from the matters involved in any such new issues, now here made and insisted upon by our learned opponents, had such issues been made in the tribunal where they could have been met by the proper testimony, yet they do protest against the right of the appellants to now and here, for the first time, present new issues involving questions of fact, which in whole or in part can be determined only by testimony; and to do this at a stage of the controversy, and in a court where new testimony cannot be offered; and they protest against this proposition as being without precedent, and contrary to the rules and practice of this court. Still, as we cannot, with entire certainty, anticipate the conclusion of the court on this question of practice, and as evidence taken with reference to other issues can be gathered from the record sufficient to meet and negative even the propositions of our opponents, founded on these new issues, we have resolved to not leave them entirely untouched, but to give them such attention only as may be consistent with a more full consideration of the other issues which were made in the court below, and which we regard as the only questions properly before this court.

Of these new issues it falls to me to consider only those involving questions made upon the re-issuing of Morse's patents, the others fell into more able hands, and have been disposed of by my colleagues.

The questions appertaining to the merits of the case properly before the court, and all, as we submit, with which they will find it necessary to tax their attention, are recorded in our brief, and have been referred to and re-stated by one of my colleagues, and it will be unnecessary for me to recapitulate them here; suffice it for me to remind the court that those falling within my division are:

1st. The patentability of the subject matter of the 1st, 5th and 6th claims of the patent of 1840, as re-issued in 1848.

2d. The patentability of the subject matter of the patent of 1846, as re-issued in 1848, in reference to its relation to and difference from anything included in the patent of 1840. 3d. Infringement.

4th. Disclaimer.

After disposing of those points, then, if time will permit, 5th. To briefly examine the new questions raised by our op ponents, as to the validity of the several re-issues of the patents. The principles of law which these points involve are so well settled, and are so familiar to this learned court, as to require no parade or exhibition of authorities and cases to maintain them. It will be more useful to dwell upon the relation between the facts and the law.

Before taking up these points in their order, and preparatory

to a consideration of them, it will be important to pause and look into the vital parts of the invention of Morse's Telegraph.

No safe conclusion can be arrived at as to whether the claims of a patent for an invention are proper or improper, or whether, and in what there has been an infringement, unless the invention be subjected to an examination sufficiently searching to determine both its quantity and kind of novelty; for as well might one attempt to decide upon a question of trespass upon land without knowing its boundaries, or how far the title of the claimants extended.

To follow the course of the inventor's mind, and make such an examination of many, and indeed of most inventions, is an easy task, while others require the exercise of the best faculties of the mind, and the most enduring patience.

Many inventions consist only of a single combination, and that too, of tangible parts of apparatus or machinery, where a slight inspection will possess the mind of all there is of it; others consist of many combinations, and are of a compound character, and therefore more difficult to understand; but the combinations of which, still being limited to parts of tangible apparatus or machinery, can easily be understood from a more careful ocular inspection, But, there are still others consisting, not only of many combinations, but of many classes of combinations; ont class consisting, perhaps, of combinations in apparatus or machinery; another class of combinations of motions; another class of combinations of intermediate results; another class of intermediate conditions, and finally involving the combination together of the several classes, constituting a complicated whole, in which every element of each class or an equivalent is an efficient and important agent in attaining the ultimate and designed result of that class, and in which also such ultimate result of each class of combinations forms either an indispensable intermediate condition, or effect in attaining the final result of the whole, or an indispensable component part of the whole combination.

Inventions of this last character are, of necessity and from their nature, most difficult to understand-and such, too, bringing out great and useful results, are the ripest fruits of the longest and most indefatigable efforts of the greatest and most enduring genius; and if genius be not absolutely necessary to even understand them after produced, it is certain, that, at least, a careful, patient, and sometimes long and tedious investigation is necessary; and if any one, called to limit the magnitude of such an invention and define the merits and rights of its author, and to find division lines, and to fix the boundaries thereto, content himself with only a cursory inspection of the

visible parts of the clothing of the invention, without a patient examination of the parts which enter so vitally into its life and principle, and give it energy, efficiency and utility, he may be expected to be and remain, where he commences, upon the surface of the thing, unconscious of the grandeur, beauty and order displayed in the superstructure below; and in such case, too often, it would be by mere accident if the response to the inventor's call for protection and justice be more than an unintentional slander upon his merits and his invention. We congratulate the inventor of Morse's Telegraph, that, although the spring and summer of his life have been spent in the philanthropic work of his invention, amid alternate hopes and fears, he has lived to be present and see his invention and cause submitted to this Supreme Tribunal of his country, whose duty and desire to reward merit by justice will overrule every consideration of personal inconvenience and arduous labor, necessary for such full, ample and elaborate examination as will exclude all danger of a misapprehension, or a misunderstanding of the nature, character and extent of his invention.

Morse's telegraph partakes of three distinct classes of patentable subject matter; 1st, apparatus or machinery; 2nd, process; and 3d, an art; each of which, independently of the others, is a fair and perfect subject, within the law, for a patent, and any of which might have been patented without patenting either of the others, but all of which in this case, and properly too, are patented.

It will be found, on attaining familiarity with the details of Morse's invention, that it is not a want or scarcity of novelty which renders it difficult to be understood, and difficult to fix the limits of his right, but that, on the contrary, this results from the greatness of the amount and the diversity of novelty included in it.

If Morse's invention consisted only of novel apparatus, or only of a novel process, or only of a new art, then it would be comparatively easy for the mind to embrace and identify it, and then there would be less danger of injustice to the inventor from any omission or mistake. As it is, however, it is a severe task to become so familiar with the many things about the invention, and the character of the objections raised to Morse's rights, as to avoid error in conclusion. We hear it said by some that Morse is undoubtedly the inventor of his peculiar apparatus or machinery, and ergo, not of a process or art; by others that he is unquestionably the inventor of his peculiar process, and ergo not of the apparatus or an art; by others, that he is the inventor of a new art, and that it is no matter as to the process or apparatus; by others, that he is evidently the inventor of the process and apparatus, and could not be of an art; by

others, that he must have been the originator of the art and process, and ergo, it is of no consequence about the apparatus; by others, that he may have discovered the art, but could have invented nothing but the machinery.

Now, one difficulty appears to be, that all of them are right in part and all wrong in part; they are all right in their premises, as far as they go, but are all wrong in their conclusions; they content themselves with erroneous conclusions, somtimes from inability to comprehend others, and sometimes from a want of patience to investigate, either of which, in the end, exhibits the same error and mischief.

It does not follow, that because Morse's Telegraph contains many points of novelty within one class of patentable subject matter, that it may not, or does not also partake of other distinct classes of patentable matter. The fact is, that Morse's invention contains novelties of each class; that is, in machinery, process, and art; and it were monstrous if the magnitude of the invention were allowed to diminish instead of enhancing acknowledged merit. Nor does it follow that he has no right to claim and patent the novelties of each class because there are others in other classes, nor because of the still additional novelty of the several classes being combined as a whole.

Under the first point which I am to discuss, I desire here, as a means of developing the magnitude of Morse's invention, and exhibiting the rich treasures of his genius, to present four views in relation to his telegraph.

1st.-Preparatory to a due appreciation of the means, I will briefly notice the nature and character of the specific objects to be attained by it.

2nd. I will next submit an analytical view of the component parts or elements of the process.

3rd.—I will endeavor to present a like view of the essential character of the machinery, or physical parts of the

invention.

4th. I shall attempt, and, I sincerely believe shall be able, to demonstrate that Morse's Telegraph embraces within it a new and patentable art.

To be continued.

Art. III.—THE ANCIENT AND MODERN TELEGRAPH. *

SENTINEL TELEGRAPH-FIRE PILES INDIAN RUNNERS-CARRIER

PIGEONS

TELESCOPES-CANNON REPORTS-ROCKETS-ELECTRIC-ELECTRO-MAGNETIC.

"Canst thou send lightnings, that they may go, and say unto thee, 'Here we are?"-Scripture.

Ir is even so. The inquiry has been answered in one grand and magnificent sense. The querist and man of patience little dreamed, when using this grand metaphor to give greater effect to his reproach, and to illustrate the power of Omnipotence, that he was but uttering a eulogy upon science, while he claimed for the Deity but an attribute within the province of mortal triumphs and mortal genius. "Canst thou send lightnings, that they may go, and say unto thee, 'Here we are?" That restless and ambitious thing, the human mind, undeterred by the subtlety of divine themes, or the awfulness of ethereal problems, has boldly pushed investigation throughout the domain of electrical phenomena, and fettered the hoary potentate of storms on his very throne. Nay, it has torn away the sceptre of the fierce god, sequestered the elements of his realm, and tamed the spirit of tempests to do the weak bidding of man. Science in this has surpassed itself. It has not only accomplished a prodigy, but has worked a miracle-a miracle so vast, so incomprehensible, that the age, much as it has advanced in knowledge and enlightenment, cannot compass the extent of the discovery to which it has given birth. The lightnings have been trained to utter the language of men! Can we conceive of anything more sublime or grand? more thrilling or lofty in the field of imagination? We aspire in our arrogance to count the suns and planets within the visual range; explore the scope of the physical heavens; transfer light and revealed darkness to canvass; imitate the works of the Creator in senseless stone; compress air into dense and powerful bodies; generate a motive agency from water; follow comets and blazing heralds through trackless wastes; and knowledge and science in these pursuits have acquired immortal honors. But what is all this to subjugating the lightnings, the mythological voice of Jehovah, the fearful omnipotence of the clouds, causing them in the fine agony of chained submission to do the offices of a common messenger-to whisper to the four corners of the earth the lordly behests of lordly man!

*From De Bow's Review.