CITE:  126 U.S. 1, 533
CMON:  March 1888
PLAIN: American Bell Telephone
DEFND: Molecular Telephone, Dolbear, Clay Commercial, People's Telephone
COURT: United States Supreme Court
DATE:  March 19, 1888


In Equity.  The bills were filed in Circuit Courts of the United States
by the American Bell Telephone Company and others, as owners of two
patents, known as the Bell-telephone Patents, to enjoin the several
defendants against infringements of those patents.

  An art - a process which is useful, is as patentable as a machine,
  manufacture, or composition of matter.  Descriptions of means in
  the patent is only necessary to show that the process can be used.

JUDGE: WAITE, Chief Justice


[NOTE: Pages 1-530 of the decision review the people and patents at issue
in the case.  What follows starts on page 531 of the decision.

The important question which meets us at the outset in each of these cases
is us to the score of the fifth claim of the patent of March 7, 1876, which
is as follows:

  "The method of, and apparatus for, transmitting vocal or other sounds
  telegraphically, as herein described, by causing electrical undulations,
  similar in form to tile vibrations of the air accompanying the said
  vocal or other sounds, substantially as set forth. "

It is contended that this embraces the art of transferring to  
or impressing upon a current of electricity the vibrations of  
air produced by the human voice in articulate speech, in a way  
that the speech will be carried to and received by a listener 
at a distance on the line of the current. Articulate speech is not  
mentioned by name in the patent. The invention, as described,  
"consists in the employment of a vibratory or undulatory  
current of electricity, in contradistinction to a merely 
intermittent or pulsatory current, and of a method of, and apparatus
for, producing electrical undulations upon the line wire."  
A "pulsatory current is described as one "caused by sudden  
or instantaneous changes of intensity", and an "electrical 
undulation" as the result of "gradual changes of intensity
exactly analogous to the changes in the density of air 
occasioned by simple pendulous vibrations."

Among the uses to which this art may put is said to be  
the "'telegraphic transmission of noises or sounds of any kind", 
and it is also said that the undulatory current, when created in
the way pointed out, will produce through the receiver at the  
receiving end of tile line "a similar sound to that uttered into"  
the transmitter at the transmitting end. One of the means  
of imparting the necessary vibrations through the transmitter,
to produce the undulations, may be the human voice.  Articulate 
speech is certainly included in this description, for it is art  
"uttered" "sound" produced by the "human voice".

It is contended, however, that "vocal sounds" and "articulate 
speech" are not convertible terms, either in acoustics or  
in telegraphy. It is unnecessary to determine whether this  
is so or not. Articulate speech necessarily implies a sound  
produced by the human voice, and, as the patent on its face  
is for the art of changing the intensity of a continuous current  
of electricity by the undulations of the air caused by sonorous  
vibrations, and speech can only be communicated by such 
vibrations, the transmission of speech in this way must be
included in the art. The question is not whether "vocal sounds"  
and "articulate speech" are used synonymously as scientific 
terms, but whether the sound of articulate speech is one of the  
"vocal or other sounds " referred to in this claim of the patent.  
We have no hesitation in saying that it is, and that if the  
patent can be sustained to the full extent of  what is now
contended for, it gives to Bell, and those who claim under 
him, the exclusive use of his art for that purpose, until the 
expiration of the statutory term of his patented rights.

In this art - or, what is the same thing under the patent  
law, this process, this way of transmitting speech - electricity,  
one of the forces of nature, is employed; but electricity, left  
to itself, will not do what is wanted. The art consists in so  
controlling the force as to make it accomplish the purpose.  
It had long been believed that if the vibrations of air caused  
by the voice in speaking could be reproduced at a distance by  
means of electricity, the speech itself would be reproduced and 
understood. How to do it was the question.

Bell discovered that it could be done by gradually changing  
the intensity of a continuous electric current, so as to make it  
correspond exactly to the changes in the density of the air
caused by the sound of the voice. This was his art.  He then
devised a way in which these changes of intensity could be
made and speech actually transmitted.  Thus his art was put
in a condition for practical use.

In doing this, both discovery and invention, in the popular  
sense of those terms, were involved; discovery in finding the  
art, and invention in devising the means of making it useful.  
For such discoveries and such inventions the law has given  
the discoverer and inventor the right to a patent -- as
discoverer, for the useful art, process, method of doing a 
thing he has found; and as inventor, for the means he has devised  
to make his discovery one of actual value. Other inventors  
may compete with him for the ways of giving effect to the 
discover, but the new art he has found will belong to him and  
those claiming under him during the life' of his patent. If  
another discovers a different art or method of doing the same  
thing, reduces it to practical use, and gets a patent for his 
discovery, the new discovery will be the property of the new
discoverer, and thereafter the two will be permitted to operate  
each in his own way without interference by the other. The  
only question between them will be whether the second
discovery is in fact different from the first.

The patent for the art does not necessarily involve a patent  
for the particular means employed for using it. Indeed, the  
mention of any means, in the specification or descriptive 
portion of the patent, is only necessary to show that the art can  
be used ; for it is only useful arts - arts which may be used to  
advantage - that can be made the subject of a patent. The  
language of the statute is, that "any person who has invented  
or discovered any new and useful art, machine, manufacture,  
or composition of matter," may obtain a patent therefor.  
Rev. Stat. Section 4886. Thus, an art - a process - which is 
useful, is as much the subject of a patent, as a machine, 
manufacture, or composition of matter. Of this there can be 
no doubt. and it is abundantly supported by authority.  Corning v.
Burden, 15 How. 252,267; Cochrane v. Deener, 94 U.S. 780,787,788;
Tilghman v. Proctor, 102 U.S. 707, 722, 724, 725; Fermentation
Co. v. Maus, 122 U.S. 413, 427, 428.

What Bell claims is the art of creating changes of intensity
in a continuous current of electricity, exactly corresponding to  
the changes of density in the air caused by the vibrations  
which accompany vocal or other sounds, and of using that
electrical condition thus created for sending and receiving
articulate speech telegraphically. For that, among other
things, his patent of 1876 was in our opinion issued; and  
the point to be decided is, whether as such a patent it can  
be sustained.

In O'Reilly v. Morse, 15 How. 62, it was decided that a  
claim in broad terms (p. 86) for the use of the motive power  
of the electric or galvanic current called "electromagnetism,  
however developed, for making or printing intelligible 
characters, letters, or signs, at any distances", although
"a new application of that power" first made by Morse, was void,
because  (p. 120) it was a claim "for a patent for an effect
produced by the use of electro-magnetism, distinct from the process
or machinery necessary to produce it"; but a claim (p. 85) for  
"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, .   .   . 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", was sustained. The
effect of that decision was, therefore, that the use of magnetism
as a motive power, without regard to the particular process  
with which it was connected in the patent, could not he  
claimed, but that its use in that connection could

In the present case the claim is not for the use of a current  
of electricity in its natural state as it comes from the battery,
but for putting a continuous current in a closed circuit into a
certain specified condition suited to the transmission of vocal
and other sounds, and using it in that condition for that
purpose. So far as at present known, without this peculiar  
change in its condition it will not serve as a medium for the  
transmission of speech, but with the change it will. Bell was
the first to discover this fact, and how to put such a current in
such a condition, and what he claims is its use in that condition
for that purpose, just as Morse claimed his current in his 
condition for his purpose. We see nothing in Morse's case to  
defeat Bell's claim; on the contrary, it is in all respects
sustained by that authority. It may be that electricity cannot be  
used at all for the transmission of speech except in the way  
Bell has discovered, and that therefore, practically, his patent
gives him its exclusive use for that purpose, but that does not  
make his claim one for the use of electricity distinct from the  
particular process with which it is connected in his patent. 
It will, if true, show more clearly the great importance of 
his discovery, but it will not invalidate his patent.

But it is insisted that the claim cannot be sustained, because  
when the patent was issued Bell had not in fact completed his  
discovery. While it is conceded that he was acting on the  
right principle and had adopted the true theory, it is claimed  
that the discovery lacked that practical development which  
was necessary to make it patentable. In the language of  
counsel "there was still work to be done, and work calling  
for the exercise of the utmost ingenuity, and calling for the  
very highest degree of practical invention".

It is quite true that when Bell applied for his patent he had 
never actually transmitted telegraphically spoken words so  
that they could be distinctly heard and understood at the  
receiving end of his line, but in his specification he did
describe accurately and with admirable clearness his process,  
that is to say, the exact electrical condition that must be  
created to accomplish his purpose, and he also described, with  
sufficient precision to enable one of ordinary skill in such 
matters to make it, a form of apparatus which, if used in the way
pointed out, would produce the required effect, receive the
words, and carry them to and deliver them at the appointed
place. The particular instrument which he had and which he
used in his experiments did not, under the circumstances in
which it was tried, reproduce the words spoken, so that they
could be clearly understood, but the proof is abundant and of  
the most convincing character, that other instruments,
carefully constructed and made exactly in accordance with the
specification, without any additions whatever, have operated
and will operate successfully. A good mechanic of proper  
skill in matters of the kind can take the patent and, by
following the specification strictly, can, without more, 
construct an apparatus which, when used in the way 
pointed out, will do all that it is claimed the method or 
process will do. Some witnesses have testified that they 
were unable to do it. This shows that they, with the 
particular apparatus they had and the skill they employed in 
its use, were not successful; not that others, with another 
apparatus, perhaps more carefully constructed or more 
skilfully applied, would necessarily fail.  
As was said in Loom Co. v. Higgins, 105 U.S. 580,586,
"when the question is, whether a thing can be done or not, 
it is always easy to find persons ready to show how not to 
do it." If one succeeds, that is enough, no matter how many 
others fail.  The opposite results will show, that in the one 
case the apparatus used was properly made, carefully 
adjusted, with a knowledge of what was required, and 
skilfully used, and that in the others it was not.

The law does not require that a discoverer or inventor, in  
order to get a patent for a process, must have succeeded in  
bringing his art to the highest degree of perfection. It is  
enough if he describes his method with sufficient clearness 
and precision to enable those skilled in the matter to 
understand what the process is, and if he points out some 
practicable way of putting it into operation. This Bell did. 
He described clearly and distinctly his process of 
transmitting speech telegraphically, by creating changes in 
the intensity of a continuous current or flow of electricity 
in a closed circuit, exactly analogous to the changes of 
density in air occasioned by the undulatory motion given to 
it by the human voice in speaking.  He then pointed out two 
ways in which this might be done: one by the "vibration or 
motion of bodies capable of inductive action, or by the 
vibration of the conducting wire itself in the neighborhood 
of such bodies"; and the other "by alternately increasing 
and diminishing the resistance of the circuit, or by 
alternately increasing and diminishing the power of the 
battery." He then said he preferred to employ for his purpose:  
"an electro-magnet, having a coil upon only one of
its legs", and he described the construction of the particular  
apparatus shown in the patent as Fig. 7, in which the 
electromagnet, or magneto method, was employed. This was the  
apparatus which he himself used without entirely satisfactory  
results, but which Prof. Cross, Mr. Watson, Dr. Blake, Prof.  
Pore, and others testify has done, and will do, what was  
claimed for it, and transmit speech successfully, but not so  
well indeed as another constructed upon the principle of the  
microphone or the variable resistance method.

An effort was made in argument to confine the patent to  
the magneto instrument, and such modes of creating electrical  
undulations as could be produced by that form of apparatus,  
the position being that such an apparatus necessarily implied  
"a closed circuit incapable of being opened, and a continuous  
current incapable of being intermittent." But this argument  
ignores the fact that the claim is, first, for the process, and,  
second, for the apparatus. It is to be read, 1, as a claim for 
"the method of transmitting vocal or other sounds telegraphically,  
as herein described, by causing electrical undulations similar  
in form to the vibrations of the air accompanying the said  
vocal or other sounds, substantially as set forth"; and, 2, as  
for "the apparatus for transmitting vocal or other sounds  
telegraphically , as herein described, by causing electrical 
undulations, substantially as set forth." The method, "as
herein described", is to cause gradual changes in the intensity
of the electric current used as the medium of transmission,
which shall be exactly analogous to the changes in the density  
of the air, occasioned by the peculiarities in the shapes of the  
undulations produced in speech, in the manner "substantially
as set forth; " that is to say, "by the vibration or motion
of bodies capable of inductive action, or by the vibration of the  
conducting wire itself in the neighborhood of such bodies",  
which is the magneto method; or "by alternately increasing  
and diminishing the resistance of the circuit, or by alternately
increasing and diminishing the power of the battery", which is
the variable resistance method. This is the process which has
been patented, and it may be operated in either of the ways
set forth. The current must be kept closed to be used successfully,
but this does not necessarily imply that it must be so  
produced or so operated upon, as to be incapable of being  
opened. If opened it will fail to act for the time being, and  
the process will be interrupted; but there is nothing in the  
patent which requires it to be operated by instruments 
which are incapable of making the break.

The apparatus, "as herein described", which is included in  
the claim, is undoubtedly one in which an electro-magnet is  
employed, and constructed "substantially as set forth" in the
specification. One acting on the variable resistance mode is
not described, further than to say that the vibration of the
conducting wire in mercury or other liquid included in the
circuit occasions undulations in the current, and no other special
directions are given as to the manner in which it must be
constructed. The patent is both for the magneto and variable
resistance methods, and for the particular magneto apparatus
which is described, or its equivalent. There is no patent for
any variable resistance apparatus. It is undoubtedly true that
when Bell got his patent he thought the magneto method was
the best. Indeed, he said, in express terms, he preferred it,
but that does not exclude the use of the other if it turns out
to be the most desirable way of using the process under any
circumstances. Both forms of apparatus operate on a closed
circuit by gradual changes of intensity, and not by alternately
making and breaking the circuit, or by sudden and instantaneous
changes, and they each require to be so adjusted as to
prevent interruptions. If they break it is a fault, and the
process stops until the connection is restored.

It is again said, that the claim, if given this broad construction,
is virtually "a claim for speech transmission by transmitting
it; or, in other words, for all such doing of a thing as is
provable by doing it." It is true that Bell transmits speech
by transmitting it, and that long before he did so it was believed
by scientists that it could be done by means of eletricity,
if the requisite electrical effect could be produced.
Precisely how that subtle force operates under Bell's treatment,
or by what form it takes, no one can tell. All we know is
that he found out that, by changing the intensity of a continuous
current so as to make it correspond exactly with the  
changes in the density of air caused by sonorous vibrations,  
vocal and other sounds could be transmitted and heard at a  
distance. This was the thing to be done, and Bell discovered  
the way of doing it. He uses electricity as a medium for that
purpose, just as air is used within speaking distance. In effect
he prolongs the air vibrations by the use of electricity. No
one before him had found out how to use electricity with the
same effect. To use it with success it must be put in a certain
condition. What that condition was he was the first to
discover, and with his discovery he astonished the scientific
world. Prof. Henry, one of the most eminent scientists of
the present century, spoke of it as "the greatest marvel
hitherto achieved by the telegraph."  The thing done by Bell was
"transmitting audible speech through long telegraphic lines",
and Sir William Thomson, on returning to his home in England,
in August or September, 1876, after seeing at the
Centennial Exposition, in Philadelphia, what Bell had done and  
could do by his process, spoke in this way of it to his 
countrymen: "Who can but admire the hardihood of invention which
devised such very slight means to realize the mathematical
conception that, if electricity is to convey all the delicacies of
quality which distinguish articulate speech, the strength of its
current must vary continuously, as nearly as may be, in simple
proportion to the velocity of a particle of air engaged in
constituting the sounds." Surely a patent for such a discovery is
not to be confined to the mere means he improvised to prove the
reality of his conception.