The national era. [volume] (Washington [D.C.]) 1847-1860, 1853-02-17

Il
operating or giving motion to machinery which
may be used to imprint signals upon paper or
other suitable materials or to produce sounds
for the purpose of Geographic communication
at any distance"
He admits that there were UdrtOtlS modes o.
producing motions by electro magnetism, but
states that none Of them had been applied to
GetuGtc printing or recording machinery
The fifth claim is for the "system of signs
consisting Of dots and spaces, and dots, spaces
and horizontal lines, for numerals, letters
words and sentences, substantially as herein
act forth and illustrated, for Geographic pur.
poses"
The eighth claim is the most remarkable OF
all: ~ do not propose TO limit myself" he saws
to the specific machinery or parts Of machin-
cry described in the foregoing specifications OF
claims; the essence of my invention beng the
use Of the motiUe power of the electric or gdtvan.
&c current 'cAieh l call electro magnetism hoto-
eUsr Developed, for marking or printing inteIli.
gibie characters, signs or letters, at any dis
tances; being n new application Of that pow
er, of which claim to be the first inventor or
dscoverer'
This claim, taken in connection with his
disclaimers, may be thus stated 4" make nc
pretence to the discovery of the motive power
of electro magnetism: | was by no means the
first TO demonstrate the applicability of that
power to the production of any mechanical re.
suits which its force is adequate to but have
invented one set Of machinery, and described
one process for the application of that power
to marking, by means Of an electro-magnet
dots and lines, with spaces between; have
affixed certain conventional Specifications to
these dots and lines whereby they can be made
available as representatives of letters or words
have specified the machinery and process by
which have accomplished this and now |
claim the exclusive right to the use Of this pow
err, however developed, whether by means Of
an electrO-magnet, or without any electro mag
net, for marking, by whatever machinery or
whatever process symbolic representatives of
letters and words or for plain letters them
selves. No machine can be made, no process
can be devised, by which letters are printed,
or marks made, by tho motive power of the
electric current for telegrsphic purposes
however distinct the machine or process from
mine-without infringing my rights" This is
the eighth claim. And yet Morse invented no
near art discovered no nsw principle, and the
body of the patent is expressly confined 10 an
improvement" on previously invented electric
Can these claims be sustained
One fundamental rule applicable to this ques.
ton is, that'every patentee must be confined to
the method, process, machine, or manufacture
which he has described in his specification
He can claim nothing which he has not de-
scrbed That which cannot be described can
not be patented
Another fundamental rule is, that there can
be no patent for an effect only, or for an art in
the abstract, or for principle. Theories are
not patentable.
Let me consider the second proposition first /:
Without doubt an art can be patented The
statute says SO expressly Bat what sort of an
lrtl Reason tells us, and the book tells us it
must be an art reduced to practice and en-
bodied in a recognizable forms Abstract
art is theoretical skill Art in practice is skill
applied in material forms, or by mechanical
means, in conformity with theory It is pro-
,ess, method a system. use these words
As equivalents. When our statute declared an
lrt patentable it introduced no new law
Whatever can be patented in the United States
IS an art, can be patented in England as
,rOcess But in neither country can there be
patent for any other than devised, specifi-
ID, and embodied art or process There can
,e no patent for an art generally, in all its
branches, to one who has shown but single
node of exercising it, That would be q patent
or an art in the abstract.
For eTGmpIe-the first inventor of the pro-
Tess or art for measuring gas 10y the meter,
Gould not have patent for the art of measur-
ng gas generally, because he had devised and
shown one mode of doing it.
Nor, could the inventor of the art or process
Of planning boards by machinery obtain valid
patent for that art generally but only for his
specified method of doing so.
In both cases however, the patentee of the
process is entitled to the benefit of the princi-
pie, or spirit, or character, of his invention No
person, adopting mere variations in detail, but
using the substance of the invention, could be
protected against the penalties for infringe
ment. But the patent must be for the specif-
ed and described method or process. Two of the
learned counsel for the appellees, Messrs. Hard
ing and Campbell, say in their brief, p. 8 {" II
Morse was the first to discover that the power
OF electro magnetism could be used for the
purpose of recording telegraph,e SIGNS, and de
used one practical mode for using it, he may, by
II general claim secure TO himself the right Of
so applying al, as well az the particular device
by which he did So" This is not in accord
ahce with the view of the other counsel for tn,
appellees, Mr.. Clifford who argued that Morse
claims, rightly construed, were for process I,
be exercised by particular means and in par
ticular manner. IL will be observed moreover
that even Messrs. Campbell and Harding do
not, in their formal printed proposition, CLAIM
the exclusive use Of electro magnetism to no
cord letters The reason for their avoiding +,
make this claim in the above proposition is
that they could not assert that Morse haC
q" devised one practical mode of obtaining tina
result
All the considered cases, all the reliable au
thorities, seem to me, when fairly Analysed, Il
support the positions maintain.
Even if one who has been engaged in invest
igations into the principles of science or thu
laws Of nature and has discovered an element
airy principle, could monopolize the application
of (which deny,) by showing one practica
mode of embodying such principle, the ques
ton arises what principle has Mr.. Morse dis
covered 1t occurred to him that the motor
which previous discoveries and inventors haC
been able to produce by means of electro. ma &
netism might be made to mark dots and hori
zontal lines A simple contrivance suficed 70
this, Could he thereupon take out paten
for the general idea, NO "a to include all sort
Of contrvancos for marking and all kinds q
marks which could be understood as represent
ativcs Of letters Certainly not. And a fort,
orr he could not by his claim cover contriyan
oes for printing letters themselves
] now beg the attention Of the court to tn
first and fundamental proposition alrcad,
stated, especially as bearing on the eighth 0
these claims. IL is in substance this:
Where a patent claims AN EFFECT WHICH
CANNOT BE PRODUCED by the iaUention as de
eribed IN The specification, ii is poid.
ask particular attention of the court to tn,
case OF iston vs.. Greapes cited in note, WEB
Pat. Cases AZ, anu reported in full, 3 Car !
Pa, Gil. In that case the patent was for
It machine for sharpening knives, scissors, an.
ra1ors" The method OF machine described IL
the specification was found to be applicable e
knives only, and tho patent was adjudged void
This case IL directly and completely in point