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`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and TrademarkOffice
`Address; COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`16/968,772
`
`08/10/2020
`
`SHINGO OKAURA
`
`P201007US00
`
`5787
`
`WESTERMAN, HATTORI, DANIELS & ADRIAN, LLP
`8500 LEESBURG PIKE
`SUITE 7500
`TYSONS, VA 22182
`
`YASMEEN,NISHATH
`
`ART UNIT
`2811
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`09/15/2021
`
`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):
`
`patentmail @ whda.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`1-5 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) ___ is/are withdrawn from consideration.
`C} Claim(s)
`is/are allowed.
`Claim(s) 1-5 is/are rejected.
`S)
`) © Claim(s)____is/are objected to.
`Cj) Claim(s
`are subjectto restriction and/or election requirement
`)
`S)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) )
`
`Application Papers
`10)(] The specification is objected to by the Examiner.
`11) The drawing(s) filed on 8/10/2020 is/are: a)(¥) accepted or b)() 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) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)¥) All
`1.4) Certified copies of the priority documents have been received.
`2.2) Certified copies of the priority documents have been received in Application No.
`3.2.) Copies of the certified copies of the priority documents have been receivedin 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)
`
`Notice of References Cited (PTO-892)
`
`Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`2)
`Paper No(s)/Mail Date 8/10/2020,7/13/2021,
`U.S. Patent and Trademark Office
`
`3) (J Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`4)
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20210909
`
`Application No.
`Applicant(s)
`16/968,772
`OKAURAetal.
`
`Office Action Summary Art Unit|AIA (FITF) StatusExaminer
`NISHATH YASMEEN
`2811
`Yes
`
`
`
`-- The MAILING DATEofthis communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORY PERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensions of time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom 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) MONTHSfrom 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, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 8/10/2020.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)L) This action is FINAL. 2b)¥)This action is non-final.
`3)02 An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4\0) 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 Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 16/968,772
`Art Unit: 2811
`
`Page 2
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`DETAILED ACTION
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`Notice of Pre-AlA or AIA Status
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`1.
`
`The present application, filed on or after March 16, 2013, is being examined
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`under the first inventor to file provisions of the AIA.
`
`Priority
`
`1.
`
`Receipt is acknowledgedof certified copies of papers required by 37 CFR 1.55.
`
`Information Disclosure Statement
`
`2.
`
`The information disclosure statements (IDS) submitted on 8/10/2020 and
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`7/13/2021 are being considered by the examiner.
`
`Claim Rejections - 35 USC § 102
`
`3.
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`The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that
`
`form the basis for the rejections under this section madein this Office action:
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`A person shall be entitled to a patent unless —
`
`(a)(2) the claimed invention was described in a patent issued under section 151, or in an
`application for patent published or deemed published under section 122(b), in which the
`patent or application, as the case may be, namesanother inventor and waseffectively filed
`before the effective filing date of the claimed invention.
`
`Note applicable to all claims being rejected in this Office action: Examiner
`notes that the limitations "overlap", "layer", "portion" “face” “extend” “extension” are
`being interpreted broadly in accordance with MPEP. Per MPEP 2111 and 2111.01, the
`claims are given their broadest reasonable interpretation and the words of the claims
`are given their plain meaning consistent with the specification without importing claim
`limitations from the specification. The claim presently disclose a structural limitation(i.e.
`overlap, layer, portion, contact) that is taught by prior art of record, therefore, the
`limitation is considered met by the prior art of record. Additionally, Merriam Webster
`dictionary defines the above limitations as “to occupy the same area in part’, “one
`thickness lying over or under another’, ‘an often limited part of a whole” “to have the
`front oriented towards” “to stretch out in distance” “a property whereby something
`occupies space” respectively. Further note the limitation “contact” is being interpreted to
`include “direct contact” (no intermediate materials, elements or space disposed there
`between) and "indirect contact" (intermediate materials, elements or space disposed
`there between).
`
`

`

`Application/Control Number: 16/968,772
`Art Unit: 2811
`
`Page 3
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`Claims 1-5 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by
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`Iwahashi et al (WO2017/175686 hereinafter lwahashi with US 2019/0035771 being
`
`used as an english language equivalent).
`
`Regarding Claim 1, lwahashi discloses in Figs 6, 8A, 8B: A semiconductor
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`module, comprising:
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`an insulating substrate (8D) having a surfaceinafirst direction:
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`a first conductor (14D3) disposed on the surface of the insulating substrate, the
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`first conductor having a surfacein the first direction (top to bottom of Fig 6);
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`a second conductor (14D2) disposed on the surface of the insulating substrate
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`(8D), the second conductor having a surfacein the first direction;
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`a first semiconductor element (Q3) disposed on the surfaceof the first conductor;
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`a second semiconductor element (Q6) disposed on the surface of the second
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`conductor, the second semiconductor element being located in a second direction (left
`
`to right of Fig 6) viewed from thefirst semiconductor element (Q3);
`
`a first busbar (17/14U) connected to the surface ofthe first conductor (14D3) ina
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`region between the first semiconductor element (Q3) and the second semiconductor
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`element (Q6) as viewedin the first direction, the first busbar being supplied with one of
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`a first potential and a second potential;
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`a second busbar (16/6U) connected to the second semiconductor element (Q6),
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`the second busbarbeing supplied with an other of the first potential and the second
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`potential; and
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`an output busbar (5) connectedto the surface of the second conductor (14D2) in
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`the region between the first semiconductor element (Q3) and the second semiconductor
`
`

`

`Application/Control Number: 16/968,772
`Art Unit: 2811
`
`Page 4
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`element (Q6) as viewedin the first direction, the output busbar connecting the first
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`semiconductor element (Q3) to the surface of the second conductor (14D2), wherein
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`the output busbar(5) is disposedat least partially overlapping the first busbar as
`
`viewedin the first direction (See Figs 8A and 8B showing the overlap),
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`the output busbar(5) is located in the first direction viewed from the first busbar
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`(17/14U) in a region where the output busbarand the first busbar overlap each other, as
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`viewedin the first direction (See Fig 6 and 8B), and
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`the output busbar(5) outputs the first potential or the second potential supplied to
`
`the first semiconductor element (Q3) or the second semiconductor element (Q6) [0118,
`
`0119, 0124,0129,0131] (Also see mark-up for Claim 2).
`
`Examiner further notes that the limitations of “the first busbar being supplied with
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`one of a first potential and a second potential’, “the second busbar being supplied with
`
`an other of the first potential and the second potential” and “the output busbar(5)
`
`outputs the first potential or the second potential supplied to the first semiconductor
`
`element (Q3) or the second semiconductor element” are considered to be
`
`functional/operationallimitations of the semiconductor module as claimed.
`
`Note thatis it is the Office’s position that the abovelimitations are directed to a
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`method of using the device and that because the device of lwahashi hasall of the
`
`structural limitations of the claimed invention the device is capable of being operated in
`
`the manner claimed by the applicant. A claim containing a “recitation with respect to the
`
`manner in which a claimed apparatus is intended to be employed does notdifferentiate
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`the claimed apparatus from a prior art apparatus’if the prior art apparatus teachesall
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`

`

`Application/Control Number: 16/968,772
`Art Unit: 2811
`
`Page 5
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`the structural limitations of the claim. Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App.
`
`& Inter. 1987).
`
`Please note that each and everylimitation of the claims of the present application
`
`has been fully considered by the examiner (A consideration of a limitation does not
`
`necessarily mean that the limitation has been given patentable weight.). When a claim
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`is fully considered, all limitations of the claim are checked to see if they are directed to
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`function, property or characteristic of the apparatus.
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`If they are directed to function,
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`property or characteristic of the apparatus and "the examiner provides a basis in fact
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`and/or technical reasoning to reasonably support the determination that the allegedly
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`inherent characteristic necessarily flow from the teachings of the applied prior art"
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`(quoting Ex Parte Levy, 17 USPQ2s 1461, 1464 (Bd. Pat. App. & Inter. 1990 under
`
`Section 2112.IV of the MPEP), then the burden ofproofis shifted to the Applicant to
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`showthat the apparatus taught by the prior art reference cannot function or does not
`
`have the property or characteristic as recited.
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`According to Section 2114 of the MPEP, "While features of an apparatus may be
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`recited either structurally or functionally, claims directed to an apparatus must be
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`distinguished from the prior art in terms of structure rather than function.
`
`In re
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`Schreiber, 128 F.3d 1473, 1477-78, 44 USPQ2d 1429,1431-32 (Fed. Cir. 1997) (The
`
`absence of a disclosure in a prior art reference relating to function did not defeat the
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`Board’s finding of anticipation of claimed apparatus because the limitations at issue
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`were foundto be inherentin the prior art reference); see also In re Swinehart, 439 F.2d
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`210, 212-13, 169 USPQ 226, 228-29 (CCPA 1971); In re Danly, 263 F.2d 844, 847, 120
`
`USPQ 528, 531 (CCPA 1959). “[A]pparatus claims cover what a device is, not what a
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`

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`Application/Control Number: 16/968,772
`Art Unit: 2811
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`Page 6
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`device does.” Hewlett-Packard Co. v. Bausch & Lomb Inc., 909 F.2d 1464, 1469, 15
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`USPQ2d 1525, 1528 (Fed. Cir. 1990) (emphasis in original)".
`
`Moreover, according to Section 2112.IIl of the MPEP, "Where applicant claims a
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`composition in terms of a function, property or characteristic{,} and the composition of
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`the prior art is the same asthat of the claim but the function is not explicitly disclosed by
`
`the reference, the examiner may makea rejection under both 35 U.S.C. 102 and 103,
`
`expressed as a 102/103 rejection. “There is nothing inconsistent in concurrent rejections
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`for obviousness under 35 U.S.C. 103 and for anticipation under 35 U.S.C. 102.” In re
`
`Best, 562 F.2d 1252, 1255 n.4, 195 USPQ 430, 433 n.4 (CCPA 1977). This same
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`rationale should also apply to product, apparatus, and processclaims claimed in terms
`
`of function, property or characteristic. Therefore, a 35 U.S.C. 102/103 rejection is
`
`appropriate for these types of claims as well as for composition claims {underlined for
`
`emphasis}."
`
`Regarding Claim 2, lwahashi discloses in Figs 6, 8A, 8B: The semiconductor
`
`module according to claim 1, wherein the first busbar (17/14U) further includes a busbar
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`extension (See mark-up below) extending in the second direction (left to right of page in
`
`Fig 6) relative to an end ofthe first conductor (14D3) in the second direction as viewed
`
`in the first direction, and the busbar extension faces the output busbar (5) 9See
`n
`tt
`broadest reasonable interpretation of the limitations “face”, “extend” in the note above).
`
`

`

`Application/Control Number: 16/968,772
`Art Unit: 2811
`
`Page 7
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`FIG. 6
`
`busbar extension
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`Regarding Claim 3, Ilwahashi discloses in Figs 4, 6, 8A, 8B: The semiconductor
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`module according to claim 2, wherein the first busbar (17/14U) further includes a busbar
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`hook-shapedportion (17) extending from the busbar extension in a direction opposite to
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`the first direction (bottom to top of the page in Fig 6).
`
`Regarding Claim 4, lwahashi discloses in Figs 6, 8A, 8B: The semiconductor
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`module according to claim 1, wherein each of the first conductor (14D3), the second
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`conductor (14D2), the first busbar (17/14U), the second busbar (16/6U), and the output
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`busbar (5) includes a rectangular portion longer in a third direction (front to back of page
`
`in Fig 6 or top to bottom of page in Fig 8B) than in the second direction as viewedin the
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`first direction, the third direction being perpendicularto the first direction and the second
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`direction. Examiner notes thatthe limitation “portion” is being interpreted broadly per
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`MPEP 2111 and 2111.01 as shownin the note above. Oneofordinary skilled in the art
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`could arbitrarily choose a rectangular portion of each of the first conductor, the second
`
`

`

`Application/Control Number: 16/968,772
`Art Unit: 2811
`
`Page 8
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`conductor, the first busbar, the second busbar and the output busbars so that the length
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`in the third direction is longer than a length in the second direction.
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`Regarding Claim 5, lwahashi discloses in Figs 4, 6, 8A, 8B: The semiconductor
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`module according to claim 4, wherein the first semiconductor element (Q3) is one of a
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`plurality of first semiconductor elements ( Q3, Q2, Q1), the second semiconductor
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`element (Q6)is one of a plurality of second semiconductor elements (Q4, Q5, Q6), the
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`plurality of first semiconductor elements are disposed on the surface ofthe first
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`conductor (14D3) side byside in the third direction, and the plurality of second
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`semiconductor elements are disposed on the surface of the second conductor (14D2)
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`side by side in the third direction (See Fig 4 and Fig 5).
`
`Conclusion
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`4.
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`Any inquiry concerning this communication or earlier communications from the
`
`examiner should be directed to NISHATH YASMEEN whosetelephone number is
`
`(571)270-7564. The examiner can normally be reached on Mon-Fri 9AM-6PM.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-basedcollaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Lynne Gurley can be reached on 571-272-1670. The fax phone number for
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`the organization where this application or proceeding is assigned is 571-273-8300.
`
`

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`Application/Control Number: 16/968,772
`Art Unit: 2811
`
`Page 9
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`
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`
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`
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`
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`272-1000.
`
`/NISHATH YASMEEN/
`Primary Examiner, Art Unit 2811
`
`