LIBRARY    I5 \         DECISION
1%TOF
HON. PHILIP F, THOMAS,~
COMMISSIONER OF PATENTS,
ON THE
APPLICATION OF SAMUEL F. B. MORSE,
FOR AN EXTENSION OF HIS PATENT FOR A NEW AND USEFUL
IMPROVEMENT IN
ELECTRO-MAGNETIC TELEGRAPHS.
PATENTED APRIL 11, 1846. -PATENT EXTENDED FOR SEVEN YEARS 
FROM THE 11TH DAY OF APRIL, 1860.
1,
WASHINGTON:
HEENRY POLKINHORN, PRINTER.
1860.








DECISION
OF
HON, PHILIP  AF, THOMAS,
COMMISSIONER OF PATENTS,
ON THE
APPLICATION OF SAMUEL F. B. MORSE,
FOR AN EXTENSION OF H-IIS PATENT FOR A NEW AND USEFUL
IM~PROVEM{ENT IN
ELECTRO-3MAGNETIC TELEGRATIIS.
PATENTED APRIL 11, 1846, - PATENT EXTENDED FOR SEVEN YEARS
FROM THE 11TH DAY OF APRIL, 1860.
WASHINGTON:
HENRY POLKINHORN, PRINTER.








U. S. Patent Office, April 10, 1860.
IN THE MATTER OF THE APPLICATION OF SAMUEL
F. B. MORSE FOR AN EXTENSION OF LETTERS
PATENT GRANTED TO HIM ON THE 11TH OF APRIL,
1846, AND RE-ISSUED QN THE 13TH OF JUNE, 1848, FOR
A NEW AND USEFUL IMPROVEMENT IN ELECTROMAGNETIC TELEGRAPHS.
In this case, the utility of the invention, its value and
importance to the public, and the diligence employed in
introducing it into general use, are not denied by the parties
who oppose the grant of the extension.
It is, however, insisted that the prayer of the petitioner
ought not to be granted, for two reasons: first, because the
invention was not novel and patentable when the patent was
issued; secondly, because, if the patentee was really the first
and original inventor of the improvement covered by the
patent, he has already received a reasonable remuneration
for the time, ingenuity, and expense bestowed upon it, and
upon its introduction into use.
Although the validity of the patent granted to Professor
Morse in the year 1840, for an electro-magnetic telegraph, is
not now a legitimate question for the consideration of this
Office, the intimate relations subsisting between the two
inventions, as well as the range which the argument on both
sides of this application has been allowed to take, seem to
render a reference to the character and scope of that patent
indispensable to an intelligent discussion and understanding
of the nature and extent of the claims included in, and protected by, the grant now sought to be extended.




4
Morse's invention, as described and claimed in the re-issue,
dated June 13, 1848, of the patent of June'20, 1840, consisted in the application of galvanic electricity to telegraphic
purposes, by a combination of electric wirrents and machinery. Its details embraced: first, a galvanic battery, a galvanic circuit, a type rule, and signal lever, combined with
an electro-magnet, by means of which, the motive power of
a current of electricity was developed and applied to give
motion to other machinery, for the purpose of registering
permanent characters at any distance; second, a register,
consisting of a pen lever, with a marking device at one extremity, and an armature, to be acted on by an electro-magnet at the other, in combination with a roller, operated by a
clock movement, over which a continuous ribbon of paper
was drawn, receiving, in its passage under the pen lever, the
message, in permanent dots and lines, with spaces between
them.
The claim, under this re-issue, embraced several of the
mechanical devices employed, together with combinations of
two or more galvanic circuits, with independent batteries.
At the period when Morse was engaged in his efforts to
make and perfect his invention, the opinion was prevalent
among men of science, whose attention had been attracted to
the subject, that the electric current could not be transmitted
through a circuit of any considerable distance, with sufficient
force to imprint intelligible signs or characters at its terminus. Hence, was suggested the idea of a combination of two
or more shorter circuits, each having its own battery, coupled
together and forming links or relays in the main line, for the
purpose, by means of breaking and closing the successive
circuits, of renewing the galvanic impulse, and propelling
forward the electric current, with sufficient power to work a
register at the end of the line, and at an indefinite distance
from the initial point, and, thereby, to transmit and record
messages. This combination of circuits was the main feature
i  Aoorse's first invention, and, with the mechanism above re



ferred to, the alphabet, and other less important devices,
formed the subject-matter of his patent of the 20th of June,
1840, re-issued on the 13th of January, 1846; again re-issued
on the 13th of June, 1848, and extended for the term of
seven years from  the 20th of June, 1854, the date of its
expiration.
The title of Professor Morse to be considered and treated
as the first and original inventor of the arrangements and
devices protected by this patent, is not, now, an open question.
On four several occasions, his specifications and claims
have been submitted to the scrutiny of this Office, and whatever of merit attaches to the invention, has been, as often,
awarded to him. The same patent, with like results, has
passed the ordeal of the federal courts in Massachusetts,
Pennsylvania, and Kentucky; and its validity, with the exception of the eighth clause of the claim, which was very
broad, has been vindicated by the solemn judgment of the
Supreme Court of the United States. It is, therefore, no
longer within the control of'the Patent Office. But, still, it
forms the basis of important. improvements, made by the
same inventor, in the telegraphic art; for, notwithstanding
the novelty and utility of that invention, it was, in its practical operations, very far from attaining the degree of excellence to which subsequent improvements have brought it.
In its practical results, two very marked defects were apparent, which, in point both of convenience and economy, rendered it extremely inefficient.
In the first place, the receiving magnet would work only
in one direction, and, therefore, although messages might be
sent from the initial point, they could not be returned from
the opposite end of the line, over the same wire. Between
the termini of the main line, despatches could not be interchanged. Under such circumstances, two distinct and independent metallic circuits, each requiring to be kept constantly
in working order, were indispensable to its successful opera



6
tion. Then, again, communication could only be had through
the relay circuits, with the terminal points of the line, there
being no provision for the delivery of despatches at intermediate or lateral stations, without interruption to the main
line, except through the agency, also, of separate and independent circuits.
The invention patented on the 11th of April, 1846, reissued on the 13th of June, 1848, and now sought to be extended, was designed to obviate and remove these defects.
Experiments made by Professor Morse subsequently to the
date of the patent of 1840, demonstrated that the theory on
which the invention of the combined or relay circuits was
founded, was erroneous; that magnetic power sufficient to
move a pen lever, could be obtained from the electric current on a circuit of indefinite length, and that there was
no necessity for combining two or more circuits, for the
purpose of renewing the impulse, at short intervals, on the
main line. In the new invention, therefore, the combined
circuits, with the relay magnets, were abandoned, and, in
their stead, was substituted a single wire, capable of being
worked both ways, connected by receiving magnets with
short lateral or office circuits, upon which the requisite registers were placed. Thus, the chief defects in the first invention were effectually removed. Messages could be transmitted on a single wire, in both directions, between the termini
of the line, and simultaneously delivered, through the lateral
circuits, at way stations, without interruption to the main
or local lines, and without impairing, for a moment, the efficiency of either.
The invention now under consideration, may be said to
involve the employment of two or more single circuits, consecutively arranged, each having a battery and receiving
magnet, or their equivalents, and the combination of one
main single circuit, and.any number of receiving magnets,
each receiving magnet closing and breaking an independent
circuit, which forms no part of the main line; nor is the




7
main line influenced in its action by the derangement of any
one, or all, of the local or secondary circuits. Thus, the
main single circuit is made to connect with one, or any number of receiving magnets, and bring into action its local battery, to operate the armature of the pen lever, and permanently record the message on paper. It may, therefore, be
proper to regard the leading claim in this invention, as consisting in the combination of a main circuit with a receiving
magnet and a local battery, at any number of stations between the termini of the main circuits, where the local battery is arranged to operate the mechanism employed in re.
cording the message. Morse's own description of the invention, furnished in his testimony in the suit of French vs.
Rogers, made, by consent of parties, evidence in this case,
will, perhaps, convey to the mind of the superficial reader, a
more intelligible idea of its character than can be elsewhere
found. It is as follows:
"In its present practical form, it consists of the following'parts: a main, or long circuit of wire, which is extended'between any two or more distant places, and through which'main circuit the electric current from any battery or generator'of electricity is made to act at pleasure, through two helices'around two cores of soft iron, making an electro-magnet,'which, attracting an armature attached to a lever or its'equivalent, produces motion in such lever or its equivalent,'either to act directly in marking upon paper or other suit-'able material, at practicable distances, or, indirectly, by'tottching off, so to speak, a second or short circuit, and as'many local circuits along the line as may be desired, each'containing a battery, which imparts power sufficient to ac-'complish the great result, to wit: to mark or imprint char-'acters at a distance, and to do this at as many places along'the line, at the same time, as may be desired. The resist-'ance to be overcome, is the slight vis inertiw of a delicate'armature upon a balanced lever and a delicate spring. The'lever breaks and closes by the power thus exerted by the'secondary or short circuit. The short circuit operates di-'rectly upon the register, which is an instrument of clock-'work for carrying paper, so that the paper, while in motion,




8'is marked on by a pen or stile in contact with it, and thus'forming on it, the dqts and lines specially and peculiarly'adapted and applied to the purpose."
Such is the invention, the patent for which, this Office is
now asked to extend for an additional term of seven years.
It will be perceived that the main claim under this patent
consists of a combination of devices, all of which were old;
some of them, originating with Morse himself; some, due to
the ingenuity of other inventors; but, all well known and in
use prior to the grant of the patent of 1846.
In this state of the case, it is objected, on the part of the
remonstrants, that the arrangement of the local circuit and
local magnet was included in Morse's patent of 1840, and
that, inasmuch as a second patent for the same invention cannot lawfully issue, either to the same grantee or to any other
party, the patent of 1846 is a nullity, and ought not, therefore, to be extended.
It is a well established and, certainly, at this day, an admitted principle of patent law, that a combination of old devices producing new and useful results, is patentable.
In Ryan vs. Goodwin, 3d Sumner's Reports, 514, 518, a
case in which the patent claimed, as the invention, a new and
useful improvement in making friction matches, Justice
Story remarked: " It is certainly not necessary that every in-'gredient, or, indeed, that any one ingredient used by the'patentee in his invention, should be new or unused before'for the purpose of making matches. T'he true question is,
whether the combination of materials by the patentee is,'substantially, new. Each of these ingredients may have'been in the most extensive and common use, and some of'them may have been used for matches, or combined with'other materials for other purposes. But if they have never'been combined together in the manner stated in the patent,'but the combination is new, then, I take it, the invention of'the combination is patentable."




9
The same doctrine has been adopted and repeatedly asserted in the practice of this Office.
In Ex parte Whittlesey, vol. 1, page 23, Commissioner's
Decisions, the Commissioner said: "I fully assent to the'proposition that a combination of old devices is patentable'when a new and useful result is thereby'attained, but, in'such cases,, something more than the mere assembling'together of the several devices and placing them in juxta-' position is requisite. They must be made to act in concert,' in order to produce a result by their united action."
Again, in Wycoff's case, vol. 1, page 69, Commissioner's
Decisions, it is said: " It is no objection to a patent for a'new combination, that all the devices are old, or are the' subject of other patents. And it matters not that the devices'have before been grouped into minor combinations, and' patented as such. In such cases, the new patentee cannot'use the devices or combinations previously patented, with-'out an arrangement with the several patentees of those
parts of his machine. But, as against all others, except the'patentees, his rights are complete."
And, again, in Denning's case, ibid, 128, "The applicant'only claims a combination of devices, and whether they'are new or old is wholly unimportant."
The current of decisions in the English courts runs in the
same direction. In iuddart vs. Grimshaw,. Webster's Patent
Cases, 86, Lord Ellenborough remarked: "There are common'elenientary materials to work with in machinery, but it is' the adaptation of these materials to any particular: purpbse'that constitutes, the invention; and if the application of' them be new, if the combination in its nature be essentially'new, if it be productive of a new end, and beneficial to' the public, it is that species of invention which, protected'by the King's patent, ought to continue to the person the'sole right- of vending."
The Supreme Court of the United States has, on several
occasions, recqgnized the same doctrine as sound law, and




10
in the case of O'Reilly et al. vs. Morse et al., 15th Howard,
where the validity of this very patent was considered and
decided, the Chief Justice, in delivering the opinion of the
Court, said, in regard to the combination: "The elements'which compose it may all have been used in the former'invention; but it is evident that their arrangement and com-'bination must be different to produce this new effect."
And, hence, the patent was adjudged to be valid.
Assuming, then, the result or effect produced by the combination in question to have been novel and useful, at the
date of its first invention, a proposition which is not denied,
the sole inquiry to which this office is limited, is, not whether
the several elements composing it are old or new; not whether
Morse was or was not the original inventor of all or any of
them; nor whether, separately considered, they or either of
them were included in his invention of 1840, or in that of
any other inventor; but whether the same or equivalent
devices, producing the same or like results, are to be found,
in combination, in the patent of 1840, or in any other patent,
or in any printed publication, or in public use prior to the
invention covered by the patent of 1846.
The most reliable, and, indeed, the only test'of the extent
and scope of a patented invention, is the record of the patent
itself, including, of course, the model, drawings, specifications, and claims. The record of the patent of 1840 has
been already resorted to for the purpose of ascertaining, so
Tar as relates to the subject of the present inquiry, the nature
and character of the particular devices therein contained,
and the results intended to be accomplished by them, or
which, together, they were capable of producing, and from
the description of them, hereinbefore given, it may be confidently asserted that nowhere in all that record can there be
discovered a device, or combination of devices, by means of
which the electric current; as it passes on the main line, and,
without interruption in its course, is made to break and close
local or lateral and independent circuits, whereby messages




are recorded simultaneously at the end of the line, and at any
number of local offices, at intermediate stations, or transmitted to any distance in a lateral direction. So far from this
being the case,.as has beeh already shown, the chief embarrassment experienced in.operating the telegraph under
Morse's first system consisted in its utter inability to record
despatches at way' stations without arresting the passage of
the current on the main line, and, thereby, suspending all
communication with its terminus; and the only means of
obviating this difficulty, known at the date of the first patent,
was the establishment of independent lines between the initial
and lateral points. True, the local circuit at the end of the
line, so regulated in its length as to cause the message to be
effectually recorded, was included in the first invention, but
it differed in nothing from the relay circuits in the same
invention, save in its connection with the mechanism designed to operate the register. It is equally true, that the
local circuit; with- some of the recording devices, and other
and different elements, has been, in the last combination,
transferred to the margin of the line, to effect a novel and
important result, but it is also true, that without an entire
re-arrangement of some, and a change in other of its parts,
its functions, in the new connection, could not have bee;n performed, nor could the results intendedl by its transfer have
been attained.
The objection, then, on this ground, cannot be maintained,
for it ls absolutely certain that the record of the patent of
1840 discloses no such combination as that specified and
described in the patent of 1846.
But, it is contended, that if the combination of the local
circuit and local magnet was not included in the record of
the first patent, it was, in fact, invented and perfected by
Morse in the winter of 1837-8, and, being an essential feature of his telegraphic invention of that year, subsequently
patented in 1840, it was incumbent on him, under the law,
to have described and claimed it in the specifications of that




12
patent; that, failing to do so, the invention could not be
protected by a separate grant, and that the patent of 1846
is, therefore, void, and ought not to be extended.
If this objection be well founded, it may be considered
fatal to the validity, not only of the patent now under consideration, but, also, of that granted in 1840.
The patent laws of the United States, enacted, pursuant
to the provisions of the Constitution, to promote the prxogress
of the useful arts, secure to the originator of a new andi useful
invention, as a reward and encouragement for the exercise
of his ingenuity, " the full and exclusive right and liberty of
making, using, and vending to others to be used," for-: a limited period, the product of his genius and skill. This monopoly is expressly limited to a term of fourteen years, and
at the end of that time, the invention becomes the property
of the public and enures to its use. To protect the patentee
in its exclusive enjoyment during the term of the monopoly,
and at its expiration to insure to the public its beneficial use,
the statute provides, that before the patent is issued, the
inventor " shall deliver a written description of his invention' or discovery, and of the manner and process of making, con-'structing, using, and compounding the same, in such full,'clea', and exact terms, avoiding unnecessary prolixity, as'to enable any person skilled' in the art or science to: which'it appertains, or with which it is most nearly connected, to' make, construct, compound, and use the same; and in case'of any machine, he shall fully explain the principle, and the' several modes in which he has contemplated the application'of that principle or character by which it may be distin-'guished from other inventions."  Another provision of, the
statute makes the patent void, if the specification "does not
contain the whole truth relative to his invention," provided,'the- concealment is for the purpose of deceiving the public."
It follows, therefore, and such is the construction given to
the statute, that, the patentee is bound to describe,: in his
specification, fully and explicitly, the whole of his invention




13
and its several parts, including every circumstance conducing
to its advantageous use, with such accuracy as will prevent
infringements during the term of the monopoly, and, at its
close, enable the public, by the aid of skilful mechanics and
competent workmen, without further invention, to put it into
practice, and avail of its use.
"You know the object of the specification," says Tindal,
C. J., in Neil vs. Harford, cited in Coryton on Patents, 42:
"' it is the price which the party who obtains the patent pays
for it."
In Bovill vs. Moore, Dav. Pat. Ca. 400, the law on this
point is clearly stated by Gibbs, C. J.  "A  patentee," says
he, "who has invented a machine useful to the public, and'can construct it in one way more extensive in its benefits'than in another, and states in his specification only that'mode which would be least beneficial, reserving to himself'the more beneficial mode of practising it; although he will
d so far have answered the patent as to describe in his specifi-'cation a machine to which the patent extends, yet he will'not have satisfied the law by communicating to the public'the most beneficial mode he was then possessed of for exer-'cising the privilege granted to him."  A  wilful failure,
therefore, to set forth and describe in the specification the
whole of the invention as known and understood by the
patentee, or a reservation of any essential part of it, or a
concealment of the most beneficial way of constructing it,
operates a fraud upon the public, and vitiates the patent.
Nor can a valid patent be subsequently granted for that part
of the invention which the patentee has concealed and failed
to describe and claim in his specification, for that would
enable him to take advantage of his own fraud, and, virtually,
to secure a monopoly of twenty-eight, instead of fourteen
years, for one invention.
If, then, the allegation of the remonstrants is true, it is
clear that both of Morse's patents are void, and that the
extension now sought cannot be granted. In support of the




14
objection thus made, the testimony of Professor Leonard D.
Gale, a witness produced on the part of the applicant, so
far as it pertains to th6 present question, is cited and relied
upon. Professor Gale is one of the counsel representing
Morse in the pending application. He is, and has been, his
intimate, bosom friend: during a long period, while Morse
was engaged in experiments with a view to perfect his invention, he was his confidential assistant and adviser, and, for
his services, was rewarded by an assignment of a considerable
interest in the first patent. He, then, of all other men, excepting Morse himself, is supposed to have best understood
and known the extent and scope of the invention patented
in 1840; and, while it is asserted that his testimony is in
conflict with sworn statements previously made by him in
several suits at law and in equity involving the validity of
these very patents, and the alleged discrepancy has, therefore, been visited with the most unsparing criticism, it is,
nevertheless, confidently relied on as conclusive proof that
the combination of the local circuit and local magnet was
invented prior to the date of the patent of 1840.
That no further misconception as to the meaning of Professor Gale may exist, I shall quote his testimony as it was
delivered from his own lips.
To the thirteenth interrogatory in:chief, to-wit: "Do
you know the date of the invention, by Morse, of local
circuits?" he answers: " Mr, Morse first explained to me'tnhe use of the local circuit in the winter of 1837-8, in'answer to questions which I had put to him previously'concerning telegraphing through long lines." To the fourteenth interrogatory, to-wit: "Did he make himself completely understood to you at that time?" he answers: " He
did."  To the fifteenth interrogatory, to-wit: "From what
he then said, could you then have constructed and used the
local circuit as it is now used?" he answers: "I think I
could; but no apparatus for that purpose had been made at
that time."  To the sixteenth interrogatory, to-wit: "Did




15
he make any drawings to show the manner of constructing
the local circuit?" he answers: "He did make a drawing,'and also showed, by an arrangement of a link of iron and' some wire, how he could arrange the local circuit in con.'nection with the general circuit."
Such is the evidence relied upon by the remonstrants to
establish the allegation that the invention of the combination
of devices now in question was made as early as the winter
of 1837-8, and formed a part and parcel of the system of
telegraphing originally patented by Professor Morse.
Standing alone, and unqualified by its own express limita.
tions, by other portions of the same deposition, and by the
well known state of the invention at the date referred to, the
testimony of Professor Gale is, perhaps, liable to some measure of misconception; but when these means of explanation
are invoked in aid of its interpretation, it becomes manifest
that the evidence of this witness has been perverted by an
artful 6onfusion of terms, and that it does not establish, nor
was it intended to establish, the proposition for which the
remonstrants contend. That the idea of the local circuit, as
now used, is embraced in the principle of the combined or
relay circuits, of Morse's first invention, may well be conceded;
for, of that fact, I think there is but little doubt. But what
was then understood by the term "local circuit," was a terminal circuit placed at the end of the line, constructed in the same
manner, and holding the same relations to the successive
links in the main line that they, consecutively, held to each
other. The character and purpose of the magnet, the functions of the battery, the position of the register, were the
same in both, and the only perceptible difference between
them was in their relative length, the terminal being somewhat shorter than the relay circuit, in order that greater
power might be imparted to the electric current for the purpose of working the register and recording the message at
the end of the line. In this consisted the sole difference
between them, and, as was well remarked in the argument,




16
by one of the learned counsel, beyond this there was no
invention; it was only experimental adaptation. The terminal circuit of the first patent was, and still is, with improved
arrangements, known as the "local circuit."
Now, in the patent of 1846, the principle of the terminal
circuit, with a modification and re-arrangement of the mechanism employed, has been applied to the lateral or office circuits.
The terminal circuit, made much shorter than before, and
otherwise improved, while still employed at the end of the
line, has been also located on the margin of the main circuit;
the register has been removed from the main line to the
termination of the short lateral or local circuit; the battery,
which, under the old system, performed the double duty of
working the register and breaking and closing the next succeeding circuit in the main line, is used to break and close
the short, independent office circuit which works the register,
while the relay magnet, which originally effected the combination of the circuits, has been substituted by the receiving
magnet, which now connects the main and lateral or office
circuits. This office or lateral circuit, thus arranged, is likewise known as the local circuit. It will thus be readily
perceived how little of ingenuity is required to pervert, by
confounding terms, the meaning of the most honest and
truthful witness, when deposing in reference to the local
circuit.
It will be remarked that the thirteenth interrogatory
makes no distinction between these local circuits, nor does
it designate to which of them  it refers. It is general and
undefined, and asks the witness for the date of the invention
by Morse of " local circuits."
When Professor Gale comes to respond, he takes care so
to answer as to qualify his meaning; and in stating that
Morse first explained to him the use of the local circuit in
the winter of 1837-8, he adds, that it was in answer to questions which he had put to him previously concerning telegraphing through long lines. This qualification is, of itself,




17
sufficient to fix the character of the local circuit to which the
witness referred, for it is hardly to be. presumed that it would
have been deemed necessary to elucidate the use of the local
circuit in telegraphing through long lines, by explaining the
arrangement for dropping messages at stations on the way.
But Professor Gale does not stop here. As if apprehensive
of misconception, and determined not to be misunderstood,
he seizes the opportunity afforded by Mr. Eddy's first crossinterrogatory, to remove all doubt as to which of the two
local circuits he meant to speak.
That cross-qupstion was adroitly put, and well calculated
to entrap the witness. It is as follows: "You say you have
known the use of the combination of two circuits for twentytwo years, or since 1838; can it be new, April 11, 1846?"
He answers, "I stated that Mr. Morse explained to me in the
winter of 1837-8 the use of the local circuit; I should have
said, in addition, as as adapted to long lines."  This answer
clearly settles the difficulty, and removes all doubt as to
which of the two. local circuits the witness intended to testify. The combination and arrangement.of the local circuits
of the patent of 1846, had no reference whatever to the length
of the line. The purpose of that combination was to deliver
messages at way stations n' the line. The number of these
stations was determined solely by considerations of public
convenience and business necessity, and whether the line was
short or long, in no sense, affected its adaptation and arrangement.' But, as. has,. been already shown, the length of the
line did materially affect the arrangement of the combined
circuits of the patent of 1840, and particularly the terminal
local circuit; for upon that arrangement depended the transmission of the electric current, and the power thereby imparted to it, in aid of its action upon the register. Again,
in answer to a question, upon his re-direct examination, put
by Charles Mason, Esquire, as follows: " You stated yester-'day that it was in the winter of 1837-8, that Morse first'explained to you this combination of the local and general
2




18'circuits; will you state whether there is any circumstance'which enables you to fix that particular date,- and, if so,'what?" after fixing the date by the time- when instruments
were being made for the purpose of exhibiting the invention
to Congress, he says "it was during the making of those
instruments that Morse explained to mile how he would be
able to carry messages through long lines."
All, then, that Morse ever explained to this witness in the
winter of 1837-8, in regard to the local circuit, was "concerning telegraphing through long lines;" "as adapted to long
lines;" "how he would be able to carry messages through long
lines;" and as it has been already shown that the combination and arrangement of the local circuits of the patent of
1846, had no reference whatever to the length of'the line,
but that the combined circuits, including the local circuit of
the patent of 1840, were expressly and only arranged for
the purpose of transmitting messages through long lines, the
irresistible conclusion is, that the' testimony of Professor
Gale referred to the latter, and not to the former combination.
But, assuming that this witness did mean to swear that
Morse described to him, in the winter of 1837-8, the- use of
the local circuit of the patent of 1846, still his evidence is
wholly insufficient to establish the -invention at that period
or at any other time before the patent of 1840 was issued.
To constitute invention, in the sense of the patent laws,
the thing discovered must be perfected, and embodied in a
distinct form, and carried into practical operation. Mere
theory, or speculation, or experiment, never put into actual
operation or tested by experience, does not amount to patentable invention. Tested by this well-settled rule of law,
what, according to the evidence of Professor Gale, was the
condition of the alleged invention of the local circuit at the
period at which it is attempted to fix it?  In answer to one
of the interrogatories propounded to him, he says, that Morse,
in his explanation of the use of the local circuit, made himself completely understood by him. In reply to another, he




19
states that Morse made a drawing, and also showed, by an
arrangement of a link of iron and some wire, how he could
arrange the local.circuit, in combination with the general
circuit; but, when interrogated as to whether, -from  what
Morse at that time said to him, he could then have con.
structed and used the local circuit in the way it -is now used,
he answers, doubtingly, " I think I could;" and then, positively, " but no apparatus for that purpose had been made at
that. time."  And this is the entire evidence cited by the
remonstrants to establish their allegation that the local circuit.of the patent of 1846'was, in fact, invented as early as the
winter of 1837:8.
That such a discovery as the witness has described, having
no existence save-in, the mind, or in the verbal explanations
-of its pretended creator,- which was never seen, but in rough.drawings, or in the crude form of a link of iron and some
wire, —. without body or shape,-...with no apparatus constructed
to test its capacity for practical use,  which the witness who
testifies of it, never saw in operation, and from the description given of it only thinks, but does not know, that he could
have constructed, is not an invention within the letter or
spirit of the patent laws, nor entitled to the protection of
letters patent, can scarcely be considered worthy of grave
argument for the, purpose of demonstration. And if Professor Gale really intended to prove that the combination of
devices constituting the main claim of the patent of 1846,
was invented by Morse in the winter of 1837-8, his testimony,
squared by the law, as it has. been above stated, is, in my
judgment, wholly insufficient for the purpose, and fails utterly
to establish the fact, Fortunately, however, this office is not
left to depend upon the testimony, alone, of Professor Gale
for the solution of the question involved in the objection
now under consideration. As before stated, Morse's deposition in the suit of Frejnch vs. Rogers has been made, by consent, evidence in this case. As a witness, he is unimpeached




20
and unimpeachable, and is, therefore, entitled to full credit.
He fixes the date of the invention, beyond all question.
In answer to the, twelfth cross-interrogatory on the part of
the complainant, he says: "The phrase local circuit refers'rather to the relative arrangement of circuits than to a cir-'cuit having, in' itself, special distinctive peculiarities. If by'the question is sought the date of my invention of breaking'and closing one circuit by another, I answer, in 1836. I'exhibited the same in operation in: the spring of 1837. If'by the question is sought the date of my invention of a short'circuit to be used at the extremities.of the line, I answer, in'May, 1844. If by the question is. sought the date of my'invention of a still greater improvement; to-wit, that of'placing short circuits on the margin (so to speak) of the'main line, all of them  to be operated simultaneously, I'answer, that the idea of such. improvement first presented' itself to my  indind inthe beginning of the.year 1844."  He
further states, that the short- circuit at the extremities of the
line was first used in May, 1844, and, the lateral circuits, in
1846, on the line between Philadelphia and Baltimore.
Thus, in my opinion, is effectually put to rest the objection
to the validity of the patent of 1846, upon the ground that
the combination therein embraced was invented in the winter
of.1887-8.
But, it is further insisted, that if the combination of the
local circuit and local magnet in the patent: of 1846 was not
enibraced in the patent of 1840, and if that combination was
not invented by Morse as early as 1837-8, it is included in,
and covered by, the. English patents of Cook and. Wheatstone and of Edward Davy, enrolled, respectively, December
12th, 1837, and January- 4th, 1839, and, since both of these
patents have priority over the patent of 1846, the latter is
void, and ought not to be extended. A brief reference to
the specifications and claims of these patents, so far as they
relate to the subject, will suffice to dispose of this objection.
From these, it may be gathered that the invention of Cook




21
and Wheatstone embraces a system for giving signals, and
sounding alarms in distant places, by means of electric currents, transmitted through metallic circuits. The system- is
made up of many details, which constitute parts of the improvement patented; among which are, a transmitting station,
connected by continuous wires with a receiving station, which
may be one of a series extending to the terminus, and there
connected with a galvanic battery, so as to propel a current
of electricity through the entire circuit.
This complete circuit requires two separate lines of insulated wire, and may use any number of batteries at a similar
number of stations, so long as all are connected with the
main line.' Thus, one wire is used for transmitting, and one
for returning the signal.
These signals constitute a telegraphic language or mode ot
communicating letters of the alphabet, and numerals, or
symbolic characters, produced by mechanism put into operation by the electric current from the transmitting station.
The current, thus created, gives the required signal through
a series of stations, or from the transmitting to the terminating points, or to any intermediate point, so long as there is
a battery at each station in the main line; and when the
current is insufficient to carry the signal between the termini
of the line, the batteries at the intermediate stations are relied
upon to supply an independent, though auxiliary, current,
for the purpose of renewing the impulse and, thereby, reaching the desired station. It is, I think, apparent, that the
invention of Cook and Wheatstone did not contemplate, at
all, the use of independent currents out of the main circuit,
but connected with it by a lateral current having its own
register, operated by a local battery. In this respect it'resembled Morse's first invention, as messages could not be
delivered by it, at way stations, without interruption to the
transit of the current on the main line. It had, to be sure,
its local circuit, placed, like Morse's, at the end of the line;
but its functions were wholly unlike those of the local circuit




22
of Morse's patent of 1840. Morse's local circuit was employed in recording the message. Cook and Wheatstone's
telegraph operated by the deflection of a needle, fixed, vertically, upon a horizontal axis in front of a dial, upon which
were engraved the letters of the alphabet. It made no permanent record, but communicated the message by evanescent
signs. As the movement of the needle was noiseless, producing no sound, it was indispensable to the practical' use
of this system that the operator at the receiving station,
should be notified when a message was about to be sent.
The local circuit of this patent was employed, solely, for the
purpose of giving such notice to the operator, being so
arranged as to cause an alarm to be sounded by striking a
bell when the battery was brought into'action. From the
above description of Cook and Wheatstone's invention, I'think it manifest that it did not embrace the combination of
Morse's patent of 1846.
Davy's patent involved the printing of the message or signal
on a chemically prepared fabric; the mechanism for which
was put into operation by an electric current at the transmitting station, by which an electro-magnet was operated by
a local battery and magnets at the receiving station, one or
more, at pleasure, consisting of coils of wire surrounding
vibrating magnetic needles. When these coils were charged
by the current of the battery at the transmitting station, or
the battery of the main route, the needles were deflected by
the action of the coils; and, coming into contact with the
wires of the local battery, charged the electro-magnet, and
operated an escapement through the armature of the electromagnet.
The signs or marks upon the paper at the receiving station, were made by the current of the local battery when
caused to act by the current of the main circuit. This very
complex system required three wires, of which two formed
the main circuit, in which the current was broken and closed
at the transmitting station; and an independent battery, at




23
the receiving station, was, by a connection of its circuit with
the main circuit, brought into action to release a clock
movement or weight that rotated a cylinder covered with a
chemically prepared material, upon which the. message was
indicated by the contact of a series of electrical points.
Undoubtedly, in Davy's system, there was, a local circuit,
employed for recording, but it was placed at the extremity
of the line, as were the local circuits of Cook and Wheatstone's invention and of Morse's first patent. Davy's patent
does not refer to the employment of the local circuit except
at the. end of the line, and no provision, whatever, is even
alluded to, in his descriptions and claims, for lateral currents
out of, but connected with the main circuits. I have thus
endeavored to review and consider, in its turn, every objection, at all pertinent to the subject, that has been urged
against the validity of the patent granted to Samuel F. B.
Morse on the 11th of April, 1846, and now sought to be extended; and I am.clearly of opinion that the combination of
devices.embraced therein, is not to be found in any patent,
or invention, or in any printed publication, or in public use,
prior to its date; but that Morse is the original and first inventor thereof, that the patent granted therefor was properly
issued, and is, therefore, valid and binding in law. In this
conclusion I am glad to find myself fortified by the judgment
of the Supreme Court of the United States in the case of
O'Reilly et al. vs. Morse et al., before cited, in which, although several of the objections, now considered, were not
raised, nor was the character of the invention as elaborately
reviewed as I have found it necessary to treat it, yet, with
the accustomed clearness of reasoning and force of argument
of the learned Chief'Justice, it was demonstrated and. decided
that the patent for. the local circuits was properly granted,
and valid.
The next subject to which the attention of this Office must
be directed, is that of remuneration.  Has Professor Morse




24
received a reasonable and proper remuneration for the time,
ingenuity, and expense bestowed upon his invention, and
upon its introduction into use.?  It is insisted by the remonstrants, that, if he is the original and first inventor of the improvement covered by the. patent, the remuneration received
by.him is ample and sufficient, and that, therefore, an extension for an additional term of seven years, ought not to be
granted.
In obedience to the requirements of the statute, the applicant has filed a detailed statement of his receipts and expenditures; but by reason of the fact that. many of the devices
and.:arrangements of the patent of 1840, were found to be indispensable to the successful working of the improvement
patented in 1846, the one being the basis of the other, the
two inventions have been united from the earliest period at
which Morse's system  of telegraphing was put into operation.
As no standard could be established, not purely arbitrary,
by' which their relative value might be ascertained, it has
proved impossible to adopt a rule for an apportionment of
receipts and expenditures between the two patents. Hence,
the joint receipts and expenses of the two inventions have
been blended in the account.  The statement is too much.in
detail- to admit of a repetition of its items, and I shall, therefore, content myself with a reference to the general results
under its different heads, as that is quite sufficient for the
purposes of the present inquiry. It is, however, proper here
to state, that the patent of 1840 was extended by this Office,
in 1854, for the term of seven years from its expiration, and,
in granting the extension, the then Commissioner thought it
his duty to charge the entire net profits of the two inventions against that patent. For this reason, the applicant has
so stated his account as to exhibit, separately, the income and
expenses up to, and since, the date of the extension.
The aggregate results are as follows:




25
Receiipts prior to extension of patent of 1840.
Stocks at present cash value.................. $154,795 00
Cash for patent rights......................  38,979 00
Cash for sales of stock.....                 24,200 00
Cash for dividends on stock................  47,090'T5
$265,064 75
Recei2ts since extension.
Stocks at eighty cents on par value.............. $35666 68
Cash for patent rights.................... 1i,177 56
Cash for dividends on stock................... 63,170 05
114,014 29
Total..........................  $379,079 04
Expenses prior to extension...            $139,130 38
Expenses since extension...............    21,139 17.
160,269 55
Total net receipts from both patents....$218,809 49
It will be observed, that the stocks accounted for in the
above statement, and received prior to the extension of the
patent of 1840, are rated at their market value at the time
this application was filed.  This, the counsel of Morse contend, is erroneous, and they insist that the patent is chargeable only with their actual cash value at the time of their
transfer.  The evidence in the case clearly shows that these
stocks were accepted by Morse as the price or consideration
of-an absolute and unconditional sale of so much of his interest in the invention as was then assigned, and that they were,
atthat time, worth but fifteen dollars on each share of one
hundred dollars.
The applicant for an extension. is required to furnish a
statement in writing, under oath, of his receipts and expenditures, sufficiently in detail to exhibit a true and faithful account of profit and loss in any manner accruing to him from,
and by reason of the invention.




26
It is the profit and loss accruing from the invention, and
from no other source, for which the patentee is held to account. Now, had these.stocks been converted into cash, at
the time of their transfer, and the proceeds invested in the
purchase of other property, neither an increase nor a decrease
in its value, while in the hands of the patentee, resulting, in
the one case, from his own management and thrift, or from
a fortunate turn in the market, and in the other, from causes
of an opposite character, would have constituted a legitimate
charge of profit or loss in the statement of receipts and expenditures; for, in neither event, would the effect produced
have accrued, in any manner, from the invention. If this
view be correct, as I think it is, then no sufficient reason can
be discovered why the appreciation, from similar causes, of
the stocks themselves, if retained by the patentee, should be
considered as the product of the invention, and treated as a
proper item of charge in the account of profits accruing
from the patent.
Such being the case, I am of opinion, that the sum which
the stocks would have realized, if converted into cash at the
time the sale of the patent right took place, is the amount at
which they should be estimated, when regarded as remuneration accruing from  the invention.  The applicant has
charged himself with the gross sum of $154,795.00, on account of these stocks, rating them at their present cash value,
and he has credited $68,845.00 of that amount, as paid to
Amos Kendall for his services as agent. Estimating their
value, when transferred to Morse, at fifteen dollars on each
share of one hundred dollars, he would be chargeable, in
round numbers, with $88,000.00, of which, $39,000.00 should
be credited as the proportion due to Kendall, and, on this
basis, the statement ought to be corrected.
Again, it is contended that the two charges for dividends
on stocks received before and since the extension of the first
patent, have been erroneously brought into the statement,
and that they should be stricken entirely from  it. These




27
dividends are the annual increment of the stocks accepted by
Morse as the consideration of the sale and assignment of his
interest in the patent, and, upon the principle that they are
to be treated as cash, at their market value when transferred,
it follows that the dividends declared upon them are no more
chargeable against the patent, nor to be considered as part of
the remuneration accruing from it, than if they were the income arising from other property purchased with the proceeds of the stocks.  The dividends, thus accounted for, are
not properly chargeable against the patent, and should be
stricken from the account.
Correcting the statement in these particulars, it would
stand as follows:
Stocks received before the extension............$88,000 00
Cash for rights........................ 38,979 00
Cash for sales of stock...................... 24,200 00
Stocks received since extension at eighty cents
of par......5................. 85,666 68
Cash for rights.............................. 15,177 56
$202,023 24
Cr.
Total expenses.............................$181,269 55
Less excess in value of stock paid to Kendall...  29,845 00
151,423 55
Net balance received by Morse..................... $50,599 69
It thus appears, that the net profit accruing from both inventions, is $50,599.69. It will be remembered that the entire net profit of the two inventions up to 1854, when the
first patent was extended, was  applied, by the then Commissioner, to the account of that patent. This was done upon
the assumption that the improvement embra.ced in the patent
of 1846 was of little or no vue.  Enough has been already
said to explain, fully, the character of the improvement which
that invention engrafted upon the telegraphic art, and to
demonstrate, beyond all question, that if, when considered




28
merely as the creation of inventive ingenuity, it may not be
entitled to take rank with the first invention, in its practical
effects, at least, it is possessed of equal, or perhaps, even of
superior merit. Estimating the two inventions as of equal
value, the net profit of $50,599.69 when divided between
them, will give, as the proportion'of each, $25,299.84. Is
this a reasonable remuneration for the time, ingenuity, and
expense bestowed upon the invention and its introduction
into use'? The aggregate value of the time, ingenuity, and
expense of an inventor, is the criterion by which, under the
law, this Office is to judge of the sufficiency of the remuneration received by him, in order to determine whether an extension of the'patent should or should not be granted. The
value of the time devoted to the discovery, perfection, and introduction into use of an invention, is readily reached by reference to the emolument accruing, or that might have accrued,
to the inventor from the ordinary pursuits of life for which
he may have fitted himself. Thus, the income of the professional man, the scholar, or the artizan, forms, generally, an
unerring standard of the worth of his services, when, diverted
from his professional calling, he undertakes to explore the
uncertain, devious, and intricate pathway of invention. The
expense incurred while the invention rests in experiment,
and up to its completion and introduction into use, is a mere
matter of account, ascertainable by any one of ordinary business capacity. But the worth of the ingenuity developed in
the discovery, stands' upon a different basis, and is determinable solely by the value and' importance to the public, of
the invention itself when completed and in operation. Although no criterion may,exist by means of which this value
can be, relatively, computed, there is, nevertheless, a standard in no sense arbitrary, by which it may be readily ascertained. That standard is found in the evidence of intelligent
witnesses, familiar with the invention and its effects, who
testify, among other things, as to the character and measure
of benefits derived from it, the increased conveniences and




29
business facilities it affords, the economy in time and money
consequent upon its introduction, and the augmentation of
the general wealth of the community flowing from its use.
In the present case, the value to the public of the invention in question, is established, as far as it is possible to estimate it in dollars and cents, by the testimony of witnesses
experienced in its operations, and capable of forming a correct judgment in regard to it. One of these witnesses, Mr.
Kendall, although he thinks the value of the telegraph can
hardly be estimated in figures, is of opinion, that, embracing
the two patents, it is not worth less to the public than six or
seven million of dollars, and that that amount should be divided
between them. He bases his opinion " upon the increased' expedition with which business can be done by, the busi-'ness communities, by its importance in the intercourse be-'tween members of families and friends, and, particularly, as'an instrument of the Government in the management of its'affairs."
As an illustration of its value in one instance, he states,
that the late Governor Marcy informed him, that if Morse's
telegraph had been constructed to New Orleans during the
war with Mexico, the Government would have saved,
in a single day, a half a million of dollars. Another witness,
Cyrus W. Field, when asked if the telegraph is not worth a
hundred millions of dollars, replies, that its value cannot be
estimated in money, and that its importance can only be appreciated by the consequences which would result from its
withdrawal from public use.
Assuming Mr. Kendall's estimate of the value of the two
inventions constituting Morse's magnetic telegraph to be correct, what fair-minded man will assert that an individual who
has invested the public with the use of property worth three
millions five hundred thousand dollars, is adequately remunerated by the receipt in return for it, of $25,299.84, a sum
not equal to the one seventh part of a single year's interest
upon its estimated value? Or where is to be found the per.




30
son whose judgment and sense of justice are not warped by
the instincts of self-interest, or by the baser and more ungenerous promptings of prejudice or of envy, who will undertake to maintain that $109,404.74, the moiety of the net receipts with which the applicant in this case has erroneously
charged himself, and but a fraction over one half of the yearly
income of three and a half millions of dollars, is a reasonable
compensation for a discovery, equal in value to the last
named sum, dedicated by its owner to the public use? In
my opinion, neither of these sums, nor both together, constitute a reasonable remuneration, within in the meaning of the
Constitution and the patent laws, for the time, ingenuity, and
expense bestowed upon this invention and upon its introduction into use; and I have no hesitation, whatever, in announcing my entire concurrence in the views of one of the
witnesses who testified on the subject, that a half a million of
dollars is but a moderate compensation to its inventor for the
inestimable benefits which his discovery has conferred upon
his country and the world.
The sum of six or seven millions of dollars at which its value
has been set by the evidence on file, every well informed man
must know, is but a tithe of its real value; and it was a well
merited, though, perhaps, an unpremeditated tribute to the
genius of its gifted author, when it was declared by competent judges, that this extraordinary emanation of his inventive ingenuity, is incapable of computation by any standard
which the coinage of the mint affords, and that its intrinsic
importance can never be appreciated, unless, suddenly blotted from existence, the business of the country and of the
civilized world is left to languish and stagnate by reason of
its loss. If an event so disastrous to every department of
commerce and trade, to the varied pursuits of productive
labor and to all the public and private interests of the country, could possibly happen, I hazard little in asserting, that,
in less than one month from its occurrence, a hundred millions of capital would burst from the coffers where enterprise




or avarice may have stored it, to seek a profitable investment in the purchase of the telegraph and its permanent
restoration to use.
One more objection to the extension of this patent remains
to be briefly considered, before this protracted discussion can
be brought to a close. It is alleged that the applicant has
transferred to the American Telegraph Company, all his interest in the extended term of the patent, excepting in some
unimportant portions of the United States, and that, if the
extension is granted, it will enure, almost exclusively, to the
benefit of the assignees. The only evidence relied on to establish this allegation, is the testimony of Cyrus W. Field,
who, in answer to certainr cross-interrogatories, states that he
is under the impression that the American Telegraph Company agreed to give Morse thirty thousand dollars in stock,
in case the patent was extended. This is, certainly, neither
competent nor sufficient evidence to prove an assignment of
any interest whatever, in a patent; for if a contingent right
in the future extension of a patent, is, in law, the subject of
an assignment at all, the evidence of such assignment is required to be in writing, and to be recorded, within a limited
time, in the Patent Office. Being matter of record, parol
evidence is incompetent to prove it, and it can only be established by the production of the record itself, or a certified
copy of it. If such evidence existed, it was readily accessible, and it was the duty of the remonstrants to have produced it, and failing to do so, the allegation must be considered as unfounded, and cannot be sustained. But, if an assignment were ever made of any portion of Morse's future
rights in the extension of the present patent,' the testimony
abundantly shows, that he has reserved a large interest in
stocks of the American Telegraph Company, and of other
telegraphic corporations using his invention, besides the absolute right to the extended patent in California, Florida, and
Texas; and, undoubtedly, this is a sufficient interest to support and justify the grant of an extension.




32
Upon the whole, I am of opinion that Morse is the original and first inventor of the combination of devices embraced
in the patent granted to him on the 11th of April, 1846, and
re-issued on the 13th of June, 1848; that the invention was
novel and patentable when the patent was issued; and that,
without neglect or fault, on his part, he has failed to receive
a reasonable remuneration for his time, ingenuity, and expense bestowed upon it, and upon its introduction into use,
and is, therefore, entitled to an extension of his letters
patent.
It is, thereupon, ordered that the said letters patent, be,
and' the same are hereby extended for the term  of seven
years, from and after the expiration thereof.
PHILIP F. THOMAS,
Commissioneq of Patents.