It is common practice when writing specifications to disclose a broad range of possible embodiments "just to be safe", and without much thought to how such embodiments might be realized in practice. However, is there a downside to doing this? Without thinking through and verifying that all embodiments are enabled (e.g. all combinations and subcombinations of features disclosed), it seems possible that generic claims encompassing the disclosure would be invalid over enablement. E.g. see here:
The claim was broad enough to cover both mechanical and electronic sensors. The patent's specification, on the other hand, described mechanical sensors in detail, however, the electronic sensor was described in broad terms and illustrated in one conceptual figure. The Court of Appeals ruled that the claim was invalid on the grounds that the full scope of the claims covered electronic sensors as well as mechanical sensors, but the specification did not teach a person skilled in the art how to make and use the invention with an electronic sensor (i.e. the claim was not enabled).
Note: This also could bring up the issue of operability/"utility" of embodiments within the claim scope (e.g. some combinations of disclosed features may result in a nonsense embodiment).
Edit: Here's an example to illustrate the question. Assume you are disclosing a novel spring mechanism for a stapler. In the description, you write:
In some embodiments, the stapler may comprise an anvil to provide a counter-force with respect to the arm during a stapling operation. In other embodiments, the stapler may not comprise an anvil to provide a counter-force with respect to the arm during a stapling operation, e.g. the counter-force may be provided by an external object such as a cork board. In some embodiments, the stapler may be used for office tasks such as coupling paper. In some embodiments, the stapler may be used in surgical settings, e.g. for coupling skin flaps.
- A stapler with [the novel spring mechanism].
Therefore, based on the explicit description, the claim scope presumably comprises at least the following four embodiments:
- With anvil for office tasks
- Without anvil for office tasks
- With anvil for surgical settings
- Without anvil for surgical settings
But how would 4 be enabled? It doesn't seem enabled to press a stapler without a bottom-part/anvil into flesh until a staple comes out. That would not achieve the desired purpose, and let's assume it does not for the sake of argument here. Therefore, is it implicit that the claim scope only includes embodiments which would be "reasonable" to a PHOSITA, thus excluding non-enabled embodiment 4 from the claim scope?
If it were the case that embodiment 4 was not considered part of the claim scope, what if someone sold the no-anvil embodiment with a separate "anvil plate" that was to be manually held in place to achieve the desired result in surgical settings, though (again assuming for the sake of argument) not in a way that would infringe embodiment 3 under doctrine of equivalents (same way, function, and result). It seems like the patentee would point to the broad claim and the spec to say that the separate anvil plate embodiment clearly infringed what would be embodiment 4, even though as described above, embodiment 4 does not seem to be enabled on its own.