Obviousness, and Combining Features from the Same Document

Last month the Federal Circuit issued a non-precedential opinion on obviousness in Guardant Health, Inc. v. Univ. of Washington, No. 24-1129 (Jan. 23, 2026). Although the case didn’t break any new ground, it provides a useful reminder regarding what is required in an obviousness rejection when a single prior art document is relied upon for multiple claim features.

At issue in Guardant were claims in a University of Washington patent to a method for reducing the error rate in DNA sequencing. Guardant challenged the patent in an inter partes review, but the Patent Trial and Appeal Board (the Board) upheld the validity of the patent, finding that Guardant had failed in its contention of obvious to show a motivation to combine features from a prior art reference. Guardant appealed.

A unanimous Federal Circuit panel ruled that the Board erred by requiring Guardant to show a motivation to combine features from the same embodiment of a reference, and sent the case back to the Board for further proceedings.

Guardant had relied on a combination of two references in its contention the patent claims were obvious. Its failure to provide a motivation to combine features was related to two features that were not only in the same document, but were parts of the same embodiment, and even in the same paragraph.

The Federal Circuit found that there was no need for Guardant to have shown motivation to combine features from the same embodiment of a reference. To find otherwise would dissect “prior art references into collections of individual elements, requiring a part showing obviousness to re-do the work already done in the prior reference” (quoting General Electric v. Raytheon Technologies, 983 F.3d 1334, 1352 (Fed. Cir. 2020)).

The result in Guardant contrasts with the situations where different claim elements are in different embodiments, for example as found in Abiomed v. Marquet Cardiovascular, IPR2017-01204 (PTAB Oct. 23, 2017). There the patent challenger fell short for failing “to provide a sufficient rationale to combine the teachings of [the reference’s] different embodiments.” Similarly, in the context of anticipation, the general rule is that an anticipation rejection cannot involve a combination of features from different embodiments of the reference, see Microsoft v. Biscotti, No. 16-2080 (Fed. Cir. 2017), with an exception allowing combining features from different embodiments in an anticipation rejection when the combinability of features from different embodiments would be immediately apparent to one of ordinary skill in the art, see, e.g., Kennametal v. Ingersoll Cutting Tool, 780 F.3d 1376 (Fed. Cir. 2015).

A general rule about combining features from a single prior art reference is apparently not in the MPEP. However, a good statement can be found in the EPO’s counterpart, the Guidelines for Patent Examination in the European Patent Office, at G-VII, 6: “combining two or more parts of the same disclosure would be obvious if there is a reasonable basis for the skilled person to associate these parts with one another.” Being parts of the same embodiment is about as close an association of features as can exist.

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