How drawings could enhance retrieval in mechanical and device patent searching

How drawings could enhance retrieval in mechanical and device patent searching

World Patent Information 29 (2007) 210–218 www.elsevier.com/locate/worpatin How drawings could enhance retrieval in mechanical and device patent sear...

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World Patent Information 29 (2007) 210–218 www.elsevier.com/locate/worpatin

How drawings could enhance retrieval in mechanical and device patent searching Jane List The Technology Partnership Plc, Melbourn Science Park, Cambridge Rd., Melbourn, Herts SG8 6EE, United Kingdom

Abstract In focusing on the field of searching mechanical and device patents, the author explores the available resources, their uses and their limitations. In contrast to searches in the field of chemical patents, this field does not usually provide the benefits of consistent terminology, deep level classification and indexing or direct searching of drawings (cf structural compound search in chemistry). The many challenging problems that result for the searcher and the state of the art in progress on direct searching of drawings are reviewed. Illustrative examples in the fields of medical inhalers and pump actuators are provided. It is clear that there is still a long way to go before practicable, searchable databases can be created or even one of the key initial steps in this process – the general filing and manipulation of 3D drawings in patent applications – can be realised. Methods of searching patent images and tools for faster evaluation of drawings in the full patent specification would be welcomed.  2007 Elsevier Ltd. All rights reserved. Keywords: Mechanical patents; Device patents; Patent searching; Searching drawings; Classification; Indexing; Medical inhalers; Bump actuators; Patent models; 3D drawings; Patent applications; Images

1. Introduction Much is written about searching chemical and pharmaceutical patents and the commercial tools that are available to assist in their retrieval. By contrast mechanical and device patent searching tools and techniques have not been so well developed. In this paper, I will look briefly at the history of drawings in patent filing and examination and patent searching. Using some classification-based methods for searching and retrieving patents in the field of mechanical and device patents I hope to show some of the problems which exist in searching and evaluating these patents and show how better utilisation of drawings may aid retrieval. The techniques and methods I will discuss equally relevant for all typical patent searches – whether legal and commercial searches – patentability, freedom to operate, validity or infringement searching – or for scientific research. I therefore have not gone into details of specific search strategies. E-mail address: [email protected] 0172-2190/$ - see front matter  2007 Elsevier Ltd. All rights reserved. doi:10.1016/j.wpi.2007.01.001

During my research I have found that patent drawings can be especially important in evaluating retrieved device and mechanical patents where a typical search will result in a large answer set (>50 patents) which may be problematic to reduce further and risk loosing recall and missing vital prior art. However, there are currently no tools available for searching the drawings themselves, and no tools readily available to facilitate browsing such large numbers of patent drawings. I will finish by briefly surveying current research into image search tools in the field of intellectual property and in other industries, and hope to show how image searching could improve the precision of a patent search, without compromising recall. 2. The history of drawings/models in patent procedure and development of search tools The importance of visual information to convey meaning was once understood, for a short period of time in the US, where models of the invention were required. Durack [1] has written about the requirement to file patent

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models as part of the patent law in force [2] in the US in the 18th and 19th centuries and how this practise allowed the ordinary person ‘skilled in the art’ to fully understand the nature of the invention. The practise of keeping patent models lasted about 90 years, and over 175,000 models were amassed until much of the collection was destroyed by fire and abandoned. The patent application procedure was amended in 1811 to only requiring a model ‘if the machine be complex’; the patent application also contained a written description and drawings. The description was required only to ‘particularly point out’ difficult aspects of the invention. Debates held in 1836 made it clear that inventors and examiners found the models of prior inventions invaluable in determining novelty – ‘persons who offer their inventions to be patented can hardly be satisfied that others have gone before them in the same inventions; and nothing but the inspection of models and drawings, which prove the fact, can induce them to relinquish the fond expectation of months, or even years’ [3]. Today models are not usually permitted and drawings, although typically generated for design purposes using 3D CAD packages such as IDEAS CAD, must normally be reduced back to 2D line drawings for the patent application. Thus much information about the invention is obscured. This is now causing problems of invention definition for many industries, e.g., semiconductors, devices, plants, and genetic sequences. Adams [4] has argued in his paper in this journal for a return to the use of 3D models but this time in digital form in patent applications to improve the whole process of patent examination, and patent retrieval.

3. Mechanical and device patent literature today and some problems areas for searchers

2.1. Historical development of search tools

3.2. Patent office classification schemes

Since the demise of models, searching for patents has relied on classification schemes for search, used together with boolean operators. An increase in computer power and storage capacity in the 1980s led to the introduction of full text databases which required new proximity operators to get the same precision of retrieval. To help overcome the problem of massive recall relevance ranking was developed in the 1990s. Today text-based improvements to the search toolkit are still prominent with text mining and post-processing of large patent sets the latest innovations – see Fig. 1. Could image search be next for our search toolkit?

The European, US and Japanese patent offices all have their own classification schemes ECLA, US and FI /Fterms, respectively, and they all also use the IPC, with varying levels of consistency. Whilst there are many reasons to prefer US classification and F-terms for searching the fact that all patent offices use the IPC makes it a vital search tool. The IPC is normally applied to all patents at the search stage at the receiving patent offices, and about 37 million patent documents have been classified with IPC codes since 1968. The IPC is therefore the prime tool for searching mechanical and device patents. In some respects IPC8 classifies patents to narrower definitions and should

There are some key features of mechanical and device patent literature which differentiate it from the chemical and pharmaceutical patent fields and illustrate why images are especially important in these fields. The features are – a lack of commercial indexing and therefore a reliance on patent office classification schemes; the importance of Japanese patents and the emerging economies of Asia; nonrealised inventions filed by individuals; the importance of Non-patent literature. Two other points which are surely common to all fields are – evolving terminology to describe technical advances and – the sheer volume and rate of increase of patent applications filed worldwide. 3.1. Lack of commercial indexing Of the commercial patent databases Derwent WPINDEX has good broad codes (Derwent Codes) which can be useful to define the field of search, thereby reducing false hits, but until this year it had no detailed classification for mechanical patents. Derwent are now adding detailed Q codes to mechanical (transportation) patents [5]. Derwent classify patents into Chemical (CPI), Electrical/Engineering (EPI) and General sections. Mechanical and device patents tend to fall into the ‘general’ category. This means that there is a vast field of patents with no detailed Derwent classification. Derwent classifiers concentrate on Chemicals giving all chemical entities manual codes, and often coding device patents which mention chemicals with CPI codes.

Classification systems Boolean operators: AND OR NOT Proximity operators ADJ WITH NEAR Relevance ranking Text mining

Models of US Patents

1800

1900

1950

1975

Fig. 1. Chronological chart of available search tools.

2000

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allow more precision, once the system is running reliably around the world. IPC8 classes can be found to define different aspects of an invention, for example, the method of operation (B), the physics (G) behind the invention and its application (A). Nanotechnology is an interesting example of a crossdisciplinary area which has now been given a special classification tag at the EPO:Y01N to assist retrieval across many fields [6]. Completely new and emerging research in any field may be initially classified incorrectly, so over reliance on classification schemes no matter how good can be dangerous. It will be interesting to find out if the more dynamic Advanced level IPC8 will improve this situation. Japanese F-terms began in 1987 to supplement the IPC codes in fast moving areas of technology. This gives the Japanese patent examiners a more precise set of documents to search in technical fields where Japanese industry is advanced compared to western countries and therefore have more patents filed in these areas. Where F-terms are available they can allow more precise searches in that field [7]. However F-terms, like US classifications are only useful for searches in that one patenting authority. The Esp@cenet database can be searched using the ECLA classification. ECLA is applied by the EPO examiners to all documents published in one of the EPO’s working languages (French, English, German and Dutch) and in May 2006 had been applied to 28 million patent documents (out of a total 54 million documents in esp@cenet). Thus an ECLA based strategy will allow more precise retrieval of patent documents than with the IPC terms alone and the search will retrieve patents from, for example, the major Western economies. When one family member is given an ECLA it is automatically added to the rest of the family. 3.3. Patents from far east and Japan Japanese patents form an important body of literature in the device and mechanical patents fields and cannot be ignored; and now the emerging economies of China, India, Korea, Malaysia, Singapore and Taiwan are increasing in importance both due to quantity and quality of patents filed by national companies. For instance, Korea is one of the top five patenting nations in the PCT, represented by companies like Samsung and LG Electronics and in recognition of this Korean patents will become part of the PCT minimum documentation in 2007. The PCT minimum documentation must be searched by patent examiners when conducting international patentability searches [8]. 3.4. Patents filed by individuals It is not uncommon in the engineering field to find patents filed by an individual inventor; this is in contrast

to the pharmaceutical and chemical fields where patents filed by individuals are rare. An individual who has an idea and can set it down on paper, may not be in a position to ever solve the technical problems encountered between the design stage and prototype building to get a product on the market, but the patent is part of the prior art in that field and must be considered in a search. 3.5. Non-patent literature Non-patent literature (NPL) is also of great importance in the mechanical and device patent fields. INSPEC contains over 50% of the PCT minimum patent documentation and scientific literature for physics and engineering [9]. Searching the scientific literature provides a route for searching further back in time than commercial patent databases allow. Compare Derwent World Patent Index which began in the 1960s for chemical patents, but for the EPI coverage dates from 1970 for US patents, and 1974 for other European authorities [10] with INSPEC which now goes back to 1898 thanks to the Archive database. Another aid to more precise searching provided by databases such as INSPEC, COMPENDEX and PASCAL are their classification and indexing systems. Each classification system takes its own view and these can be useful tools not only for searching the scientific literature but also to help formulate a patent search strategy. Additionally NPL may provide valuable early information about an invention that may be disclosed in a conference proceeding or company announcement before the patent application is published 18 months from filing date. 3.6. Volume of patent literature Patenting activity is increasing in all sectors, in part due to an increased awareness of IP and its value across industries and commerce. By way of example, the 1 millionth PCT application was published in 2005, only 4 years after the 1/2 millionth, but 22 years after the first patent [11]. 3.7. Terminology Getting the right key words for a search is particularly important in mechanical and device patent searching where there is no standard system of nomenclature and no indexing such as registry numbers for chemicals and structure searching tools. In seeking the right terms it’s important to remember that terminology can change over time, and with geographical location. For instance, in Example III searching for shape memory alloy actuated pumping mechanisms words or phrases used in the patents were, e.g., SMA, shape memory metal, shape memory alloy, shape memory material, shape memory wire, shape memory spring, memory wire,

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and in earlier papers the term shape memory effect was more commonly used. And in completely new technologies two different research teams in different parts of the world may be carrying out the same research solving similar problems, but using completely different terms to describe their work. 4. Using classifications for subject searching of engineering patents Due to the lack of commercial indexing available and the unreliability of text searching patent office classification schemes usually provide the best starting point for a subject search of mechanical and device patents. A thorough strategy for complete retrieval of patents for any type of search will usually include keywords to further define the subject matter. This is necessary whether searching in full text or abstract databases. See the appendix for three examples of classifications for searches and compare the level of detail available from IPC, ECLA and US codes. Example I illustrates the use of indexing and classification schemes in a search for medical inhalers actuated by piezoelectricity. Example II shows classifications to define a search for medical inhaler valve mechanism for dispensing liquid from pressurised container and some patents likely to be retrieved with their abstracts and drawings from patent office databases. Medical device patents are often incremental improvements partly due to the regulatory requirements a device must adhere to prior to market approval and partly because the field is so competitive [12]. The patent specification must be written in very precise language to exactly describe the invention and its scope, in Example II, the operation of the valve mechanism. It can be difficult with words alone to adequately describe the invention and its main features. This sometimes makes the language difficult to read and understand quickly and in order to facilitate understanding the text often refers to the drawings. So reading the abstracts without reference to the drawing makes it much harder to understand the patent. 5. Evaluating retrieved patents using drawings Example III shows some of the patents retrieved during a search for shape memory alloy (SMA) actuated pumps. A shape memory alloy is a smart material which deforms to a remembered shape above a certain temperature. [13] The SMA is brought back to its original shape by a biasing mechanism. Retrieving a set of similar patents is only the first step in the evaluation process and in medical device patents such as these it is important to understand the orientation of the different parts and how this affects their operation as well as the mechanism itself. When assessing a set of up to 100 patents scanning the drawings can be a rapid means of identifying patents which will

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require a more detailed interpretation. This is because the patents can seem, from the abstract and even from the descriptions of the invention to be very similar, it is often possible to gain a more accurate interpretation of the key features of the invention by viewing the drawings. Example III shows some examples of this where the same words ‘wire’, ‘spring’ used in one patent may mean something different in another. And where the same words may be used to describe what are actually very different pump designs. However, the applicant must select a representative drawing to be used on the front page of the specification, and this is not always going to be the drawing which best shows the novel part of the invention. It is common for medical device patents to all show a generic drawing, whereas each patent will protect a different aspect. A scan of all the drawings would be preferable, although sometimes prior art drawings are added to the specification and these could also be misleading. 6. Current research into tools for image retrieval There is currently much research in image search, image recognition and image processing techniques particularly for image search on the internet and for personal image databases by academic groups and by companies such as Intel and Microsoft. There is also some activity at the patent offices, but little or no evidence of any developments from the commercial information businesses. The commercial information providers are concentrating on developing content but are not tackling the harder system development type of search issues. Quaero, the proposed new search engine funded by the French government, is reputed to be investigating multi-media search tools [14]. Google’s image search algorithm is based on text search. 6.1. Industrial property: trademark, design and patent image retrieval In the field of industrial property there are several research threads in trademark recognition, and of patent drawings. There are also some drawing evaluation tools which allow faster scanning of a retrieved set of drawings. More work has so far taken place on search and retrieval of pictorial trademarks than on patent drawings. I also have not found any work on image searching of industrial designs. However, Questel Orbit are now developing DesignFinder, an image viewing programme for scanning large sets of designs [15], and PatMonitor [16] allows viewing of multiple.pdf documents which can speed up the assessment of images from many patents. As far as search itself goes, the only example of published research into a patent image search system that I have found was funded by the European Patent Office in 2001 [17]. Huet’s work focused on the selection of

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patents based on the visual content of patent drawings and used a relational graph similarity measure and structural histogram approach to search the 2D line drawings which the patenting application process currently requires. And although the method developed by Benoit Huet et al. showed some success the research was discontinued, and I have been unable to find out why. The EPO EPOQUE tool seems to be the most advanced available in terms of allowing fast viewing of retrieved patent drawings, but has only limited availability to the public. In trademark search the Japanese Industrial Property office has funded research on the Computer recognition of human-shaped trademark images [18]. This work is aimed at speeding up the Office’s procedures for handling trademark applications. The scheme used a retrieval approach based on structured models and skeletons. 6.2. Search, retrieval and evaluation of Digital images in other fields Outside of industrial property a look at other industries shows us that we are entering a world where the search and retrieval of images is becoming more important. In the burgeoning security industries for instance, much work is currently being undertaken to improve facial recognition systems, and in the automotive industry machine vision to improve safety on the road relies on fast processing of images, for instance, road sign recognition. The University of Northumbria Image Data Retrieval group have looked at a shape retrieval system for watermark images and other similar research projects [19]. The use of images in the medical field for diagnostic and therapeutic purposes is widespread and these are now primarily stored as digital images, for example, X-rays, CT scans, digital photographs of eyes and other organs. The art and media industries rely on images, and art galleries and photographic library databases use content based image retrieval systems (CBIR). Research is ongoing into CBIR systems for various types of reasonably structured images, such as geographical information, trademarks, engineering drawings [20]. Storage of personal digital still and video images is increasing and retrieval of images relies on CBIR at best and organised storage structures and indexing terms added by the user. It is clear that digital image searching tools are becoming more important to all as digital cameras and image sharing become widespread and much research is starting on internet tools for image searching to improve upon the current keyword approaches in widespread use [21]. Researchers at Intel are investigating methods of search and recognition for personal digital image collections which they estimate grow at typically about 1000 images a year per person [22].

7. Is there a future for patent image retrieval? In the longer term, perhaps research into the use of 3D patent models (in whatever form) could determine whether these would improve understanding of the invention for patent office examiners and also for the public. It is suggested that 3D patent models may facilitate understanding of the invention, in the future as they have in the past, thus better fulfilling the dissemination of information role of a patent providing community access to the novel method, process, or engineering solution than is currently the case. It could also give the applicant a much stronger position from which to do business. Although there may be resistance from industry initially amid fears of giving too much information away, it ought to benefit everyone to have strong patents where the invention is clear and patents would be less likely to be subject to costly and time-consuming challenges. In the short term, research into systems for searching the patent drawings which we have today would be welcomed as a step in the right direction. There are signs that research is beginning into tools for image searching of patents and in other fields and image viewing tools are emerging in IP areas. Patent procedures could be reviewed to make it allowable for more patent drawings in colour1. Shading of patent drawings to improve 3D visualisation2 would be another idea to improve understanding and retrieval and maybe one day a true image search database could be developed. Acknowledgements I thank Mike Mingay for the CAD drawings, Alan Boyle for reviewing, and Paul Steig for suggestions and comments in preparing the original presentation for PIUG Annual meeting May 2006 in Minneapolis from which this paper has been developed. Appendix As noted in Sections 4 and 5 above, these examples are indicative of the selection of ranges of codes and keywords that, inter alia, will need to be considered in constructing search strategies. They are not intended to provide fully worked out strategies. The displayed drawings and abstracts are likewise merely illustrative of the material to be found and therefore evaluated. They show the differences in wording used for like devices by different patent applicants, and also the sim-

1 As is the case for plants in the US under 35 U.S.C. 161 Plant Patents – see also Section 8 of Rademaker [23]. 2 Editor’s note: I understand that US Patent Rules allow colour drawings more generally when they are the only practical way to illustrate the invention, and also encourage shading to aid in the understanding of the disclosure (37 CFR 1.84(m)).

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ilar wording used for different devices, which can therefore most easily be distinguished by reviewing the patent drawings. Data supplied from the esp@cenet database. Example I: Classification codes to search for medical inhalers actuated by piezoelectricity INSPEC Classification Codes B2575 A0710C B2860A B7810C Controlled indexing

Uncontrolled indexing

Example II: Inhaler valve mechanism for dispensing liquid from pressurised container (IPC8) B65D83/14 G01F11/32

A61M 16/20 Micromechanical device technology Micromechanical devices and systems; Piezoelectric devices Sonic and ultrasonic transducers Aerosols, drug delivery systems, piezoelectric actuators, ultrasonic applications Ultrasonic atomisers; drugdelivery; liquid-delivery

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A62B 07/00 A62B 09/02

dispensing from pressurised container app. requiring ext. operation to deliver exact repeatable metered volume liq. valves for (medical) respiratory systems respiratory apparatus valves (respiratory app.)

Two typical patents retrieved by this search: Inhaler valve mechanism. WO2004009471 NB65D83/14; G01F11/32

IPC8 http://www.wipo.int/classifications/ipc/ipc8/ Application classes (showing hierarchy): • A61 human necessities; human or veterinary science. • A61M introducing media into or onto the body. • A61M 11/00 sprayers; atomisers; insufflators. • A61M 11/02 operated by applying air pressure to liquid to be sprayed. Method of operation classes • B05B 17/00 apparatus for spraying or atomising liquids or other fluent materials not covered anywhere else. • B05B 17/06 using ultrasonics. ECLA http://v3.espacenet.com/eclasrch (showing greater level of detail available than in IPC). • A61M11/00F using ultrasonics; sprayers or atomisers generally adapted for therapeutic purposes. • B05B 17/06B generated by electrical means, e.g., using piezoelectric. USPTO http://www.uspto.gov/go/classification/ 239 fluid sprinkling, spraying and diffusing, 239/1 processes, 239/4 vibratory or magnetostrictive projecting, 239/102.1 with means to vibrate or jiggle discharge and 239/102.2 with means to vibrate etc. by electric transducer, e.g., piezoelectric.

A valve mechanism is provided for use in an inhaler comprising a pressurised container, and a metering chamber, and a valve mechanism wherein the inlet and outlet valves are separate and can be operated independently. The pressure of the fluid in the canister is used to aid the opening of the outer valve so reducing the force to fire a dose. A variant of the valve mechanism allows the user to select from a range of dose volumes by appropriate orientation of the stem. Improvements in metering valves for pressurised dispensing containers. WO2006021797 A1 B65D083/14

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A metering valve for use with a pressurised dispensing container, the metering valve comprising a valve stem assembly co-axially slidable within an annular metering cumber defined between the valve stem assembly and a substantially cylindrical chamber body, the metering naive further comprising an outer seal extending between the valve stem assembly and tome chamber body to seal off an outer duct of the valve stem assembly from the metering chamber when the valve stem assembly is in a non-dispensing position and an inner seal extending between the valve stem assembly and the chamber body. The valve stem assembly comprising a straight, central passage extending from an open inner end of the valve stem assembly to a mid-point of the valve stem assembly located longitudinally within the metering chamber. The valve stem assembly further comprises at least two elongated openings in a wall of the valve stem assembly to allow radially-directed flow between an exterior of the valve stem assembly and the central passage, the elongated openings being located to extend either side of the inner seal when the valve stem assembly is in the non-dispensing position.

SMA pump: wire SMA; spring biased A shape memory alloy actuator comprising a body (1) connected through an arm (5) with an activating member (15), the body (1) being arranged for rotation around a pivot (2) and connected to a first wire (9) and a second wire (10) of a shape memory alloy such as nitinol and to a biasing means such as a tension spring (6) such that heating and therefore shortening of the wire (10) rotates the body (1) counter-clockwise such that the tension spring (6) is in its cocked position while heating (shortening) of the wire. US2004068985

Example III: Finding pumps actuated by SMA in a particular configuration Strategy Keywords Classifications Mechanism of action IPC US class Applications Sources USPTO

Micropatent

shape memory effect, material, metal, spring, wire

F03G7/06 60/527; 60/528 A61M31/00; A61M5/145; A61M37/00 (CCL/60/528, CCL/60/527) and (bias, biasing, biased) and (sma, (shape (near) memory)) 060528, 060527, F03G00706 (position, positioning, bias, biasing) and (sma, (shape (near) memory))

Some examples of different configurations of SMA actuated pumps retrieved using the same classifications and keywords:

SMA pump: spring SMA; spring biased Abstract – Purpose: To reform unbalance of motion due to a delay in the cooling speed of shape memory alloy wires and to enable increase of a speed, by a method wherein a

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machine spring is mounted to an actuator employing a pair of shape memory alloys wires. Constitution: A slider 13 is coupled to a pair of shape memory alloy wires 1 and 2 therebetween. A machine spring 3, having a set load being an intermediate value between a load under the high temperature state and a load under the low temperature state of the shape memory alloy wires 1 and 2, is coupled to either of the shape memory alloy wires 1 and 2. After the one shape memory allow wire 2 is heated and the other shape memory alloy wire 1 is cooled, and when, conversely, the shape memory alloy wires are cooled and heated, a delay in the cooling speed of the shape memory alloy wire 2 being cooled is compensated through expansion of the machine spring 3. JP61171885

SMA Pump: coaxial SMA spring; bias spring Abstract: A SMA (shape memory alloy) coil spring 1 having shape memory properties and a bias coil spring 2 having no shape memory properties are coaxially arranged, and one coil spring is positioned in a pitch clearance of the other coil spring. The pitch stored in the SMA coil spring and the pitch in no-loading of the bias coil spring are made different from each other, and the ends of both coil springs are integrally connected to each other. In a low temperature state, the SMA coil spring 1 is compressed in a state where force of both coil spring balances with each other, and the bias coil spring 2 is stretched. In a high temperature state, it is made into the opposite state and operated. JP8312705

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business information sources before moving to the database design team, designing and testing databases and writing customer and marketing documentation until she joined TTP in 1997. She holds degrees in

Chemistry and Information Science and holds a Certificate in Intellectual Property Law. Jane writes the Industry News column for the PIUG Newsletter.