The national era. [volume] (Washington [D.C.]) 1847-1860, 1853-02-17
THE NATIONAL ERA WASHINGTON D. c., FEBRUARY H. 1853.

of telegraphing by imprinting But certainly
he claims too much and patent which claims
too much cannot be supported.
There is another objection TO this eighth
claim, which, if less imposing, is not less de-
cisiye In claiming the use of the motive power
Of the electric current to PRINT LETTERS he
has shown no mode in his specification of doing
this There is nothing in his description from
which any one could conceive that he even
thought the printing of letters possible. Ger
tainly. he had invented no mode of printing
letters. "The inventor is not to be protected"
says Judge Woodbury., in the case 80 often
cited unless he describes fully and plainly
what he has done, so that the public may copy
or initiate and use il after his term expires.
And again "What he does not describe, and
certainl what in the misty future he cannot
describe, he must be presumed not to have In
vented"
There is no decision opposed to this doctrine.
The point did not arise before Judge Woodbury.
or Judge Kane. The copies of the patent be.
fore these Judges were incorrect IN the respect
! have already mentioned The claim as set
forth in those copies was confined to the pro-
duction of characters, signs of letters" IN
stead of characters, signs or letters" the
words actually used in the patent. OF course,
upon the patent as thus printed, this question
could not arise; for no one denies that Morse
invented mode of imprintng characters, that
is dots and lines or signs or representatives OF
letters For that he was entitled to a patent.
But he never invented, and has not described,
any mode of printing letters; and yet his patent
extends to every mode OF printing letters. 1t
would be impossible to make letters by the pro-
! had h,, Ma
chinery to produce that effect must be as DIFF
ferent from his as that of a steam-engiD from
that Of watch.
There can be no possible answer to this OBJ
lection to the patent, except the assertion that
the eighth clause merely claims the effect
which the described invention could produce,
and that the word letters" is the mere syno-
nym of characters" or signs; :" the mere
SYNONYM, in other words, of dots and lines Z"
| submit however, that this cannot be the true
construction of the clause. If the intention had
been to confne the claim to the mere marking
Of representations Of letters appropriate lam
guage could have been easily found But the
intention was obviously otherwise. The first
claim is for marking signals" the third is
for the "system Of signs" the eighth for
marking or printing characters, signs or let
ters The intention obviously is to claim every
thing which can be effected by the use of the
motive power in the communication of inteli.
gence by any recording apparatus whatever
tho manner or subject Of the record Mr..
Morse, or his advisers, evidently supposed that
| he, having invented method of making visible
and permanent impressions by means of cleo
tro-magnetism was entitled to n patent for
every mode of using the motive power of the
| electric current, no matter whether developed
in the mode known to and used by Morse or
any other to make visible and permanent i'm
pressions, by whatever machinery, and of what
ever description. IL is true that his counsel
Messrs Campbell and Harding, in their brief
now confne the claim to photographic signs"
tbrief, p. s. and that Mr.. Chords argument
is inconsistent with the claim, even to that ex-
tent 1t is true, also, that Judge Woodbury., in
tenderness to the patentee, reduced the claims
within legal limits but no would hardly have
adopted this limited construction, had a correct
copy of tho patent been before him The only
legitimate object of construction is to ascertain
the meaning of the persons using the language
In this case there is no doubt as to that
To me the conclusion seems irresistible from
the arguments have now submitted, that the
first, fifth, and eighth claims of the patent of
1910, as reissued in lS4S, are void, because
they claim too much because they claim a
principle or art generally; because they claim
effects, independently of the machinery pro-
ducing them; because they claim results or
operations which cannot be accomplished by
the machinery specified or any similar ma
chinery.
| proceed TO consider, briefly, the effect of
rejecting the first, fifth, and eighth claims, or
either of them, upon the patent, and upon the
pending suit.
1t will not he denied that, az the law stood
prior to 1897, the excessive claims in these
three clauses Of the summary would avoid the
patent altogether. 1t is true, there might he
patent defectively specified, and reissue for
30 much as was truly the invention of the pat
entee* but proof Of excess of claim was
complete defence to any suit for injunction or
infringement, founded on the patent vitiated
by it No disclaimer filed during the pending
of any suit could affect such suit
1t has been supposed by some, that the ninth
section of the act authorizes suits, without any
disclaimer, upon patents otherwise invalid for
excess Of claim
Taking the seventh and ninth sections to-
gether, and it would seem that disclaimer
should be filed before suit At all events, it
seems certain that suit brought without q
for an infringement of the part of the inven-
ton justly claimed It cannot be suit on
the patent at large, with right to recover if
any part of the matter patented shall turn out
} to be the invention of the patentee If this
were So, no disclaimers would ever be made.
But could the compliments in the present
suit avail themselves of this section, even if,
in proper case, q suit might be maintained
upon oil the claims in the patent and II rccov.
cry had on the good claims onlya Can it be
said that Morse has, by mistake, accident. or
inadvertcnce, inserted these three claims The
original patent was issued in 1910 these
claims were not set up till l84S when upon
the second surrender, the third patent was is
sued, embracing them. And can the claim of
the whole art Of telegraphing by imprinting
be definitely distinguished from the valid
} claims IL either of these questions must he
negatively answered, this question cannot rs
it surely should not avail the compliments in
this cause.
Moreover, the law did not authorize the re-
issued patent TO include claims not made in
the original patent 1t follows that the res.
sued patent is void and as the suit is brought
upon that patent, and not upon the original
patent of 1910, the decree Of the court below
should be reversed. This question has been
so fully argued by my colleague that do not
J deem it necessary to examine the statute and
the authorities in detail
have thus far considered claims of this
patent in respect to extent let me now ask the
attention Of the court to its claims in respect
10 duration.
} On the 18th of August 1898, Morse obtained
patent for his telegraph in France. On the
10th OF June, 1910, he obtained u patent for
the same invention here
He first applied for patent here on the eth
of April, 1898. The bill of complaint is silent
in respect to this application, and the deposi.
ton Of Page; aud the letter of Ellsworth,
which mentions it, states nothing in respect to
its contents ! The answer denies that this