`
`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
`
`APPLICATION NO.
`
`
`
`
`
` F ING DATE
`
`FIRST NAMED INVENTOR
`
`ATTORNEY DOCKET NO.
`
`
`
`
`
`CONF {MATION NO.
`
`13/457,585
`
`04/27/2012
`
`Kei TOYOTA
`
`MTS—3668US
`
`6971
`
`52473
`7590
`11/04/2013
`W
`RATNERPRESTIA —
`PO. BOX 980
`WRIGHT, TUCKER I
`VALLEY FORGE, PA 19482-0980
`
`PAPER NUMBER
`
`ART UNIT
`
`2891
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`1 1/04/2013
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above—indicated "Notification Date" to the
`following e—mail address(es):
`
`ptocorrespondence @ratnerprestia.c0m
`
`PTOL—90A (Rev. 04/07)
`
`

`

`
`
`Applicant(s)
`Application No.
` 13/457,585 TOYOTA, KEI
`
`
`AIA (First Inventorto File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`Tucker Wright a?” 2891
`-- 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 3 MONTH(S) OR THIRTY (30) DAYS,
`WHICHEVER IS LONGER, FROM THE MAILING DATE OF THIS COMMUNICATION.
`Extensions of time may be available under the provisions of 37 CFR 1.136(a).
`In no event however may a reply be timely filed
`after SIX () 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).
`
`-
`-
`
`Status
`
`1)IXI Responsive to communication(s) filed on 10/15/2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)|:| This action is non-final.
`a)IXl 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
`
`
`; the restriction requirement and election have been incorporated into this action.
`
`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.
`
`Disposition of Claims
`5)|XI Claim(s) 1 and 3-14 is/are pending in the application.
`5a) Of the above claim(s) 8-13 is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)IZ| Claim(s) 1,3- 7and 14 is/are rejected.
`8)I:I Claim(s) _ is/are objected to.
`
`9)|:l Claim((s)
`are subject to restriction and/or election requirement.
`* If any claims have been determined allowable, you may be eligible to benefit from the Patent Prosecution Highway program at a
`
`participating intellectual property office for the corresponding application. For more information, please see
`htt
`://www.usoto. ov/ atents/init events) .h/index.
`
`
`‘3 , or send an inquiry to PF"I-Ifeedback{<‘buspto.qov.
`
`
`
`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).
`
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121 (d).
`
`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 Copies of the certified copies of the priority documents have been received in this National Stage
`
`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.
`
`Attachment(s)
`
`1) E Notice of References Cited (PTO-892)
`
`3) I] Interview Summary (PTO-413)
`
`Paper NOISIIMa” Date —
`PTO/SB/08
`t
`St t
`I
`D'
`t'
`f
`2 I:l I
`)
`4) I:I Other:
`a emen (s)(
`Isc osure
`n orma Ion
`)
`Paper No(s)/Mai| Date
`US. Patent and Trademark Office
`PTOL-326 (Rev. 08-13)
`
`Part of Paper No./Mai| Date 20131030
`
`Office Action Summary
`
`

`

`Application/Control Number: 13/457,585
`
`Page 2
`
`Art Unit: 2891
`
`DETAILED ACTION
`
`1.
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`Claim Rejections - 35 USC § 1 12
`
`2.
`
`The following is a quotation of 35 U.S.C. 112(a):
`(a) IN GEN ERAL.—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 or joint inventor of carrying out the invention.
`
`The following is a quotation of 35 U.S.C. 112 (pre-AIA), first paragraph:
`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.
`
`3.
`
`Claims 1, 3-7 and 14 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-
`
`AIA), first paragraph, as failing to comply with the written description requirement. The
`
`claim(s) contains subject matter which was not described in the specification in such a
`
`way as to reasonably convey to one skilled in the relevant art that the inventor or a joint
`
`inventor, or for pre-AIA the inventor(s), at the time the application was filed, had
`
`possession of the claimed invention. Specifically, claim 1 recites “...a protecting
`
`film...wherein a material of the protecting film...” which was not described in the
`
`originally filed specification. The recitation of “a material of the protecting film” implies
`
`that the protecting film comprises more than one material. However, the original
`
`specification discloses that the protecting film comprises only a single material such as
`
`silicon rubber (see, for example, page 16, lines 3-20). As such, “...a protecting
`
`

`

`Application/Control Number: 13/457,585
`
`Page 3
`
`Art Unit: 2891
`
`film...wherein a material of the protecting film...” was not described in the specification
`
`in such a way as to reasonably convey to one skilled in the relevant art that the inventor
`
`or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed,
`
`had possession of the claimed invention.
`
`2.
`
`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.
`
`3.
`
`Claims 1, 3-7 and 14 are 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 pre-AIA
`
`the applicant regards as the invention.
`
`4.
`
`Specifically, claim 1 recites “...a protecting film...wherein a material of the
`
`protecting film...” is indefinite. The protecting film is not claimed as comprising multiple
`
`materials. The recitation of “a material of the protecting film” implies that the protecting
`
`film comprises more than one material. As such, it is unclear what the “a material of the
`
`protecting film” is referring to.
`
`In the interest of compact prosecution, “...a protecting
`
`film...wherein a material of the protecting film...” will be interpreted as “...a protecting
`
`film...wherein the protecting film is inferior in wettability...”
`
`Claim Rejections - 35 USC § 102
`
`5.
`
`The following is a quotation of the appropriate paragraphs of pre-AIA 35 U.S.C.
`
`102 that form the basis for the rejections under this section made in this Office action:
`
`

`

`Application/Control Number: 13/457,585
`
`Page 4
`
`Art Unit: 2891
`
`A person shall be entitled to a patent unless —
`(b) the invention was patented or described in a printed publication in this or a foreign country
`or in public use or on sale in this country, more than one year prior to the date of application
`for patent in the United States.
`
`6.
`
`Claims 1-2, 7 and 14 are rejected under pre-AIA 35 U.S.C. 102(b) as being
`
`anticipated by JP362174958 to Sakai (English translation attached).
`
`Regarding claim 1, in FIG. 1a-c, Sakai discloses a substrate (2); a
`
`semiconductor element (1) which is mounted on the substrate; a protecting film
`
`(5, silicone rubber) which covers at least a part of the semiconductor element; an
`
`encapsulation resin (7, sealing resin) which encapsulates the semiconductor
`
`element and the protecting film; and a gap (9) in which the protecting film and the
`
`encapsulation resin do not contact one another, the gap existing between the
`
`protecting film and the encapsulation resin, wherein the protecting film is inferior
`
`in wettability (“inferior in wettability” has a scope including a different wettability
`
`as no independent reference point is claimed to define the term “inferior”) to the
`
`encapsulation resin (the protecting film is made of a different material than the
`
`encapsulation resin and as such each has a different wettability), and the
`
`protecting film has a water repellency (silicon rubber does not absorb water and
`
`as such has a water repellency; in addition, Sakai discloses that the protecting
`
`film is made of the same material, silicon rubber, as disclosed in the present
`
`application and as such must have the same properties).
`
`Regarding claim 7, in FIG. 1a-c, Sakai discloses that the substrate is a
`
`lead frame, the semiconductor element and an external terminal of the lead
`
`

`

`Application/Control Number: 13/457,585
`
`Page 5
`
`Art Unit: 2891
`
`frame are connected with a bonding metal wire (3), and the protecting film covers
`
`a connecting portion of the bonding metal wire, at which the bonding metal wire
`
`is connected to the semiconductor element.
`
`Regarding claim 14, The language, term, or phrase "the gap is formed by
`
`using the material which is inferior in wettability to the encapsulation resin and by
`
`filling the encapsulation resin for the protecting film while pressurizing the
`
`encapsulation resin", is directed towards the process of forming a gap between a
`
`material which is inferior in wettability to the encapsulation resin and the
`
`encapsulation resin. It is well settled that "product by process" limitations in
`
`claims drawn to structure are directed to the product, per se, no matter how
`
`actually made. In re Hirao, 190 USPQ 15 at 17 (footnote 3). See also, In re
`
`Brown, 173 USPQ 685; In re Luck, 177 USPQ 523; In re Fessmann, 180 USPQ
`
`324; In re Avery, 186 USPQ 161; In re Wethheim, 191 USPQ 90 (209 USPQ 554
`
`does not deal with this issue); In re Marosi et al., 218 USPQ 289; and particularly
`
`In re Thorpe, 227 USPQ 964, all of which make it clear that it is the patentability
`
`of the final product per se which must be determined in a "product by process"
`
`claim, and not the patentability of the process, and that an old or obvious product
`
`produced by a new method is not patentable as a product, whether claimed in
`
`"product by process" claims or otherwise. The above case law further makes
`
`clear that applicant has the burden of showing that the method language
`
`necessarily produces a structural difference. As such, the recited language only
`
`

`

`Application/Control Number: 13/457,585
`
`Page 6
`
`Art Unit: 2891
`
`requires the structure of claim 1, which does not distinguish the invention from
`
`Sakai, who discloses the structure as claimed.
`
`Claim Rejections - 35 USC § 103
`
`7.
`
`The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis
`
`for all obviousness rejections set forth in this Office action:
`
`(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.
`
`8.
`
`Claim 6 is rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over
`
`J P362174958 to Sakai.
`
`Regarding claim 6, Sakai appears not to explicitly disclose that a thickness
`
`of the gap is not less than 0.1 um and not more than 100 um.
`
`There is no evidence showing the criticality of the claimed gap thickness.
`
`In Sakai the thickness of the gap is directly related to the thickness of the
`
`encapsulation resin which expands in response to the release of gas from the
`
`silicone (the greater the gap the thinner the encapsulation resin). The art well
`
`recognized that the thickness of an encapsulation resin controls parameters
`
`critical for device performance, including mechanical viability (which includes
`
`strength as imparted by thickness). Encapsulation resin 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
`
`

`

`Application/Control Number: 13/457,585
`
`Page 7
`
`Art Unit: 2891
`
`example by routine experimentation) the optimum encapsulation resin thickness.
`
`In doing so, the optimum gap thickness is also determined.
`
`9.
`
`Claims 3-5 are rejected under pre-AlA 35 U.S.C. 103(a) as being unpatentable
`
`over JP362174958 to Sakai in view of Applicant’s Admitted Prior Art (AAPA).
`
`Regarding claim 3, Sakai discloses that the protecting film is made from a
`
`silicone rubber.
`
`Sakai appears not to explicitly disclose that the silicone rubber material
`
`has an interfacial tension energy that is not less than 15 mN/m and not more
`
`than 30mN/m, and the interfacial tension energy of the encapsulation resin is not
`
`less than 40mN/m and not more than 60mN/m.
`
`The art however well recognized a silicone rubber material having an
`
`interfacial tension energy that is not less than 15 mN/m and not more than
`
`30mN/m to be suitable for use as a protection film. See, for example, AAPA,
`
`paragraphs [OO71]—[OO81] of the publication of the present application which
`
`discloses 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 used the silicone rubber
`
`material of AAPA having an interfacial tension energy that is not less than 15
`
`mN/m and not more than 30mN/m for its recognized suitability as a protection
`
`film.
`
`

`

`Application/Control Number: 13/457,585
`
`Page 8
`
`Art Unit: 2891
`
`In addition, the art well recognized an encapsulation resin material having
`
`an interfacial tension energy not less than 40mN/m and not more than 60mN/m
`
`to be suitable for use as an encapsulation material. See, for example, AAPA,
`
`paragraph [0075] of the publication of the present application which discloses a
`
`known epoxy resin.
`
`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 used the silicone rubber
`
`material of AAPA having an interfacial tension energy that is not less than 40
`
`mN/m and not more than 60 mN/m for its recognized suitability as an
`
`encapsulation material.
`
`Regarding claim 4, Sakai appears not to explicitly disclose that the
`
`protecting film has a thickness which is not less than 10um and not more than
`
`2000 um, and the protecting film has 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.
`
`The art however well recognized a silicone rubber material 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 to be suitable for use as a protection film. See, for
`
`example, AAPA, paragraphs [0071]—[0081] and [0084] of the publication of the
`
`present application which discloses 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
`
`

`

`Application/Control Number: 13/457,585
`
`Page 9
`
`Art Unit: 2891
`
`ordinary skill in the art at the time of invention to have used 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 protection film.
`
`Sakai appears not to explicitly disclose that the protecting film has a
`
`thickness which is not less than 10um and not more than 2000 um.
`
`There is no evidence showing the criticality of the claimed thickness.
`
`The art well recognized that the thickness of a silicone rubber protection
`
`film controls parameters critical for device performance, including mechanical
`
`viability (which includes strength as imparted by thickness). Silicone rubber
`
`protection 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 protection film
`
`thickness.
`
`Regarding claim 5, Sakai discloses that the protecting film is made from a
`
`silicone rubber.
`
`Sakai appears not to explicitly disclose that a precursor of the silicone
`
`rubber material has an organopolysiloxane framework, and the precursor is
`
`cured in a thermosetting reaction due to a hydrosilylation reaction, so that the
`
`precursor becomes silicone rubber has a siloxane framework.
`
`

`

`Application/Control Number: 13/457,585
`
`Page 10
`
`Art Unit: 2891
`
`The art however well recognized a silicone rubber material formed by a
`
`process that includes a precursor of the silicone rubber material having an
`
`organopolysiloxane framework, and the precursor is cured in a thermosetting
`
`reaction due to a hydrosilylation reaction, so that the precursor becomes silicone
`
`rubber having a siloxane framework to be suitable for use as a protection film.
`
`See, for example, AAPA, paragraphs [OO71]—[OO81] of the publication of the
`
`present application which discloses 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 used the silicone rubber
`
`material of AAPA for its recognized suitability as a protection film.
`
`Response to Arguments
`
`Applicant contends that “Sakai fails to disclose, teach, or suggest that silicone
`
`rubber layer 5 is formed from a material that has an inferior wettability to sealing resin
`
`7.”
`
`This argument is not persuasive. “[l]nferior in wettability” has a scope including a
`
`different wettability as no independent reference point is claimed to define the term
`
`“inferior.” For example, what constitutes inferior in this context, and what is the
`
`wettability compared to? As such, the broadest reasonable interpretation of the claimed
`
`“inferior in wettability” includes materials having a different wettability compared to one
`
`another. Sakai discloses that the protecting film is made of a different material than the
`
`encapsulation resin and as such each has a different wettability.
`
`

`

`Application/Control Number: 13/457,585
`
`Page 11
`
`Art Unit: 2891
`
`Applicant contends that “Sakai fails to disclose, teach, or suggest that silicone
`
`rubber layer 5 has a water repellency. The Office Action provides no explanation for
`
`why silicone rubber layer 5 would be deemed to have a water repellency.”
`
`This argument is not persuasive. Silicon rubber does not absorb water and as
`
`such has a water repellency. In addition, both Sakai and the instant application disclose
`
`that the protecting film is made of silicon rubber and as such must have the same
`
`properties.
`
`Conclusion
`
`4.
`
`Applicant's amendment necessitated the new ground(s) of rejection presented in
`
`this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP
`
`§ 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37
`
`CFR1.136(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
`
`extension fee 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 date of this final action.
`
`

`

`Application/Control Number: 13/457,585
`
`Page 12
`
`Art Unit: 2891
`
`Any inquiry concerning this communication or earlier communications from the
`
`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.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Matthew Landau can be reached on (571) 272-1731. The fax phone
`
`number for the organization where this application or proceeding is assigned is 571 -
`
`273-8300.
`
`Information regarding the status of an application may be obtained from the
`
`Patent Application Information Retrieval (PAIR) system. Status information for
`
`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—1000.
`
`/Tucker Wright/
`Primary Examiner, Art Unit 2891
`
`