The New York herald. [volume] (New York [N.Y.]) 1840-1920, 1849-03-22
The Magnetic Telegraph-Bain and Morse
Controversy.
OPINION OF JUDGE CRANCH.


OPINION OF JUDGE cRANcH.
sdIeTsnder Balm, appellant SamI r. Aorss,
tons for pstsut"Ths Com%s.iooer dsSd. SPu tSst
Mr.. Bsins aim interfered with Mr.. Morses and tnat
Ss MST;s Va: the frat inv.nssr and rejected the
psslsd. twas centended by Mr.. Morse, that on the
appss the only question to Be decided th priority
ference, the decision of the Commissioners is couoiu-
sve, Judge Crsnoh having given his sons on the
HAVING s:s.Stsd Ii. Fight n. csur to
decide both questions, Judge err .noh proceeded
% examine the claims ct large.
The Judge enters into long and clcar analysis Of
Of What and what is not paten' able in Morsss pa
tent and to the conclusion Ihat eli that 10 pa
tntabls in Mr. Morsss INVENTOR is the claim for the
combination Of and isterss which he hs
Invented and that this is all vi eh left to be inter.
The Judge then proceeds, - fellows, to compare
Mr. Morss's claim with Mr.. Bsin's claim, having IS
sDSve reduced the question to the point mentioned
These combinations seeui me to b far from iden-
the perforated paper for oomposisg the eommunios-
ton; end Of the style ~htch passes electric cur
for transmitting the a~. oommunio.tiOn to sewers.
diherene places It the time 1t IL said that the
eonibiaa in that respsct, his combination
diEere from that Of MIR MORE, and It is very impor-
tsnt item In connotion With the perforated He
ancladss In his ordinations patentable matter
with old matter not pstentabls and thereby makes
new pstsntable combustion. This new matter thus
antroduced int the oombinst Is admitted to
Be patertsbls In itself without combination with the
On unHatentab'e matter and indeed 1t seems to be
great Improvement in the Transmission Of tesgrapho
Bus it is said that Mr Balm is emily authorised to
obtain separate patent for each Of those
and cannot claim patent for his combination OF
the old and new together. IT. however, his new com.
bnation Of old msterias be pssntabe (which must be
admitted, or it would not interfere with MIR Morses
elsip 1t to be the less because
includes the matter in connection with the old.
The old matter may not In ITSELF be pstentable but
joined to the new matter, cemoinstion may be form
cd which may be patented. He is not obliged to take
separate patents for each nAt0ntabl0 m Ha
does not now ask for them he may be willing to ask
conbin.tion an exclusive use Of them for
every purpose to which SaI they may be applicable
ranssmsnt Of old = nstsriss When, In conssqusns.
thereof eject Is produced. may be the subject Of
patent This effect may consist either in the pro-
better manner OF ct cheaper rate. This msnufAc-
turs may be made Of different substances mingled
Of the arrangement Of many old combinations. Each
distinct part Of the msnsfacturs may have been in
founded may have been long known and yet tho nan
Mcclure may be the proper subject for patent 1t
nssful compound. or thing thus produced BY sombna-
ton, that the grant 10 made; It tor combining and
using things before known with something then in.
yen:ed 80 .. to produce an effect which be-
The council of Mr.. Morse, in argument, said,
ut il obvious, and is admitted By our sdversariss
that Morse's instrument is very different thing in
in It's form end structure from Bains.n But form and
ST. ucturs vsry important matters In machinery;
and hthey enable the operator to do the work In Q
better manner with more less expense OF in
ment for which the inventor may have patent.
When the application 10 for Q patent for combine
tisn Of .ohinery and materials, form and
become substance they Of the OF the in.
vention; and admission that Morses instrument
very different thing, in ts form and structure, from
Bans 10 admission Of fact which IL prima facie
evidence at there Is interference bstween
the two and throws the burden Of proof on the other
side.
There evidence laid before tho Commissioner
Of Patents upon the question Of Interference that
hA UuvYar huvo huaAfh he
PARTON OF the two rpecihcations; possibly without
considering that the emily patent which either could
the materials, Of which Mr.. Morss combination CON.
stats, being old and not nov pstentstls.
Balm and MIR. Morse interfere to matters not now
pa.entable but whether they interfere matters
in MI Morss's specification is Ais own osmbination
Of machinery and materials. That combination
be very diere thing 10 its form and structure. from
Mr. Bsin's Form and structure constitute the iden-
y o. GA S' % 2; consist; Of
presume be issued for the form and structure Of the
1t being admitted that the form and structure Of
Mr. Bsin's instrument is very different from Morses,
there be NO interference in this respect and Ii
form and structure constitute the identity Of ma
shinery there Is interference In the instru-
msnss; and II the Instruments tho combinations,
or the result Of the combinations for which patents
claimed, there is iatsrferea ace in the two
tnstruments In regard to any matter pstsntable
II Mot 70 01; the 3D.
great difference between the machinery used by the
oontsndins applicant. to effect the objeot-i. o. the
rapid OF intelligence BY the power Of the
electric current Any who will compare the two
spesifcatons and drawings and models, will ct once
A patentabls T., provsmsnt IL not an interferenos
The Commissioner, in his written decision, says
plieation BY said Alexander Balm subject Of Great
Britain was made April 1913, and upon examination Of
claim could BE- admitted to patent no Invention Of
Ike character appearing In the public records Of the
once nor in any printed publication Prior however,
to the 6na Issue Of the the arohves wore
eonsutsd; and II found that an application died
BY Samuel F. B. Morse, January 20, is4s, had been
which presented claims conflicting with those before
mentioned, set up by said Balm"
This shows that but for the supposed interfering
claim of MIR Morse. Mr. Balm entitled to his Pc.
tent; and If there BE- respect so pa
tenable matter he IL still entitled to patent for his
But the counsel for Mr.. Morse say:-" There il an
interference BAins third olaipa papaby covers
the whole Of Morsrs rst claim; and IL srsntsd Balm
could do all that Morse claims exclusive right TO do
h could vIiss Mors.'. ehsr.eteI precisely Is Morse
doer; and that therein consists the interference
But the only matter Few patsntabe, and claimed In
Mr. Nor.s's specification is his peculiar combination
OF msteria and machinery, therein described. All
the materials ussd in that conbnation arc old; and
he will not under this patent be sntited to the exolu
sombnstion than that which be has described in his
specification. There cannot be patent for prinoi-
sH.ot Two persons may use the cane principle and
produce the ssme effect BY different MEANS without
tnterference or infringement ana each would be on.
tied to patent for his own invention Gsdson 50,
.68 ~
SO, in the present although the power used By
both sppicants the same and the subject the ssmss
Jst ~ the effect produced by which appear
tome % different % to prevent interference the
question Of priority Of Invention does not arise is
therefore, under the 9th section Of 81
1896, but der the 7th section Of tho act SO
that each OF the applicants may have patent for the
combination which he has invented and claimed and
described in his spsodoaton, provided he shall have
withla the regulates Of the law to sAtite
hin to patent
this were doul tful question, I should think It
ny 6nty to render the same Judgment 90 ~ to give
Mr. Balm the same right to have the validity Of his pa
tent tested BY the ordinary tribunals Of the country
which Mr.. Merte would enjoy to his patent; and,
finally, to obtain the Judgment OF the Supreme Court
Of the United States upon It. For fthe Commissioned
and the Judge should rcjsot Mr. Bsins application for