semiconductor
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`element.
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`Application/Control Number: 13/457,585
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`Page 6
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`Art Unit: 2891
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`7.
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`Claims 3-5 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable
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`over Mine (US Patent No. 5,008,733) in view of Yamanaka (US Patent No. 5,998,862)
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`as applied to claim 1 above, and further in view of Applicant's Admitted Prior Art
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`(AAPA).
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`Regarding claim 3, the combination of Mine and Yamanaka appears not to
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`explicitly disclose that the protecting film is made from a silicone rubber, wherein
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`the silicone rubber material has an interfacial tension energy that is not less than
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`15 mN/m and not more than 30mN/m, and the interfacial tension energy of the
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`encapsulation resin is not less than 40mN/m and not more than 60mN/m.
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`The art however well recognized a protecting film made of a silicone
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`rubber material having an interfacial tension energy that is not less than 15 mN/m
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`and not more than 30mN/m to be suitable for use as a protecting film. See, for
`
`example, AAPA, paragraphs [0004]-[0007] and [0071]-[0081] of the publication of
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`the present application which discloses a known silicone rubber protecting film
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`and a known silicone rubber formation process.
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`According to well-established patent law precedents (see, for example,
`
`M.P.E.P. § 2144.07), therefore, it would have been obvious to a person of
`
`ordinary skill in the art at the time of invention to have formed the Mine disclosed
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`protecting film using the silicone rubber material of AAPA having an interfacial
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`tension energy that is not less than 15 mN/m and not more than 30mN/m for its
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`recognized suitability as a protecting film.
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`

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`Application/Control Number: 13/457,585
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`Page 7
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`Art Unit: 2891
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`Regarding claim 4, the combination of Mine and Yamanaka appears not to
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`explicitly disclose that the protecting film is made from a silicone rubber having a
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`thickness which is not less than 10 um and not more than 2000 um, and the
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`protecting film has an elastic modulus which is not less than 0.5 MPa and not
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`more than 10 MPa under conditions of 25°C to 260°C.
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`The art however well recognized a protecting film made of a silicone
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`rubber material having an elastic modulus which is not less than 0.5 MPa and not
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`more than 10 MPa under conditions of 25°C to 260°C to be suitable for use as a
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`protecting film. See, for example, AAPA, paragraphs [0004]-[0007], [0071]-
`
`[0081], and [0084] of the publication of the present application which discloses a
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`known silicone rubber protecting film and a known silicone rubber formation
`
`process.
`
`According to well-established patent law precedents (see, for example,
`
`M.P.E.P. § 2144.07), therefore, it would have been obvious to a person of
`
`ordinary skill in the art at the time of invention to have formed the Mine disclosed
`
`protecting film using the silicone rubber material of AAPA having an elastic
`
`modulus which is not less than 0.5 MPa and not more than 10 MPa under
`
`conditions of 25°C to 260°C for its recognized suitability as a protecting film.
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`The combination of Mine, Yamanaka, and AAPA appears not to explicitly
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`disclose that the protecting film has a thickness which is not less than 10um and
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`not more than 2000 um.
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`There is no evidence showing the criticality of the claimed thickness.
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`

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`Application/Control Number: 13/457,585
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`Page 8
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`Art Unit: 2891
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`The art well recognized that the thickness of a silicone rubber protecting
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`film controls parameters critical for device performance, including mechanical
`
`viability (which includes strength as imparted by thickness). Silicone rubber
`
`protecting film thickness is therefore an art recognized result affecting parameter.
`
`According to well established patent law precedent (see, for example,
`
`M.P.E.P. § 2144.05), therefore, it would have been obvious to determine (for
`
`example by routine experimentation) the optimum silicone rubber protecting film
`
`thickness.
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`Regarding claim 5, the combination of Mine and Yamanaka appears not to
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`explicitly disclose that the protecting film is made from a silicone rubber wherein
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`a precursor of the silicone rubber material has an organopolysiloxane framework,
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`and the precursor is cured in a thermosetting reaction due to a hydrosilylation
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`reaction, so that the precursor becomes silicone rubber has a siloxane
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`framework.
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`The art however well recognized a protecting film made of a silicone
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`rubber material formed by a process that includes a precursor of the silicone
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`rubber material having an organopolysiloxane framework, and the precursor is
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`cured in a thermosetting reaction due to a hydrosilylation reaction, so that the
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`precursor becomes silicone rubber having a siloxane framework to be suitable for
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`use as a protecting film. See, for example, AAPA, paragraphs [OOO4]-[OOO7] and
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`[OO71]—[OO81] of the publication of the present application which discloses a
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`

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`Application/Control Number: 13/457,585
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`Page 9
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`Art Unit: 2891
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`known silicone rubber protecting film and a known silicone rubber formation
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`process.
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`According to well-established patent law precedents (see, for example,
`
`M.P.E.P. § 2144.07), therefore, it would have been obvious to a person of
`
`ordinary skill in the art at the time of invention to have to have formed the Mine
`
`disclosed protecting film using the silicone rubber material of AAPA for its
`
`recognized suitability as a protecting film.
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`Response to Arguments
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`8.
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`Applicant’s arguments with respect to claims 1 and 3-7 have been considered but
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`are moot because the arguments do not apply to the combination of references being
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`used in the current rejection.
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`Conclusion
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`Any inquiry concerning this communication or earlier communications from the
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`examiner should be directed to Tucker Wright whose telephone number is (571 )270-
`
`3234. The examiner can normally be reached on Mon - Thur 8:30am-5:30pm EST.
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`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
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`supervisor, Matthew Landau can be reached on (571) 272-1731. The fax phone
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`number for the organization where this application or proceeding is assigned is 571 -
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`273-8300.
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`

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`Application/Control Number: 13/457,585
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`Page 10
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`Art Unit: 2891
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`Information regarding the status of an application may be obtained from the
`
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`
`published applications may be obtained from either Private PAIR or Public PAIR.
`
`Status information for unpublished applications is available through Private PAIR only.
`
`For more information about the PAIR system, see http://pair-direct.uspto.gov. Should
`
`you have questions on access to the Private PAIR system, contact the Electronic
`
`Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a
`
`USPTO Customer Service Representative or access to the automated information
`
`system, call 800-786-9199 (IN USA OR CANADA) or 571 -272—1 000.
`
`/Tucker Wright/
`Primary Examiner, Art Unit 2891
`
`