View source for Patent Application 17909766 - ELECTRONIC COMPONENT - Rejection

= Patent Application 17909766 - ELECTRONIC COMPONENT =

'''Title:''' ELECTRONIC COMPONENT

== Application Information ==
* '''Invention Title:''' ELECTRONIC COMPONENT
* '''Application Number:''' 17909766
* '''Submission Date:''' 2025-04-10T00:00:00.000Z
* '''Effective Filing Date:''' 2022-09-07T00:00:00.000Z
* '''Filing Date:''' 2022-09-07T00:00:00.000Z
* '''National Class:''' 257
* '''National Sub-Class:''' 773000
* '''Examiner Employee Number:''' 85802
* '''Art Unit:''' 2892
* '''Tech Center:''' 2800

== Rejection Summary ==
* 102 Rejections: 2
* 103 Rejections: 0

== Cited Patents ==
No patents were cited in this rejection.

== Office Action Text ==
<pre>


    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 .

Specification
The lengthy specification has not been checked to the extent necessary to determine the presence of all possible minor errors. Applicant’s cooperation is requested in correcting any errors of which applicant may become aware in the specification.

The title of the invention is not descriptive.  A new title is required that is clearly indicative of the invention to which the claims are directed. 
The following title is suggested:
SiC SEMICONDUCTOR DEVICE INCLUDING INORGANIC INSULATING FILM EXPOSING MAIN SURFACE ELECTRODE TO SUPPRESS PEELING (or similar).

Claim Rejections – 35 USC § 112(a) – Incommensurate Scope
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—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.

Claims 1-13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph for failing to enable the full scope of the claimed invention.  Dependent Claims 2-
Regarding Claims 1-13, the instant application does not reasonably enable the full scope of the “covered object”.
Specifically, although the instant application only identifies an “inorganic insulating film” as corresponding to the claimed “covered object” (e.g., see Applicant’s ¶ [0028], [0105], [0284], [0638]), the broadest reasonable interpretation of an object (as defined by merriam-webster.com; see Sense 1a) may encompass “something material that may be perceived by the senses” – the full scope of which Applicant unquestionably did not invent.
Regarding incommensurateness of scope between the claimed invention and the specification, MPEP § 2164.08 advises that:
“[T]he relevant concern is whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims… [and the] propriety of a rejection [is] based upon the scope of a claim relative to the scope of the enablement concerns[:]
(1) how broad the claim is with respect to the disclosure and
(2) whether one skilled in the art could make and use the entire scope of the claimed invention without undue experimentation.”
As already stated above and in stark contrast to Applicant’s expansive claim scope, the instant Application only ever identifies a “first inorganic insulating film” (10/280) as the claimed “covered object”

Thus, as applied to the instant application:
 (1) The instant claim language is excessively broad because, as defined above, an “object” could be literally anything comprising physical material, and
(2) One of ordinary skill in the art would not only be unable to make and use the entire scope of the claimed invention (e.g., any identifiable physical substance as the claimed “covered object”) because one of ordinary skill in the art would most assuredly be required to perform undue experimentation in order to ascertain every conceivable material thing foreclosed by Applicant’s claims.  Such breadth is entirely incommensurate with Applicant’s single example of an inorganic insulating film (see MPEP § 2164.08; see also MPEP § 2164.04 teaching that a lack-of-enablement rejection is proper when “the scope of any enablement provided to one skilled in the art is not commensurate with the scope of protection sought by the claims”) 
Furthermore, the test of enablement is not whether any experimentation is necessary, but whether, if experimentation is necessary, it is undue (see MPEP § 2164.01).  This test requires consideration of the so-called Wands factors to determine whether there is sufficient evidence to conclude that a disclosure does not satisfy the enablement requirement, and whether any necessary experimentation is “undue.”  However, while the analysis and conclusion of a lack of enablement are based on the factors discussed in MPEP § 2164.01(a) and the evidence as a whole, it is not necessary to discuss each factor in the enablement rejection.  However, it is improper to conclude that a disclosure is not enabling based on an analysis of only one of the above factors while ignoring one or more of the others.  The examiner’s analysis must consider all the evidence related to each of these factors, and any conclusion of non-enablement must be based on the evidence as a whole.  These Wands factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.

Regarding the instant application, the pertinent Wands factors apply as follows: 
(A) As detailed supra, although Applicant only identifies inorganic insulating film as the disclosed “covered object”, the breadth of the claims reasonably encompasses all tangible items; thus the claims are overly broad and not commensurate in scope with the disclosure.  
 (F) The instant inventors provide no guidance or suggestion that their “covered object” may include anything other than an inorganic insulating film.  
(G) Again, compared with the all-encompassing breadth of the instant claims, Applicant only ever describes an inorganic insulating film for use as their “covered object”.  Such a limited disclosure cannot hardly enable the full scope of possibilities captured by the instant claims.
(H) The quantity of experimentation needed to practice the invention must sensibly qualify as “undue” because the claimed breadth, which practically encompasses all things material, is entirely incommensurate with Applicant’s single working example of an inorganic insulating film as their “covered object”.

Consequently, Claims 1-13 are rejected under 35 U.S.C. § 112(a) because the instant application, considered in its entirety, fails to enable the full scope of Applicant’s claims.

Claim Rejections - 35 USC § 112(b) – Indefiniteness
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.

Claim(s) 6 & 16 is/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.
Regarding indefiniteness, in general, MPEP § 2173.02 teaches that Examiners apply a lowered standard of indefiniteness during examination proceedings to encourage the resolution of any ambiguities during prosecution.  The MPEP further explains (see Id.) that “if the language of a claim, given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation, then a rejection…is appropriate.”

Regarding Claims 6 & 16:
In Lines 2-3: The limitation of “the inner portion side of the electrode” lacks antecedent basis.  Based on the instant application, for examination purposes this will be interpreted as “an inner portion side of the electrode”.

Claim Rejections - 35 USC § 102 – Anticipation
In the event the determination of the status of the application as subject to AIA  35 U.S.C. 102 and 103 (or as subject to pre-AIA  35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.  
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 made in this Office action:
A person shall be entitled to a patent unless –

(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.

(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, names another inventor and was effectively filed before the effective filing date of the claimed invention.

Claim(s) 1, 4-6, & 14-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Pre-Grant Pub. 20180174938 to Uchida (from hereinafter Uchida).
Regarding Claim 1, Uchida teaches an electronic component (e.g., see Figs 3A-B shown below) comprising:
a covered object (111; see ¶ [0096 & 131-135]);
an electrode (112/159; see ¶ [0093-111]) that covers the covered object (111) and has an electrode side wall (e.g., vertically oriented walls extending along and defining the lateral boundaries of 112/159 as shown in Figs. 3A-B) on the covered object (111);
an inorganic insulating film (115; see ¶ [0136-140]) that has an inner covering portion covering the electrode (112/159) such as to expose the electrode side wall (as illustrated in Fig. 3A below),
and an organic insulating film (114; see ¶ [0135-140]) that covers the electrode side wall (of 112/159).


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Regarding Claim 4, Uchida teaches the electronic component according to Claim 1, wherein the inner covering portion (of 115) exposes an inner portion of the electrode (112/159).

Regarding Claim 5, Uchida teaches the electronic component according to Claim 4, wherein the inner covering portion (of 115) surrounds the inner portion of the electrode (112/159).

Regarding Claim 6, Uchida teaches the electronic component according to Claim 4, wherein the organic insulating film (114) exposes an edge portion of the inner covering portion (of 115) at the inner portion side of the electrode (112/159).

Regarding Claim 14, Uchida teaches electronic component (Figs. 3A-B) comprising:
an electrode (112/159) that has an electrode side wall (e.g., vertically oriented walls extending along and defining the lateral boundaries of 112/159 as shown in Figs. 3A-B);
an inorganic insulating film (115) that covers the electrode (112/159) such as to expose an inner portion of the electrode (112/159) and the electrode side wall of the electrode;
an organic insulating film (114) that exposes the inner portion of the electrode (112/159) and covers the electrode side wall (of 112/159); and
a pad electrode (116) that is formed on the inner portion of the electrode (112/159).

Regarding Claim 15, Uchida teaches the electronic component according to Claim 14, wherein the pad electrode (116) is in contact with the inorganic insulating film (115).

Regarding Claim 16, Uchida teaches the electronic component according to Claim 14, wherein the organic insulating film (114) covers the inorganic insulating film (115) such as to expose an edge portion of the inorganic insulating film (115) at the inner portion side of the electrode (112/159) and
the pad electrode (116) covers the edge portion of the inorganic insulating film (115).

Regarding Claim 17, Uchida teaches the electronic component according to Claim 14, wherein the pad electrode (116) is in contact with the organic insulating film (114).

Regarding Claim 18, Uchida teaches the electronic component according to Claim 14, wherein the inorganic insulating film (115) covers the electrode (112/159) at an interval from the electrode side wall, and
the organic insulating film (114) covers the portion of the electrode that is exposed from between the electrode side wall (of 112/159) and the inorganic insulating film (111).

Regarding Claim 19, Uchida teaches the electronic component according to Claim 14, wherein the inorganic insulating film (115) surrounds the inner portion of the electrode (112/159) in plan view.

Regarding Claim 20, Uchida teaches the electronic component according to Claim 14, wherein the pad electrode (116) includes an Ni plating film (see ¶ [0140]) that is in contact with the inorganic insulating film (115).
Claim(s) 1-3 & 7-8 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by U.S. Pre-Grant Pub. 20180151719 to Sano et al. (from hereinafter Sano).
Regarding Claim 1, Sano teaches an electronic component (e.g., see Fig. 5A and ¶ [0083-84 & 104-107]) comprising:
a covered object (111);
an electrode (112H) that covers the covered object (111) and has an electrode side wall on the covered object (111);
an inorganic insulating film (125) that has an inner covering portion covering the electrode (112H) such as to expose the electrode side wall,
and an organic insulating film (126) that covers the electrode side wall (of 112H).

Regarding Claim 2, Sano teaches the electronic component according to Claim 1, wherein the organic insulating film (126) covers the inner covering portion (of 125).

Regarding Claim 3, Sano teaches the electronic component according to Claim 1, wherein the inner covering portion (of 125) exposes a peripheral edge portion of the electrode and the organic insulating film (126) covers the peripheral edge portion of the electrode.

Regarding Claim 7, Sano teaches the electronic component according to Claim 1, wherein the inorganic insulating film (125) has an outer covering portion that covers the covered object (111) such as to expose the electrode side wall.

Regarding Claim 8, Sano teaches the electronic component according to Claim 7, wherein the organic insulating film (126) covers the outer covering portion (of 125).

Allowable Subject Matter
Claims 9-10 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and after rectifying the rejections under § 112(a) detailed above.
Claims 11-13 would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims and after rectifying the rejections under § 112(a) detailed above.

Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW E GORDON whose telephone number is (571)270-7432.  The examiner can normally be reached on M-F 9 a.m. - 6 a.m..
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Thao X Le can be reached on 5712721708.  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.


/Matthew E. Gordon/Primary Examiner, Art Unit 2892                                                                                                                                                                                                        


    
        
            
        
            
        
            
        
            
        
            
        
            
        
            
        
            
        
            
        
            
    

</pre>

[[Category:102_Rejections]]
[[Category:Rejection_Report_28th Apr 2025]]

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