The daily union. [volume] (Washington [D.C.]) 1845-1857, 1849-04-05
Balm and Morse Controversy.

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Respectfully, yours, --
Balm and Morse Controversy.
Decision of Judge Craneh.
ALEXANDER Balm, appellant, Us. SAM. L. b. MORSE ap-
pellee.
r. H. Gillet counsel for appellant Kendall and Lawrence
Tor appellee.
Upon the question of interfering applications for a
patent:
The Commissioner, upon hearing. decided that Mr
Bain's claim in,erfered with Mr.. Moses; and mat MI
Morse was the first inventor and rejected The claim OF
Mr.. Balm. From this decision Mr BAN has appealed.
1t is contended by the counsel Tor MT Morse hat 'he
Judge upon appeal has jurisdiction OF the question OF
interference Tha, appeal IS given only upon the
question of priority OF mpen,on and that upon the
question of interference, the decision OF the Commits
sloner is conclusive.
Whether be thus conclusive, then, is the hrs ques-
ton to be decided.
BY the act OF 1885, CHI $751; Sec 7, it is enacted that
"f the specification and claim shall not have been SO
modified as the opinion Of the Commissioner shall en-;
title the applicant to patent he may, on an appeal and
upon request in writing have the decision OF board OF
examiners, to be composed OF three, &c: and
naton and consideration OF the matter by such board 1t
shall be IN their power, OF majority OF them, to re-
the decision of the Commissioner either IN whole
part and their opinion being certified 10 the Com
missioner, he shall be governed thereby in the further
proceedings TO be had on such application
This section is applicable to where there is no
conflicting applicant, and shows that the Legislature, by
saying, 'y IN the opinion of The Comnaisoner &C. did
not intend TO make that opinion conclusive. On the
trary, provides hat the board shall be furnished with
acertifcae, writing, of the opinion and decision of the
Commissioner stating the particular grounds OF his OBJ
considers entitled to be patented and that the said
board shall give reasonable notice to the applicant as
we'll TO the Commissioner, OF the time and place Of
their meeting" &C. All these provisions were evidently
intended enable the board OF to revise the
opinion and decision of the Commissioners, and show that
his opinion was not to be conclusive.
BY the Sth section of the act S36) IS enacted,
That wherever application shall be made for patent
which, the opinion of the Commissioner. would inter
ere with any other patent tor which an application may
be pending, with any nnexPred patent which shall
have been granted, shall be the duty OF the Commits
sioner to give notice thereof TO such applicants or patent
ees, the may be and either shall be dissatisfied
with the decision of the Commissioner the question of
priority of right invention hearing thereof, he
may appeal from such decision, on the like terms and
conditions provided in the preceding section of this
act and the like proceeding shall be had, to determine
which, whether either of the applicants is entitled to
receive patent as prayed for.
The question of priority of right or invention necessa
ry implies interference. The Commissioner before he
could decide the question OF priority must have decided
that of interference for without interference there
be no question of priority Before can have iusdc-
ton OF the question of priority, must be satisfied that
there is interference; and must decide the question
OF jurisdiction as well as any other question which arises
In. the cause.
The opinion of the Commissioner (mentoned in the
sth section that interference exsts only justites him in
gUing notice thereof to the other applicant and appoint
ing day to hear the parties upon that question He de-
cides only pro hoe uce, and for that purpose only
Upon that hearing ne Is to decide and from that de-
ton of priority, including that OF interference he may
appeal and upon such appeal, as understand the law,
which, whether either Of the applicants is entitled to
receive patent prayed for" The scope thus given to
the Judge is broad enough to inc The question OF in
reference well that OF priority, if should arise.
By the act of 1899, CHI So it is enacted, THAT
in all cases where an appeal is now allowed by law from
the decision of the Commissioner OF Patents TO board
OF examiners provided for in the It'll section OF the act to
which this is additional, the party, instead thereof shall
have right to appea to the chief justice OF the district
court of the United States for the District OF Columbia
by giving notice thereof TO the COMMISSIONER and filing
IN the Patent Office within such lime The Commissioner
shall appoint his reasons OF appeal specifically Sc. forth IN
writing; and also paying into the Patent Office, the
credit of the patent fund, the OF twenty five dollars
'And it shall be the duty OF the said Chief justice,
petition, to hear and determine all such Appeals and to
revise such decisions, summary war, the evidence
adduced before such commissioner, such early and
commissioned the and place OF aring, whose atty
it shall be give notice hereotto all parties who appear
be Interested therein In such manner as the said Judge
THE commissioners shalt also lay before the said Judge
s so Of his aeo s the e SaIs
touching all the uolped By Tie Of appeal
which the revision shall be confined"
One OF the of appeal in this is, that there
is real and substantial interference between the two
applications
the reasons OF appeal and must be decided by the Judge
BY limiting the jurisdiction OF the Judge to the points
volved by the reasons OF appeal the legislature has
affirmed II to that extent.
The interference mentioned in the sth section of the
act of 1885, must be interference respect to paten
able matters; and the claims of the applicants must be
limited to the matters specifically forth their re
spectve Inventions; and what is not tn claimed ma e,
for the purpose of this preliminary inquiry be considered
disclaimed.
The question then is, does Mr. Balm claim patent for
any matter now patentable for which Mr. Morse claims
patent'
To answer this question: it is necessary TO ascertain
for what patentable matter Mr.. Morse now claims a
patent.
In his specification filed January %, 1913, he says:
''What claim, as my invention and i'm prove ment
is the single circuit of conductors
OF my teegaphc signs already patented, for numerals
letters words and the deco posing
known salts that leave mark the result OF the said de
composition, upon paper CLOTH metal, other conyenen
and known markable material. | also claim the nven
ton of the machinery herein described J the purpose
OF apply ing the decomposng, cooring, bleaching effects
OF electricity acting upon known salts herein before
described
The Commissioner his written decision in this case
upon chemically prepared paperl not the point issue
nor IS hs claimed by either party Said Morse claims
using single circuit OF conductors for certain purpose
or IN certain way, to mark his Geographic signs
and also claims the machinery by which he accompshes
this purpose Said Balm does not specifically mention in
his claim using single circuit though this must be con
sdered an essential part of his invention and claim and
IA necessarily involved IN the final clause OF his claim &c
w.t. 80 that IN either these form the received com
nunicaton substantially in the and with the ef
fects described and shown"
The Commissioner proceeds: The third clause of The
clam OF said BAN, with which the true claims of said
Nose interfere, is as follows, 10 wit:
srhrd The application any suitably chemically pre
Der. he o,aI