RUTLEDGE, J., dissenting. 320 U.S. rejections on Lodge, Stone and other references, including all in issue here. In the perspective of this decade, Marconi's advance, in requiring "independent tuning," that is, positive means of tuning located in both closed and open circuits, seems simple and obvious. It was simple. But, as is often true with great inventions, the simplest and therefore generally the best solution is not obvious at the time, though it becomes so immediately it is seen and stated. Looking back now at Edison's light bulb one might think it absurd that that highly useful and beneficial idea had not been worked out long before, by anyone who knew the elementary laws of resistance in the field of electric conduction. But it would be shocking, notwithstanding the presently obvious character of what Edison did, for any court now to rule he made no invention. The same thing applies to Marconi. Though what he did was simple, it was brilliant, and it brought big results. Admittedly the margin of difference between his conception and those of the references, especially Lodge and Stone, was small. It came down to this, that Lodge saw the need for and used means for performing the function which variable inductance achieves in the antenna or open circuit, Stone did the same thing in the closed circuit, but Marconi first did it in both. Slight as each of these steps may seem now, in departure from the others, it is as true as it was in 1911, when Mr. Justice Parker wrote, that the very fact men of the eminence of Lodge and Stone saw the necessity of taking the step for one circuit but not for the other is strong, if not conclusive, evidence that taking it for both circuits was not obvious. If this was so clearly indicated that anyone skilled in the art should have seen it, the unanswered and I think unanswerable question remains, why did not Lodge and Stone, both assiduously searching for the secret and both preeminent in the field, recognize the 1 RUTLEDGE, J., dissenting. fact and make the application? The best evidence of the novelty of Marconi's advance lies not in any judgment, scientific or lay, which could now be formed about it. It is rather in the careful, considered and substantially contemporaneous judgments, formed and rendered by both the patent tribunals and the courts when years had not distorted either the scientific or the legal perspective of the day when the invention was made. All of the references now used to invalidate Marconi were in issue, at one time or another, before these tribunals, though not all of them were presented to each. Their unanimous conclusion, backed by the facts which have been stated, is more persuasive than the most competent contrary opinion formed now about the matter could be. It remains to give further attention concerning Stone. Admittedly his original application did not require tuning, in Marconi's sense, of the antenna circuit, though it specified this for the closed one. He included variable inductance in the latter, but not in the former. His device therefore was, in this respect, exactly the converse of Lodge. But it is said his omission to specify the function (as distinguished from the apparatus which performed it) for the antenna circuit was not important, because the function was implicit in the specification and therefore supported his later amendment, filed more than a year following Marconi's date, expressly specifying this feature for the open circuit. Substantially the same answer may be made to this as Mr. Justice Parker made to the claim based on Lodge. Tuning both circuits, that is, including in each independent means for variable adjustment, was the very gist of Marconi's invention. And it was what made possible the highly successful result. It seems strange that one who saw not only the problem, but the complete solution, should specify only half what was necessary to achieve it, neglecting to mention the other and equally important RUTLEDGE, J., dissenting. 320 U.S. half as well, particularly when, as is claimed, the two were so nearly identical except for location. The very omission of explicit statement of so important and, it is claimed, so obvious a feature is evidence it was neither obvious nor conceived. And the force of the omission is magnified by the fact that its author, when he fully recognized its effect, found it necessary to make amendment to include it, after the feature was expressly and fully disclosed by another. Amendment under such circumstances, particularly with respect to a matter which goes to the root rather than an incident or a detail of the invention, is always to be regarded critically and, when the foundation claimed for it is implicit existence in the original application, as it must be, the clearest and most convincing evidence should be required when the effect is to give priority, by backward relation, over another application intermediately filed. Apart from the significance of omitting to express a feature so important, I am unable to find convincing evidence the idea was implicit in Stone as he originally filed. His distinction between "natural" and "forced" oscillations seems to me to prove, in the light of his original disclosure, not that "tuning" of the antenna circuit as Marconi required this was implicit, but rather that it was not present in that application at all. It is true he sought, as Marconi did, to make the antenna circuit at the transmitter the source of waves of but a single periodicity and the same circuit at the receiver an absorber only of the waves so transmitted. But the methods they used were not the same. Stone's method was to provide "what are substantially forced vibrations" in the transmitter's antenna circuit and, at the receiver, to impose "between the vertical conductor [the antenna] . . . and the translating devices [in the closed circuit] [other] resonant circuits attuned to the particular frequency of the electro-magnetic waves 1 RUTLEDGE, J., dissenting. which it is desired to have operate the translating devices." (Emphasis added.) In short, he provided for "tuning," as Marconi did, the transmitter's closed circuit, the receiver's closed circuit and the intermediate circuits which he interposed in the receiver between the open or antenna one and the closed one. But nowhere did he provide for or suggest "tuning," as Marconi did and in his meaning, the antenna circuit of the transmitter or the antenna circuit of the receiver. For resonance in the former he depended upon the introduction, from the closed circuit, of "substantially forced electric vibrations" and for selectivity in the latter he used the intermediate tuned circuits. Stone and Marconi used the same means for creating persistent oscillation, namely, the use of the separate closed circuit; and in this both also developed single periodicity to the extent the variable inductance included there and there only could do so. But while both created persistent oscillation in the same way, Marconi went farther than Stone with single periodicity and secured enhancement of this by placing means for tuning in the antenna circuit, which admittedly Stone nowhere expressly required in his original application. And, since this is the gist of the invention in issue and of the difference between the two, it will not do to dismiss this omission merely with the statement that there is nothing to suggest that Stone "did not desire to have those circuits tuned." Nor in my opinion do the passages in the specifications relied upon as "suggesting" the "independent" tuning of the antenna circuits bear out this inference. When Stone states that "the vertical conductor at the transmitter station is made the source of . . . waves of but a single periodicity," I find nothing to suggest that this is accomplished by specially tuning that circuit, or, in fact, anything more than that this circuit is a good conductor sending out the single period waves forced into it from the RUTLEDGE, J., dissenting. 320 U.S. closed circuit. The same is true of the further statement that "the translating apparatus at the receiving station is caused to be selectively responsive to waves of but a single periodicity" (which tuning the intermediate and/or closed circuits there accomplishes), so that "the transmitting apparatus corresponds to a tuning fork sending but a single musical tone, and the receiving apparatus corresponds to an acoustic resonator capable of absorbing the energy of that single simple musical tone only." (Emphasis added.) This means nothing more than that the transmitter, which includes the antenna, and the receiver, which also includes the antenna, send out and receive respectively a single period wave. It does not mean that the antenna, in either station, was tuned, in Marconi's sense, nor does it suggest this. The same is true of the other passages relied upon by the Court for suggestion. No word or hint can be found in them that Stone intended or contemplated independently tuning the antenna. They merely suggested, on the one hand, that when "the apparatus" at the receiving station is properly tuned to a particular transmitter, it will receive selectively messages from the latter and, further, that the operator may at will adjust "the apparatus at his command" so as to communicate with any one of several sending stations; on the other hand, that “any suitable device" may be used at the transmitter "to develop the simple harmonic force impressed upon" the antenna. "The apparatus," as used in the statements concerning the adjustments at the receiving station, clearly means "the apparatus at his command," that is, the whole of that station's equipment, which contained in the intermediate and closed circuits, but not in the open one, the means for making the adjustments described. There is nothing whatever to suggest including a tuning device also in the open circuit. The statement concerning the use of "any |