1st of May, 1838, the Commissioner informs him that his application has been granted. Morse answers on the 15th of May, that he is just about to sail for Europe, and asks the Commissioner to delay the issue of his patent for the present, fearing its effect upon his plans abroad. On the 30th of October, 1838, he obtained his useless French patent. On his return to this country, in 1840, he requests his patent to be perfected and issued. In his application filed on 9th of April, 1838, there was an oversight in filling up the day and month. This clerical omission was wholly immaterial, but ex majori cautela, a second affidavit was filed, and the patent issued on the 20th of June, 1810, for the term of 14 years from its date.

The application of 1838 had a set of drawings annexed to the specification. The second set of drawings required by the 6th section of the act of 1837, being for the purpose of annexation to the patent, they were entirely unnecessary till the patent issued, and are not required by law to accompany the application when first made, and the want of them cannot affect the validity of the application.

In many instances, owing to various causes, the patent is not issued till many months, and sometimes a year or more after the application. The Commissioner requires time to examine the specification; he may suggest difficulties and amendments; and disputes often arise which delay the issuing of the patent. But the application does not require to be renewed, and is never considered abandoned in consequence of such delay. It still remains as of the date of its filing for every purpose beneficial to the applicant. The law does not require that the specification and its accompaniments should be in the precise form which they afterwards assume in the patent. It requires only that the application be "in writing," and that the applicant should "make oath that he is the original inventor," &c. The other requirements of the act must precede the issuing of the patent, but make no part of the application, and are not conditions precedent to its validity. In the present case, we have, therefore, a regular application in due form, accompanied by a specification and drawings, filed on the 9th of April, 1838. It has not been withdrawn, discontinued, or abandoned. There is nothing in the act of Congress which requires that the patent should be issued within any given time after the application is filed, or which forbids the postponement of it for a time at the suggestion either of the applicant or the officer; nor is there any thing in the general policy of the patent laws which forbids it. On the contrary, it has always been the practice, when a foreign patent is desired, to delay the issuing of the patent here, after application filed, for fear of injuring such foreign application. It forms no part of the policy of any of our patent acts to prevent our citizens from obtaining patents abroad. By the Patent Act of 1793, the applicant must swear that his invention was not known or used before the application. The filing of the application was the time fixed for determining the applicant's right to a patent. If a patent had issued abroad, or the invention had been in use or described in some public work before that time, it was a good defence to it. The time of filing the application was, therefore, made by law the criterion of his right to claim as first inventor.

A foreign patent, subsequent to the date of his application, could not be set up as a defence against the domestic patentee. The American inventor, who had filed his application and specification at home, was thus enabled to obtain his patent abroad without endangering his patent at home. This was a valuable privilege to American citizens, and one of which he has never been deprived by subsequent legislation; and thus the law stood till the act of 4th July, 1836.

Before this time, the right to obtain a patent was confined to American citizens, or those who had filed their intentions to become such. The policy of this act was to encourage foreign inventors to introduce their inventions to this country, but in doing so, it evinces no intention of limiting our own citizens by taking away from them rights which they had hitherto enjoyed. Accordingly, it gave an inventor, who had obtained a patent abroad, (and who was generally a foreigner,) a right to have one here, provided he made his application here within six months after the date of his foreign patent. Neither the letter nor the spirit of this act interferes with the right to an inventor, who has filed his application here, from obtaining a patent abroad, or his right to a term of fourteen years from the date of his patent.

In 1838, therefore, when complainant filed his application, he was entitled to such a patent. But in March, 1839, an act was passed, by the sixth section of which it is alleged the complainant's rights have been affected. That section is as follows:-"That no person shall be debarred from receiving a patent for any invention, &c., as provided in the act of 4th July, 1836, to which this is additional, by reason of the same having been patented in a foreign country more than six months prior to his application; provided that the same shall not have been introduced into public and common use in the United States prior to the application for such patent. And provided, also, that in all cases every such patent shall be limited to the term of fourteen years from the date or publication of such foreign letters patent." Now the act of 1836, as we have shown, had given a privilege to foreign patentees to have a patent within six months after date of such foreign patent; it had not affected, in any manner, the right previously enjoyed by American citizens to take out a foreign patent after filing their application here. This section gives " additional" rights to those who had first taken out patents abroad, and holds out an additional encouragement to foreign inventors to introduce their inventions here, subject to certain conditions contained in the provisoes. Neither the letter, spirit, nor policy of this act, have any reference to, or bearing upon, the case of persons who had first made their applications here. To construe a proviso, as applicable to a class of cases not within its enacting clause, would violate all settled rules of construction. The office of a proviso is either to except something from the enacting clause, or to exclude some possible ground of misinterpretation, or to state a condition to which the privilege granted by the section shall be subjected. Here the proviso is inserted, to restrain the general words of the section, and impose a condition on those who accept the privileges granted by the section. It enlarged the privileges of foreign patentees, which had before been confined to six months, on

two conditions: first, provided the invention patented abroad had not been introduced into public use here; and secondly, on condition that every such patent should be limited in its term. The general words, "in all cases," especially when restrained to "every such patent," cannot extend the condition of the proviso beyond such cases as are the subject-matter of legislation in the section.

The policy and spirit of the act are to grant privileges to a certain class of persons which they did not enjoy before; to encourage the introduction of foreign inventions and discoveries, and not to deprive our own citizens of a right heretofore enjoyed, or to affect an entirely different class of cases, when the applications had been filed here before a patent obtained abroad.

It is supposed that certain evils might arise by allowing an applicant for a patent here to delay its issue till he can obtain a foreign patent. To which it is a sufficient answer to say, that if such evil consequences should be found to exist, it is for Congress to remedy them by legislation. It is no part of the duty of this Court, by a forced construction of existing statutes, to attempt the remedy of possible evils by anticipation.

I am therefore of opinion that the complainant's patent, as renewed, contained a valid grant of the full term of fourteen years from its original date.

II. The other point in which I cannot concur with the opinion of the majority, arises in the construction of the eighth claim of complainant's first patent, as finally amended. The first claim, as explanatory of all that follow, should be read in connection with the eighth-they are as follows:-" First-Having thus fully described my invention, I wish it to be understood that I do not claim the use of the galvanic current or currents of electricity for the purpose of telegraphic communications generally; but what I specially claim as my invention and improvement, is making use of the motive power of magnetism, when developed by the action of such current or currents substantially as set forth in the foregoing description of the first principal part of my invention, as means of operating or giving motion to machinery which may be used to imprint signals upon paper or other suitable material, or to produce sounds in any desired manner for the purpose of telegraphic communication at any distances. The only ways in which the galvanic current had been proposed to be used prior to my invention and improvement, were by bubbles resulting from decomposition, and the action or exercise of electrical power upon a magnetized bar or needle; and the bubbles and the deflections of the needles thus produced, were the subjects of inspection, and had no power, or were not applied to record the communication. I therefore characterize my invention as the first recording or printing telegraph by means of electro-magnetism.

"There are various known modes of producing motions by electromagnetism, but none of these had been applied prior to my invention and improvement, to actuate or give motion to printing or recording machinery, which is the chief point of my invention and improvement."

"Eighth. I do not propose to limit myself to the specific machinery or parts of machinery described in the foregoing specification and claims, the essence of my invention being the use of the motive power of the electric or galvanic current, which I call electro-magnetism, however developed, for marking or printing intelligible characters, signs or letters, at any distances, being a new application of that power, of which I claim to be the first inventor or discoverer."

The objection to this claim is, that it is too broad, because the inventor does not confine himself to specific machinery or parts of machinery as described in his patent, but claims that the essence of his invention consists in the application of electro-magnetism as a motive power, however developed, for printing characters at a distance. This being a new application of that element or power, of which the patentee claims to be the first inventor or discoverer.

In order to test the value of this objection as applied to the present case, and escape any confusion of ideas too often arising from the use of ill-defined terms and propositions, let us examine, 1st. What may be patented, or what forms a proper subject of protection under the Constitution and acts of Congress relative to this subject.

2d. What is the nature of the invention now under consideration? Is it a mere machine, and subject to the rules which effect a combination of mechanical devices to effect a particular purpose?

3d. Is the claim true in fact; and, if true, how can it be too broad, in any legal sense of the term, as heretofore used, either in the acts of Congress or in judicial decisions?

4th. Assuming the hypothesis that it is too broad; how should that affect the judgment for costs in this case?

"1st. The Constitution of the United States declares that Congress shall have the power to promote the progress of science and useful arts, by securing, for limited times, to authors and inventors, the exclusive right to their respective writings and discoveries."

The act of Congress of 1836 confers this exclusive right, for a limited time, on 66 any person who has discovered or invented any new and useful art, machine, manufacture or composition of matter, or any new and useful improvements on any art, machine, manufacture, or composition of matter, not known or used by others before his or their discovery or invention thereof, and not, at the time of his application for a patent, in public use," &c.

A new and useful art, or a new and useful improvement on any known art, is as much entitled to the protection of the law as a machine or manufacture. The English patent acts are confined to "manufactures," in terms; but the courts have construed them to cover and protect arts as well as machines; yet without using the term art. Here we are not required to make any latitudinous construction of our statute for the sake of equity or policy; and surely we have no right, even if we had the disposition, to curtail or narrow its liberal policy by astute or fanciful construction.

It is not easy to give a precise definition of what is meant by the term "art," as used in the acts of Congress. Some, if not all, the traits which distinguish an art from the other legitimate subjects of a

patent, are stated with clearness and accuracy by Mr. Curtis, in his treatise on patents. The term art "applies," says he, "to all those cases where the application of a principle is the most important part of the invention, and where the machinery, apparatus, or other means by which the principle is applied are incidental only, and not of the essence of his invention. It applies also to all those cases where the result, effect, or manufactured article, is old, but the invention consists in a new process or method of producing such result, effect, or manufacture." (Curt. Pat., 80.)

A machine, though it may be composed of many parts, instruments, or devices combined together, still conveys the idea of unity. It may be said to be invented, but the term "discovery" could not well be predicated of it. An art may employ many different machines, devices, processes, and manipulations, to produce some useful result. In a previously known art, a man may discover some new process, or new application of a known principle, element, or power of nature, to the advancement of the art; and will be entitled to a patent for the same, as an improvement in the art; or he may invent a machine to perform a given function, and then he will be entitled to a patent only for his machine. That improvements in the arts which consist in the new application of some known element, power, or physical law, and not in any particular machine or combination of machinery, have been frequently the subject of patents, both in England and this country, the cases in our books most amply demonstrate. I have not time to examine them at length; but would refer to James Watt's patent for a method of saving fuel in steam-engines, by condensing the steam in separate vessels, and applying non-conducting substances to his steam-pipes; Clegg's patent for measuring gas in water-Jupe vs. Pratt: Webster's Pat. Cases, 103-and the celebrated case of Neilson's patent for the application of hot blast, being an important improvement in the art of smelting iron.

In England, where their statute does not protect an art in direct terms, they have made no clear distinction between an art and an improvement in an art, and a process, machine or manufacture. They were hampered and confined by the narrowness of the phraseology of their patent acts. In this country the statute is as broad as language can make it; and yet if we look at the titles of patents as given at the Patent Office, and the language of our courts, we might suppose that our statute was confined entirely to machines, notwithstanding in Knoop vs. The Bank (4 Washington, C. C. R. 19), Mr. Justice Washington supported a patent which consisted in nothing else but a new application of copper plates to both sides of a bank bill as a security against counterfeiting. The new application was held to be an art, and therefore patentable. So the patent in McClurg vs. Kingsland (1 How. 204) was in fact for an improvement in the art of casting chilled rollers by conveying the metal to the mould in a direction approaching to the tangent of the cylinder, yet the patentee was protected in the principle of his discovery (which was but the application of a known law of nature to a new purpose) against all forms of machinery embodying the same principle. The great art of printing, which