A foundational principle of U.S. patent law is that technologies in the public domain must remain free for all to use. Bonita Boats v. Thunder Craft Boats, 489 U.S. 141, 146 (1989); Graham v. John Deere Co., 383 U.S. 1, 6 (1966). Appropriately, U.S. patent law precludes patenting technology that is demonstrably “known.” But it also reserves for the public a margin of safety between actual public knowledge and true innovation by preventing one from patenting simple manipulations or extensions of publicly known technology. While such extensions of technology may not exist per se, allowing them to be patented risks misappropriating public knowledge. U.S. patent law considers such extensions of technology to be “obvious,” and just as known technology is unpatentable, so too is obvious technology. In this way, the law favors the general interests of society over those of a particular inventor. Every obviousness analysis is therefore, in actuality, an attempt to draw a boundary line between what is in the public domain, or flows from it, and what can be protected by an inventor.
Every obviousness analysis starts by using the half‑century old Graham factors, which include determining: (1) the scope and content of the prior art; (2) the differences between the patent claims sought by the applicant and the prior art; (3) the level of ordinary skill in the art; and (4) objective indicia of nonobviousness. Graham, 383 U.S. at 17‑18. The analysis also “entails consideration of whether a person of ordinary skill in the art ‘would have been motivated to combine the teachings of the prior art references to achieve the claimed invention, and … would have had a reasonable expectation of success in doing so.’” Insite Vision v. Sandoz, 783 F.3d 853, 859 (Fed. Cir. 2015) (emphasis added). Motivation has historically been considered when questioning the propriety of combining references or modifying a reference. But more recently, some have argued that motivation should be considered much earlier in the analysis—that there needs to be a motivation to start an obviousness analysis at a particular point.
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