Background: A CIP application has been rejected on the grounds of non-statutory double patenting over the parent application. The parent application has 3 inventors who have all assigned to corporation A. The CIP has the same 3 inventors plus another inventor. The 3 common inventors assigned to corporation A. The fourth inventor assigned to corporation B.
Problem - we cannot file a terminal disclaimer b/c the applications are not commonly owned. Is there any reason we cannot have corporation B file an assignment to corporation A and then file a terminal disclaimer?
Does it matter whether the fourth inventor had an obligation to assign to corporation A at the time the invention was made? I know that this is a requirement under 103(c) (requiring common ownership at the time the later invention was made") but I don't see any similar requirement for filing a terminal disclaimer.