Application No: 16/074,670
`In response to the Office Action dated December 2, 2019
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`REMARKS
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`Applicant respectfully requests favorable reconsideration of this application.
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`Claim 1 is amended to include the features of previous claim 4. Claim 1 is further
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`amended as supported by, for example, paragraphs [0022] and [0074] of the published
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`application. Claim 4 is cancelled without prejudice or disclaimer. Claim 8 is editorially amended
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`to track the revisions to claim 1. New claim 11 is supported by, for example, claim 1.
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`No new matter is added. Claims 1-3 and 5-11 are pending.
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`Claim Interpretation
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`Claim 1 was interpreted under 35 U.S.C. § 112(f). Claim 1 is amended as supported by,
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`for example, paragraph [0022] of the published application to recite “electromotor”. Applicant
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`submits that claim 1 now does not use any terms subject to a means-plus-function interpretation.
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`Applicant does not concede the correctness of the interpretation for claim 1 in its previous form.
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`Claim Rejections - 35 U.S.C. § 112
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`Claim 4 was rejected under 35 U.S.C. § 112(b) as being indef1nite. Applicant respectfully
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`traverses this rejection.
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`Claim 4 is cancelled, and claim 1 includes the features of previous claim 4. Regarding the
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`contention that it is unclear what is meant by “a saturating amount of dissolution” and what
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`constitutes a saturating amount of the fullerene, claim 1 recites “a saturation amount for
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`dissolution of the fullerene with respect to the freezer oil” to account for this rejection.
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`Paragraph [0074] of the published application discloses a non-limiting embodiment of the
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`above features of claim 1 and refers to such an amount as a maximum amount of fullerene 181
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`being dissolved in freezer oil 103 in a dissolution phenomenon in which fullerene 181 is
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`dispersed in freezer oil 103 so as to form a homogenous system. As such, Applicant respectfully
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`submits that those skilled in the art would have no difficulty determining the scope of claim 1.
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`Therefore, the rejection should be withdrawn. Applicant does not concede the correctness
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`of the rejection.
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`

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`Application No: 16/074,670
`In response to the Office Action dated December 2, 2019
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`Claim Rejections - 35 U.S.C. § 103
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`Claims 1-3, 5, and 7-9 were rejected under 35 U.S.C. § 103 as being unpatentable over
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`US. Patent Application Publication No. 2013/0167580 (Ishida et al.) in view of US. Patent
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`Application No. 2006/0001002 (Iwanami et al.). Applicant respectfully traverses this rejection.
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`Claim 1 includes the features of previous claim 4, which is not subject to this rejection.
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`As such, claim 1 and its dependent claims 2, 3, 5, and 7-9 are not subject to this rejection as well.
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`Applicant does not concede the correctness of the rejection. Applicant respectfully
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`requests favorable reconsideration of the claims and withdrawal of the rejection.
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`Claim 4 was rejected under 35 U.S.C. § 103 as being unpatentable over US. Patent
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`Application Publication No. 2013/0167580 (Ishida et al.) in view of US. Patent Application No.
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`2006/0001002 (Iwanami et al.), and further in view of US. Patent Application Publication No.
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`2008/0265203 (Hwang et al.). Applicant respectfully traverses this rejection.
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`Claim 1 recites, in part, that an amount of the fullerene added is less than or equal to a
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`saturation amount for dissolution of the fullerene with respect to the freezer oil.
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`The amount of the fullerene with respect to the freezer oil in claim 1 can help to improve
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`the frictional wear characteristics. See, e.g., paragraph [0113] of the published application. Figs.
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`3-5B and paragraphs [0095]—[0127] of the published application show a non-limiting
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`embodiment of the above features of claim 1.
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`The rejection acknowledged that Ishida as modified (by Iwanami) does not teach the
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`above features of claim 1. See page 9 of the Office Action discussing previous claim 4. The
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`rejection relied on Hwang for this feature and contended that paragraph [0014] of Hwang
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`discloses an optimal amount of fullerene being added to the oil. See page 10 of the Office
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`Action. Paragraph [0014] of Hwang discloses that by mixing a carbon nano particulate such as
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`fullerene in a percentage by weight of below 1.0% into an oil, optimal performance can be
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`realized at an inexpensive price.
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`However, 1% is above the saturation point of fullerene for the oils contemplated by
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`Hwang, and nothing in Hwang suggests that the amount of fullerene should be selected relative
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`to the saturation amount of the fullerene for the freezer oil. In fact, paragraph [0014] of Hwang
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`discloses that ultrasonic radiation can be used to thoroughly disperse the fullerene into the
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`lubricating oil. Hwang does not teach or suggest that the lubricating oil contains the fullerene in
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`6
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`Application No: 16/074,670
`In response to the Office Action dated December 2, 2019
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`an amount equal to or less than the saturation amount. Therefore, Hwang does not remedy the
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`deficiencies of Ishida and Iwanami relative to claim 1, and claim 1 is patentable for at least the
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`foregoing reasons.
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`Applicant does not concede the correctness of the rejection for the features not discussed
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`above. Applicant respectfully requests favorable reconsideration of the claim and withdrawal of
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`the rejection.
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`Claim 6 was rejected under 35 U.S.C. § 103 as being unpatentable over US. Patent
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`Application Publication No. 2013/0167580 (Ishida et al.) in view of US. Patent Application No.
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`2006/0001002 (Iwanami et al.), and further in view of US. Patent Application Publication No.
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`2009/01363 75 (Iwata et al.). Applicant respectfully traverses this rejection.
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`Iwata does not remedy the deficiencies of Ishida and Iwanami noted above relative to
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`claim 1. Claim 6 depends from claim 1 and is patentable for at least the reasons discussed with
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`respect to claim 1.
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`Applicant does not concede the correctness of the rejection. Applicant respectfully
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`requests favorable reconsideration of the claim and withdrawal of the rejection.
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`Claim 10 was rejected under 35 U.S.C. §103 as being unpatentable over US. Patent
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`Application Publication No. 2013/0167580 (Ishida et al.) in view of US. Patent Application No.
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`2006/0001002 (Iwanami), and further in view of U. S. Patent Application Publication No.
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`2006/01373 86 (Itsuki et al.). Applicant respectfully traverses this rejection.
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`Itsuki does not remedy the deficiencies of Ishida and Iwanami noted above relative to
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`claim 1. Claim 10 depends from claim 1 and is patentable for at least the reasons discussed with
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`respect to claim 1.
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`Applicant does not concede the correctness of the rejection. Applicant respectfully
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`requests favorable reconsideration of the claim and withdrawal of the rejection.
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`W
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`Claim 11 depends from claim 1 and is patentable for at least the reasons discussed with
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`respect to claim 1. In addition, claim 11 recites, in part, that the amount of the fullerene added is
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`equal to the saturation amount for dissolution of the fullerene with respect to the freezer oil. The
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`7
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`Application No.: 16/074,670
`In response to the Office Action dated December 2, 2019
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`cited references, alone or in combination, do not teach or suggest the above features of claim 11.
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`As such, claim 11 is independently patentable for at least the foregoing reasons. Applicant
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`respectfully requests favorable consideration of claim 11.
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`In view of the above, Applicant respectfully requests favorable reconsideration in the
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`form of a Notice of Allowance. If any questions arise regarding this communication, the
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`Examiner is invited to contact Applicant’s representative listed below.
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`Dated: Januam 31, 2020
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`Respectfully submitted,
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`HAMRE, SCHUMANN, MUELLER &
`LARSON, PC.
`45 s. 7th St, Suite 2700
`Minneapolis, MN 55402
`(612) 455-3800
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`/dp_mueller/
`By:
`Douglas P. Mueller
`Reg. No.: 30,300
`DPM/BY/rpr
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