Failure to Enable the Full Scope of the Claims Makes them Invalid

Automotive Technologies International, Inc. v. BMW of North America, Inc., [2006-1013- 1037][LOURIE, Rader, Prost] The Federal Circuit affirmed summary judgment of invalidity of the claims of U.S. Patent No. 5,231,253 for lack of enablement under 35 USC 112.
SIGNIFIANCE: A claim must be enabled for its full scope, not just some of the embodiments.
BRIEF: At issue were claims to a side impact sensor. LOF: Whether the subject matter of a patent claim satisfies the enablement requirement under 35 USC 112 is a uquestion of law, review de novo, based uo underlying facts, reviewed for clear error. The Federal Circuit agreed with defedants that the specification did not enable the full scope of the asserted claims. The claims were correctly construed to include both mechanical and electronic sensors. However the specification did not enable the full scope of the claimed inventions -- only mechanical sensors were enabled. The Federal Circuit noted that the Figure purportedly showing the electronis sensor was very general, and was even labeled "conceptional". The Federal Circuit said that the mere boxed figure of the electronic sensor and the few lines of description fail to apprise one of ordinary skill how to make and use the electronic sensor. The Federal Circuit disagreed that the knowledge of one of ordinary skill in the art would supply the missing details, saying: "It is the specification, not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement." The Federal Circuit said that while the omission of minor details does not cause a specification to fail to meet the enablement requirement, where there is no disclosure of any specific starting material or any of the conductiosn under which a process can be carried out, undue experimentation is required. The Federal Circuit compared the case to Leibel Flarsheim where the patentee also sought for a broad disclosure, but then could not show that the claim was enabled for the broad scope of the claims.