United States Court of Appeals 

for the Federal Circuit ______________________ 

RAI STRATEGIC HOLDINGS, INC.,

Appellant

v.

PHILIP MORRIS PRODUCTS S.A.,

Appellee

______________________ 

2022-1862

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. PGR2020-

00071.

______________________ 

Decided: February 9, 2024

______________________ 

GREGORY A. CASTANIAS, Jones Day, Washington, DC, 

argued for appellant. Also represented by AMELIA A.

DEGORY; ROBERT BREETZ, DAVID B. COCHRAN, KENNETH 

LUCHESI, DAVID MICHAEL MAIORANA, Cleveland, OH; 

JOSHUA R. NIGHTINGALE, Pittsburgh, PA.

 JONATHAN M. STRANG, Latham & Watkins LLP, Washington, DC, argued for appellee. Also represented by 

GABRIEL K. BELL, MAXIMILIAN A. GRANT, DAVID ZUCKER. 

______________________ 

Before CHEN, STOLL, and CUNNINGHAM, Circuit Judges.

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STOLL, Circuit Judge.

RAI Strategic Holdings, Inc. appeals the Patent Trial 

and Appeal Board’s final written decision in a post-grant 

review (PGR) holding certain claims of U.S. Patent 

No. 10,492,542 unpatentable as obvious or lacking written 

description. We affirm-in-part, vacate-in-part, and remand. Specifically, we hold that substantial evidence supports the Board’s obviousness finding but does not support 

the Board’s finding that certain claims lack written description support under 35 U.S.C. § 112.

BACKGROUND

RAI owns the ’542 patent, which is directed to electrically powered smoking articles that provide an inhalable 

substance in vapor or aerosol form by heating tobacco or 

other substances without significant combustion. ’542 patent col. 1 ll. 18–27.

Claim 1 is a representative independent claim and recites: 

1. A smoking article for receiving a disposable 

aerosol forming substance, the smoking article 

comprising:

a housing having a proximal end for receiving the disposable aerosol forming substance and an opposite distal end;

a power source arranged within the housing adjacent to the distal end;

a receiving chamber formed at the proximal end of the housing and having an opening for receiving the disposable aerosol 

forming substance;

a heating projection extending at least partially in the receiving chamber towards the 

proximal end of the housing and 

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terminating at a free end which is configured to be inserted into the disposable aerosol forming substance for heating the 

disposable aerosol forming substance, the 

heating projection comprising:

a heating member comprising an 

electrically resistive metal which is 

configured to heat the disposable 

aerosol forming substance;

an electrical connector for providing a flow of electricity to the heating member for heating the heating 

member; and

a control circuit positioned within the housing between the power source and the heating projection and connecting the heating 

member of the heating projection to the 

power source.

Id. at col. 42 ll. 12–37. 

Philip Morris Products, S.A. filed a petition to institute 

a PGR of claims 1–30 of the ’542 patent. In particular, 

Philip Morris asserted that these claims were invalid for 

lack of written-description support and, alternatively, obvious over Robinson1 in view of Greim2, either alone or in 

combination with Wang3 or Adams4. After the PGR was 

instituted, RAI disclaimed claims 13–17.

Among other things, Philip Morris argued that dependent claims 10 and 27, which recite a heating member with 

“a length of about 75% to about 85% of a length of the 

1 U.S. Patent No. 7,726,320. 2 WO 2011/050964 A1.

3 WO 2008/139411 A2.

4 U.S. Patent App. Pub. No. 2007/0102013.

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disposable aerosol forming substance,” are not supported 

by written description because “the claimed range is different from and substantially narrower than the ranges disclosed in the specification.” Philip Morris Prods., S.A.

v. RAI Strategic Holdings, Inc., 2022 WL 129099, at *15

(P.T.A.B. Jan. 10, 2022) (Decision). Specifically, Philip 

Morris asserted that while the specification describes 

ranges such as 75% to 125%, 80% to 120%, 85% to 115%, 

and 90% to 110%, it does not disclose a heater length range 

with an upper limit of 85%. RAI countered that the specification provides written description support because it 

teaches heating length embodiments at both ends of the 

claim range, pointing to the 75% to 125% and 85% to the 

110% ranges. The Board found that the claims lack written 

description support because no range contains an upper 

limit of about 85% making it “‘less clear’ that the inventors 

contemplated a range of ‘about 75% to about 85%’ as part 

of the invention.” Id. (citation omitted).

In its final written decision, the Board held claims 1–9, 

11, 12, 18–26, and 28–30 unpatentable as obvious and 

claims 10 and 27 unpatentable for lack of adequate written 

description. Id. at *16.

RAI appealed. We have jurisdiction under 28 U.S.C. 

§ 1295(a)(4)(A). 

DISCUSSION

RAI raises two issues on appeal. First, RAI argues that

the Board erred in finding that claims 10 and 27 lack adequate written description support. Second, RAI argues

that the Board erred in finding that claims 1–9, 11, 12, 19–

26, and 28–30 would have been obvious in view of Robinson 

as modified by Greim. We address each issue in turn.

I 

We begin with RAI’s written description argument. 

Specifically, RAI challenges the Board’s finding that claims 

10 and 27, which require that “the heating member is 

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present on the heating projection along a segment having 

a length of about 75% to about 85% of a length of the disposable aerosol forming substance,” lack written description support under 35 U.S.C. § 112. 

The written description requirement is met when the 

disclosure relied on for support “reasonably conveys to 

those skilled in the art that the inventor had possession of 

the claimed subject matter as of the filing date.” Ariad 

Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 

(Fed. Cir. 2010) (en banc) (citation omitted). “[T]he level of 

detail required to satisfy the written description requirement varies depending on the nature and scope of the 

claims and on the complexity and predictability of the relevant technology.” Id. The test for written description requires an “objective inquiry into the four corners of the 

specification from the perspective of a person of ordinary 

skill in the art.” Id. This inquiry is a question of fact that 

we review for substantial evidence. See id.; Gen. Hosp. 

Corp. v. Sienna Biopharms., Inc., 888 F.3d 1368, 1371 

(Fed. Cir. 2018).

Some background discussion of our precedent on written description support for range claims is helpful. In In re 

Wertheim, our predecessor court held that a set of claims 

that recited a narrower claimed range than the range specified in the specification had written description support. 

541 F.2d 257, 264–65 (C.C.P.A. 1976). The case was an appeal from an interference proceeding, and the dispositive

issue on appeal was whether certain claims of a patent application had written description support and therefore 

should be entitled to the filing date of the parent application and the applicant’s earlier Swiss application. The 

claims at issue related to a process for making freeze-dried 

instant coffee and required the solids content of the concentrated coffee extract to be “between 35% and 60%” (claims 

2, 4, 37, and 38). Id. at 261–62. The specification disclosed 

a broader solids content range of 25% to 60% and provided 

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examples of specific embodiments with solid contents of 

36% or 50%. Id. at 262.

The Wertheim court explained that in determining 

whether the written description requirement is met, 

“[m]ere comparison of ranges is not enough,” and that instead, “we must decide whether the invention appellants 

seek to protect by their claims is part of the invention that 

appellants have described as theirs in the specification.” 

Id. at 263. And “[w]here it is clear, for instance, that the 

broad described range pertains to a different invention 

than the narrower (and subsumed) claimed range, then the 

broader range does not describe the narrower range” and 

the written description requirement would not be satisfied. 

Id. at 265. Ultimately, the court disagreed with the Board 

that the narrower claimed range of “between 35% and 60%” 

lacked written description support because that limitation 

was “within the described broad range of 25% to 60%” and 

“there [was] no evidence . . . that there [was] . . . any distinction . . . between the claimed lower limit of solids content and that disclosed in the Swiss application.” Id.

at 264.

As in Wertheim, the issue in In re Blaser was whether 

the claims had adequate written description support to be 

entitled to the filing date of a great-grandparent application. 556 F.2d 534, 536–37 (C.C.P.A. 1977). Our predecessor court held that the claims at issue that recited a 

narrower range than what was disclosed in the specification had adequate written description support. Id. at 538. 

Specifically, the claims in question were directed to a process for preparing acylation products of phosphorous acid

and required heating a mixture to 80o to 200o C. Id. at 535–

36. The court stated that “Wertheim is controlling” and 

that the specification, which disclosed heating the mixture 

to temperatures between 60o and 200o C, “adequately support[ed] the limitation ‘80o to 200o C.’” Id. at 538.

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In Kolmes v. World Fibers Corp., we followed a similar 

line of analysis. 107 F.3d 1534 (Fed. Cir. 1997). The claims 

at issue related to cut-resistant yarn and required two 

strands to spirally wrap the core “at the rate of 8–12 turns 

per inch.” Id. at 1537–38. The specification stated a 

broader range of wrappings formed “at the rate of 4–12 

turns per inch, with 8 turns per inch being preferred.” Id.

at 1539. We found that the claims were “well supported by 

the specification” and accordingly, affirmed the district 

court’s finding that the claims were entitled to the parent 

application’s effective filing date. Id. at 1538–39.

In contrast, in In re Baird, cited by the Board in its decision in this case, our predecessor court held that a 

claimed range that was narrower than the disclosed range 

lacked sufficient disclosure. 348 F.2d 974 (C.C.P.A. 1965). 

The case stemmed from an interference proceeding in 

which a patent application had copied certain claims from 

an issued patent; the issue on appeal was whether these 

claims had sufficient disclosure within the application’s 

specification. The claims in question were directed to a 

method of creating stretch-orienting polypropylene and required a quench bath temperature range of “from about 40

degrees F. to at least as low as about 60 degrees F.” Id.

at 981–82. The issued patent explained the specific 

claimed range is preferred because the material would curl 

above 60o F and would be too brittle below 40o F. Id. at 982. 

The application, however, only disclosed that the quenching temperature may be between 32o F and 176o F, without 

providing any further guidance. Accordingly, the court 

found that the application’s claims lacked written description support because “the copied claims ‘are drawn to an 

invention different from that disclosed in the specification.’” Id.

We similarly held that a claimed range lacked written 

description support in Indivior UK Ltd. v. Dr. Reddy’s Laboratories S.A., also cited by the Board in its decision in 

this case. 18 F.4th 1323 (Fed. Cir. 2021). The patent 

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application at issue in Indivior related to orally dissolvable 

films containing therapeutic agents and certain claims required a water-soluble polymeric matrix of “about 40 wt % 

to about 60 wt %” (claim 1) or “about 48.2 wt % to about 

58.6 wt %” (claims 7 and 12). Id. at 1325–26. By contrast, 

the application’s specification alternatively disclosed a 

“film forming polymer in an amount of at least 25% by 

weight of the composition,” a polymer content of “at least 

50%,” or that “film may contain any desired level of . . . polymer.” Id. at 1326–27, 1329. The specification also included tables that disclosed formulations with 48.2 wt % 

and 58.6 wt % polymer. Id. at 1326–28. We held that the 

range “about 40 wt % to about 60 wt %” lacked written description support because (1) neither the range nor the end 

values were disclosed in the specification; and (2) the inconsistent statements regarding the desired amount of polymer in the specification made it “even less clear that an 

invention of ‘about 40 wt % to about 60 wt %’ was contemplated as an aspect of the invention.” Id. at 1328–29. We 

also held that the range “about 48.2 wt % to about 58.6 

wt %” lacked written description because although the end 

points were disclosed in the tables within the specification, 

there was a lack of persuasive evidence that a skilled artisan would have understood the application as disclosing an 

invention with the range between these endpoints. Id.

at 1329.

With this background in mind, we turn to the issue before us: whether the specification of the ’542 patent provides written description support for a heating member 

with “a length of about 75% to about 85% of a length of the 

disposable aerosol forming substance” as required by the

claims. ’542 patent col. 42 ll. 61–64 (claim 10), col. 44

ll. 35–38 (claim 27). The ’542 patent specification discloses 

a broader range than that which is claimed. Specifically, 

the specification states that the electrical heating member 

present on the heating projection may have a length of 

“about 75% to about 125% the length of the inhalable 

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substance medium,” or “about 80% to about 120%, about 

85% to about 115%, or about 90% to about 110% the length 

of the inhalable substance medium.” See id. at col. 39 

ll. 41–48. The question thus is whether the disclosure of a 

length of about 75% to about 125%, about 80% to about 

120%, about 85% to about 115%, or about 90% to about 

110% “reasonably conveys to those skilled in the art that 

the inventor had possession” of the claimed length of “about 

75% to about 85%.” Ariad Pharms., Inc., 598 F.3d at 1351 

(citation omitted). Among other things, we consider 

whether “the broad described range pertains to a different 

invention than the narrower (and subsumed) claimed 

range,” in which case the specification does not provide

written description support for the narrower claimed 

range. Wertheim, 541 F.2d at 265.

The specification need not expressly recite the claimed 

range to provide written description support. See id.

(“[T]he invention claimed does not have to be described in 

ipsis verbis in order to satisfy the description requirement

of § 112 . . . .” (citation omitted)). While the ’542 patent 

specification does not disclose the claimed range itself, it 

does expressly disclose both endpoints by providing that 

the length of the heating member may be “about 75% to 

about 125%” or “about 85% to about 115%.” See ’542 patent 

col. 39 ll. 41–48 (emphases added). In addition to considering what the specification expressly discloses, we also 

consider the context of the technology at issue and the 

knowledge gained by a person of ordinary skill in the art 

reading the specification. Given the predictability of electro-mechanical inventions such as the one at issue here, 

and the lack of complexity of the particular claim limitation

at issue—i.e., reciting the length of a heating member—“a 

lower level of detail is required to satisfy the written description requirement than for unpredictable arts.” See 

Hologic, Inc. v. Smith & Nephew, Inc., 884 F.3d 1357, 1361 

(Fed. Cir. 2018). Further, nothing in the specification indicates that changing the length of the heating member 

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changes the invention, whether as to operability, effectiveness, or any other parameter.

Thus, we see no evidence suggesting that the broad described ranges of “about 75% to about 125%,” “about 80% 

to about 120%, about 85% to about 115%, or about 90% to 

about 110% the length of the inhalable substance medium” 

disclose a different invention than the claimed range of 

“about 75% to about 85%.” In other words, under the facts

of this particular case, there is no evidence that the claimed 

subrange results in a different invention than the invention disclosed in the specification. Accordingly, for all of 

the above reasons, we conclude that no reasonable fact 

finder could find that the claimed subrange is not within 

the appellant’s invention. In so holding, we note that our

determination is highly factual and dependent on “the nature of the invention and the amount of knowledge imparted to those skilled in the art by the disclosure.” 

Wertheim, 541 F.2d at 262. As we have recognized, 

“[b]roadly articulated rules are particularly inappropriate 

in this area.” Indivior, 18 F.4th at 1329–30 (alteration in 

original) (quoting Wertheim, 541 F.2d at 263).

Though the Board relied on Indivior and Baird in its 

decision, the facts in this case align more closely with those 

in Wertheim, Blaser, and Kolmes, where the broader disclosed ranges did not constitute a separate invention from

the narrower claimed ranges. Unlike the specification in

Indivior, the ’542 patent specification discloses the end 

points of the claimed range and there are no inconsistent 

statements regarding the range. Rather, the ’542 patent 

states a broader range for the length of the heating member and then states narrower ranges which are subsumed 

within that broader range. In contrast, the specification in

Indivior stated two ranges for polymer content but then 

also stated that the polymer content could be any value. Id.

at 1326–27, 1329. We also note that, unlike Indivior, the 

invention at issue here falls within the predictable arts.

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Baird is likewise distinguishable from the facts here. 

In Baird, the claimed range was advantageous over the 

broad disclosed ranges because values falling outside of the 

claimed temperature range (and within the broader disclosed range) caused the material to curl or be too brittle, 

and the specification did not provide any guidance to a person of skill in the art to reach the claimed range. See Baird, 

348 F.2d at 982. Thus, the court in Baird found that the 

claimed range and the disclosed range were directed to different inventions. Id. Here, by contrast, there is no evidence that the ’542 patent’s disclosed range of about 75% 

to about 125% for the length of the heating member behaves any differently than the claimed range of about 75% 

to about 85%.

Philip Morris nonetheless argues that substantial evidence supports the Board’s fact finding, relying on the specification and its expert, Dr. Seetharama Deevi. 

Specifically, Dr. Deevi testified that “[t]he described ranges 

for bulk heating are all centered on the full length (100%) 

of the inhalable substance medium,” while the claimed 

range “is not centered on 100%, but 80% (the midpoint between about 75% and about 85%)” and, as such, “[t]here is 

nothing in the patent that would lead a [skilled artisan] to 

conclude that the inventors possessed a range that went no 

higher than 85% for bulk heating.” J.A. 2660–61 ¶¶ 124–

125. In light of our case law and the other evidence of record, we do not view the expert’s testimony as evidence that 

a reasonable mind could accept as adequate to support the 

Board’s finding that a skilled artisan would not think that 

the inventor possessed a smoking article with a heating 

member with a length that is about 75% to about 85% the 

length of the inhalable substance medium.

While it is true that the specification discloses ranges 

with values over 100% and the “about 75% to about 85%” 

range does not, our legal precedent holds that “[m]ere comparison of ranges is not enough, nor are mechanical rules a

substitute for an analysis of each case on its facts to 

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determine whether an application conveys to those skilled 

in the art the information that the applicant invented the 

subject matter of the claims.” Wertheim, 541 F.2d at 263. 

Considering the nature of this particular smoking article 

invention and the disclosure of a wide range of lengths for 

the heating element including above and below 100%, as 

well as the lack of any explanation for why a length above 

or below 100% matters with respect to operation of the invention, skilled artisans would undoubtedly consider 

lengths that are under 100% to be part of the invention.

Accordingly, based on the unique facts of this case, we 

find that substantial evidence does not support the Board’s 

finding that claims 10 and 27 reciting a heating member 

“present on the heating projection along a segment having 

a length of about 75% to about 85% of a length of the disposable aerosol forming substance” lack written description support under § 112. We therefore vacate the Board’s 

decision on this issue and remand for further consideration

consistent with this opinion. 

II

We now turn to RAI’s argument that the Board erred 

in holding that claims 1–9, 11, 12, 19–26 and 28–30 would 

have been obvious over Robinson and Greim. In particular, 

RAI challenges the Board’s fact finding that a person of 

skill in the art would have had a motivation to combine 

Robinson and Greim.

We review the Board’s obviousness determination de 

novo and its underlying factual determinations for substantial evidence. TQ Delta, LLC v. Cisco Sys., Inc., 

942 F.3d 1352, 1357 (Fed. Cir. 2019). Whether a person of 

ordinary skill would have been motivated to combine prior 

art references is a question of fact. In re Gartside, 203 F.3d 

1305, 1316 (Fed. Cir. 2000). On substantial evidence review, we ask whether a reasonable fact finder could have 

arrived at the agency’s decision. Personal Web Techs., LLC 

v. Apple, Inc., 848 F.3d 987, 991 (Fed. Cir. 2017).

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The parties agree that claim 1 is illustrative and requires a “heating projection comprising . . . an electrical 

connector for providing a flow of electricity to the heating 

member for heating the heating member.” ’542 patent 

col. 42 ll. 22–33. In its petition, Philip Morris argued that 

the combination of Robinson and Greim discloses all the 

limitations of claim 1 and specifically relied on Greim to 

disclose a heater with an “electrical connector.”

Philip Morris asserted that a person of ordinary skill in 

the art would have been motivated to replace the heating 

element 72 in the smoking device of Robinson with Greim’s 

heater and depicted its proposed combination as shown below: 

J.A. 160 (annotations added). The figure above shows 

Greim’s heater alongside a cross-sectional view of Robinson’s smoking article. Robinson’s smoking article contains

heating element 72 extending into the tobacco segment 89. 

See Robinson, col. 27 ll. 31–39, Fig. 3.

The following figure shows Philip Morris’s proposed 

combination in which the heater in Robinson’s smoking article is replaced with Greim’s heater: 

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J.A. 160. 

Philip Morris argued to the Board that a skilled artisan

would have been motivated to use Greim’s heater with Robinson’s smoking article because (1) Robinson discloses that 

“the size and shape of [its] heating element 72 can be altered” and that the “[s]election of the power source and resistance heating elements can be a matter of design choice, 

and will be readily apparent to one skilled in the art,” 

J.A. 163–64 (quoting Robinson, col. 27 ll. 30–39, col. 28 

ll. 41–45); and (2) Greim teaches that its heater configuration with “the necessary electronics, wiring and connections . . . incorporated on the same electrically insulating 

substrate as the heater” has many potential advantages

over other heaters, including being “manufactured more 

straightforwardly and cost effectively,” “requir[ing] fewer 

components in its construction,” “allowing size reduction,” 

allowing “different portions [of the aerosol-forming/tobacco 

substrate] to be heated for different durations,” and “at different temperatures,” to “enhance the smoking experience,” J.A. 165, 167–68 (second alteration in original)

(quoting Greim, 1–4). 

The Board agreed that the language in Robinson 

“would have invited a person of ordinary skill in the art to 

apply their knowledge and skill with regard to selecting a 

resistance heating element that could be used with Robinson’s housing” and thus, “a person of ordinary skill in the 

art would have had reason to look to Greim for a heater.” 

See Decision, 2022 WL 129099, at *10–11. Additionally, 

the Board acknowledged that “a person of ordinary skill in 

the art would have appreciated that Greim’s heaters provide certain advantages, including flexibility in their design.” Id. at *11.

On appeal, RAI argues that contrary to the Board’s

finding, a person of skill in the art would not have been 

motivated to combine Robinson and Greim. Specifically, 

RAI asserts that Robinson’s statements that “[o]ptionally

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the size and shape of the second resistance heating element . . . can be altered” and that “[s]election of the power 

source and resistance heating elements can be a matter of 

design choice” do not invite a skilled artisan to look beyond 

Robinson to Greim. Robinson, col. 27 ll. 31–39, col. 28

ll. 26–44. Instead, RAI maintains that these statements

refer to alternate designs presented within Robinson itself. 

We are not persuaded. 

Substantial evidence supports the Board’s finding that 

a skilled artisan would have been motivated to replace Robinson’s heater with Greim’s heater. In light of Robinson’s 

statements about altering the heating element and the potential for design choices, the Board’s finding that Robinson invites a person of skill in the art to look at other 

heating elements outside of Robinson is reasonable. Even 

if we were to agree with RAI’s interpretation of Robinson, 

the Board’s determination is further supported by Greim 

and expert testimony. The Board relied on the teachings 

of Greim, which expressly disclose advantages of its heater 

design including that it “provides flexibility in the design 

to give desired heat distribution and to heat different portions of the tobacco for different durations, at different 

times, and at different temperatures.” See Decision, 

2022 WL 129099, at *11. Additionally, the Board credited 

the testimony of Philip Morris’s expert, Dr. Deevi, who 

opined that Greim’s heater design “would facilitate more 

efficient heating of the tobacco and make it easier for a 

[person of ordinary skill in the art] to optimize the heater 

design.” See id. (alteration in original) (quoting J.A. 2678–

79 ¶ 167).

Further, the Board credited the testimony of RAI’s expert, Mr. Charles Clemens, who opined that a skilled artisan would have “appreciated ‘flexibility in their [heater] 

design’” and also suggested that “implementing Greim’s 

heater in Robinson’s housing would not have been beyond 

the skill of a person of ordinary skill in the art.” Id. at *11–

12 (quoting J.A. 3677–78 (Clemens Depo. 25:19–26:6)) 

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(citing Clemens Depo. 78:5–83:21). As such, we conclude 

that substantial evidence supports the Board’s finding that 

a person of ordinary skill in the art would have been motivated to replace Robinson’s heating element with the heating element taught by Greim.

CONCLUSION

For the foregoing reasons, we affirm the Board’s holding that claims 1–9, 11, 12, 19–26 and 28–30 are unpatentable as obvious. We vacate the Board’s finding that claims 

10 and 27 lack written-description support and remand for 

further proceedings consistent with this opinion.

AFFIRMED-IN-PART, VACATED-IN-PART, AND 

REMANDED

COSTS

No costs.

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