by Dennis Crouch
The Federal Circuit's recent nonprecedential decision in Guardant Health v. University of Washington focuses on single-reference obviousness findings.
The vast majority of obviousness cases are based upon two or more references that, when combined, teach each limitation of the claimed invention. The key question in those cases boils down to whether a person of ordinary skill in the art would have had a sufficient motivation to combine those references to form the invention as well as a reasonable expectation of success in that endeavor. In the single reference situation, the Federal Circuit in Guardant Health found that neither of those test make sense - particularly when elements appear together in a single embodiment in the prior art.