`
`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.
`
`13/245,914
`
`09/27/2011
`
`Shigetomi TOKUNAGA
`
`MAT—10511US
`
`7546
`
`EXAMINER
`RATNERPRESTIA —
`”9’20” —
`7590
`52473
`PO. BOX 980
`ROIAs, BERNARD
`VALLEY FORGE, PA 19482-0980
`
`PAPER NUMBER
`
`ART UNIT
`
`2837
`
`
`
`
`NOT *ICATION DATE
`
`DELIVERY MODE
`
`01/29/2014
`
`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.
` 13/245,914 TOKUNAGA, SHIGETOMI
`
`
`AIA (First Inventorto File)
`Art Unit
`Examiner
`Office Action Summary
`
`
`BERNARD ROJAS first“ 2837
`-- 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 26 Sthember 2013.
`[I A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/were filed on
`
`2b)lX| This action is non-final.
`a)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
`
`
`; 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) L6is/are pending in the application.
`5a) Of the above claim(s)
`is/are withdrawn from consideration.
`6)|:l Claim(s) _ is/are allowed.
`7)IZ| CIaim(s)_1-6is/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.‘s or send an inquiry to PRI-Ifeedback{<‘buspto.qov.
`
`Application Papers
`
`10)I:I The specification is objected to by the Examiner.
`11)|Z| The drawing(s) filed on 27 Sthember 2011 is/are: a)IXI 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)IZI 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)le AII
`1.|ZI Certified copies of the priority documents have been received.
`2.|:| 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.
`
`Interim copies:
`
`a)|:l AII
`
`b)I:I Some
`
`c)I:I None of the:
`
`Interim copies of the priority documents have been 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. 03-13)
`
`Part of Paper No./Mai| Date 20140110
`
`Office Action Summary
`
`

`

`Application/Control Number: 13/245,914
`
`Page 2
`
`Art Unit: 2837
`
`The present application is being examined under the pre-AIA first to invent
`
`provisions.
`
`DETAILED ACTION
`
`Drawings
`
`The drawings filed on 09/27/2011 have been accepted by the examiner.
`
`Claim Rejections - 35 USC § 1 12
`
`The rejection of claim 2 under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA),
`
`second paragraph, is withdrawn in view of the amended claim language.
`
`Claim Rejections - 35 USC § 102
`
`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:
`
`A person shall be entitled to a patent unless —
`
`(e) the invention was described in (1) an application for patent, published under section
`122(b), by another filed in the United States before the invention by the applicant for patent or
`(2) a patent granted on an application for patent by another filed in the United States before
`the invention by the applicant for patent, except that an international application filed under
`the treaty defined in section 351 (a) shall have the effects for purposes of this subsection of an
`application filed in the United States only if the international application designated the United
`States and was published under Article 21(2) of such treaty in the English language.
`
`Claims 1-6 are rejected under pre-AIA 35 U.S.C. 102(e) as being anticipated by
`
`Tokunaga et al. [US 2010/0200290].
`
`The applied reference has a common inventor with the instant application.
`
`Based upon the earlier effective U.S. filing date of the reference, it constitutes prior art
`
`under pre-AIA 35 U.S.C. 102(e). This rejection under pre-AIA 35 U.S.C. 102(e) might be
`
`

`

`Application/Control Number: 13/245,914
`
`Page 3
`
`Art Unit: 2837
`
`overcome either by a showing under 37 CFR 1.132 that any invention disclosed but not
`
`claimed in the reference was derived from the inventor of this application and is thus not
`
`the invention “by another,” or by an appropriate showing under 37 CFR 1.131 (a).
`
`Claim 1, Tokunaga et al. discloses an electronic circuit device [61] comprising: a
`
`printed circuit board [5]
`
`including an upper face and a lower face [top and bottom
`
`surfaces of 5], both the faces available for mounting a component [such as 25/26/29]; a
`
`semiconductor element [26/29] mounted on the upper face [figure 1]; a housing [1] for
`
`accommodating the printed circuit board [5] and having an opening in one of the
`
`surfaces [figure 1]; a plurality of rubber bushings [24] disposed inside the housing [1] for
`
`underpinning the printed circuit board [5] in a vertical direction; an aluminum plate [37]
`
`disposed vertically above the printed circuit board [5] and closing the opening; and an
`
`insulating sheet [49] disposed between the semiconductor element [26/26] and the
`
`aluminum plate [37], wherein mounting of the aluminum plate [37] to the housing [1]
`
`causes the printed circuit board [5] to compress the rubber bushings [24; paragraph
`
`0037], and bring the semiconductor element [26/29], the aluminum plate [37] and the
`
`insulating sheet [49] into pressed contact with one another [paragraph 0037].
`
`Claim 2, Tokunaga et al. discloses the electronic circuit device of claim 1,
`
`wherein the semiconductor element [26/29] is mounted and is higher than any other
`
`component [13] on the upper face of the printed circuit board [5; figure 1].
`
`Claim 3, Tokunaga et al. discloses the electronic circuit device of claim 1,
`
`wherein a projection [1a] formed inside the housing [1] toward the opening [figure 2] is
`
`inserted into a hollow [24a] of the rubber bushing [24; paragraph 0026] and a mounting
`
`

`

`Application/Control Number: 13/245,914
`
`Page 4
`
`Art Unit: 2837
`
`hole [5c] provided in the printed circuit board [5], so that the rubber bushing [24] and the
`
`printed circuit board [5] are disposed within the housing [1].
`
`Claim 4, Tokunaga et al. discloses the electronic circuit device of claim 1,
`
`wherein the aluminum plate [37] has a plurality of protrusions [37a] formed on a face
`
`confronting the insulating sheet [49] for positioning of the insulating sheet [paragraph
`
`0033]
`
`Claim 5, Tokunaga et al. discloses the electronic circuit device of claim 1,
`
`wherein the insulating sheet
`
`[49]
`
`is coated with a thermo-diffusion compound [55;
`
`paragraph 0034].
`
`Claim 6, Tokunaga et al. discloses the electronic circuit device of claim 1 further
`
`comprising a spacer [26] disposed between the printed circuit board [5] and the
`
`semiconductor element [29].
`
`Response to Arguments
`
`Applicant’s arguments with respect to claims, 2, 5 and 6 have been considered
`
`but are moot because the arguments do not apply to any of the references being used
`
`in the current rejection.
`
`Conclusion
`
`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to BERNARD ROJAS whose telephone number is (571)
`
`272-1998. The examiner can normally be reached on M-TH 6:00-4:30.
`
`

`

`Application/Control Number: 13/245,914
`
`Page 5
`
`Art Unit: 2837
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner’s
`
`supervisor, Shawki S.
`
`Ismail can be reached on (571) 272-3985. 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—1 000.
`
`Br
`
`/Bernard Rojas/
`Primary Examiner, Art Unit 2832
`
`