Although a specification need not disclose what is well-known in the art, “[i]t is the specification, [and] not the knowledge of one skilled in the art, that must supply the novel aspects of an invention in order to constitute adequate enablement.” Here, for example, a laundry list of the types of electronic sensors that could be used in a motion-sensing device was found to be insufficient to enable one skilled in the art to use multiple electronic sensors together in accordance with the novel aspects of the invention. It may therefore be best to ensure that the specification at least includes a few examples of interactions between listed components when that interaction is a novel aspect of the invention.
Background / Facts: The patents being asserted here are directed to motion-sensing devices, which detect motion and generate wireless signals based on that motion to create a desired play effect in an interactive environment. In this regard, the claims recite a toy wand comprising a pair of first motion sensors, which detect a motion, and a second motion sensor, which detects a different motion from the first. The scope of the asserted claims encompasses both mechanical and electronic sensors. The specifications, however, do not disclose how to use multiple electronic sensors together to detect different motions.
Issue(s): Whether the specifications accordingly fail to enable the full scope of the asserted claims.
Holding(s): Yes. “Here, the novelty of the asserted claims includes the use of sensors in combination, and the scope of the asserted claims includes both mechanical and electronic sensors. But the two specifications contain no guidance as to how electronic sensors, such as accelerometers and gyroscopes, can be substituted or added to detect different motions, as required by the asserted claims. Instead, the specifications merely include a laundry list of the types of electronic sensors that could be used. [] Without any further guidance, the specifications fail to disclose how to make and use the full scope of the asserted claims. Accordingly, the asserted claims are invalid for lack of enablement.”